Paper No. __
`Filed: April 6, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioners,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`__________________
`
`Case IPR2015-00902 (Patent 8,669,290 B2)
`__________________
`
`
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`PATENT OWNER’S MOTION TO SEAL
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`
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`Filed: April 6, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioners,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`__________________
`
`Case IPR2015-00902 (Patent 8,669,290 B2)
`__________________
`
`
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00902
`U.S. Patent 8,669,290
`
`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`
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`I.
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`II.
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`Governing Rules and PTAB Guidance ............................................................ 1
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`III. Background and Identification of Confidential Information ........................... 3
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`IV. Good Cause Exists for Sealing Certain Confidential Information .................. 5
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`A.
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`B.
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`Patent Owner’s Confidential Information Contained in the
`Testimony of Mr. Hofmann Should Be Sealed ..................................... 5
`
`Under the Rule on Witnesses, Transcript of Petitioner
`InnoPharma’s Experts Should Be Sealed Until Petitioner
`Lupin’s Expert Has Concluded Her Testimony in the Related
`IPR Proceedings .................................................................................... 7
`
`V.
`
`Conclusion ....................................................................................................... 9
`
`
`
`
`
`i
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`
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`Case IPR2015-00902
`U.S. Patent 8,669,290
`
`Introduction
`
`Through this Motion to Seal, Patent Owner requests that third party
`
`
`I.
`
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`confidential documents related to certain preservative efficacy testing (EX2249
`
`through EX2263) be sealed. Under 37 C.F.R. § 42.54, Patent Owner renews its
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`request for entry of the Proposed Stipulated Protective Order, Paper 36, filed on
`
`December 28, 2015. To the best of Patent Owner’s knowledge, the Patent Owner
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`certifies that the information identified as confidential in this motion has not been
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`published or otherwise made public. Petitioner does not oppose this motion to seal.
`
`II. Governing Rules and PTAB Guidance
`Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
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`inter partes review are open and available for access by the public but a party may
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`file a concurrent motion to seal and the information at issue is sealed pending the
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`outcome of the motion.
`
`Similarly, 37 C.F.R. § 42.14 provides:
`
`The record of a proceeding, including documents and
`things, shall be made available to the public, except as
`otherwise ordered. A party intending a document or
`thing to be sealed shall file a motion to seal concurrent
`with the filing of the document or thing to be sealed. The
`document or thing shall be provisionally sealed on
`receipt of the motion and remain so pending the outcome
`of the decision on the motion.
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`
`
`1
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`
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`It is, however, only “confidential information” that is protected from
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`Case IPR2015-00902
`U.S. Patent 8,669,290
`
`
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`disclosure. 35 U.S.C. § 316(a)(7)(“The Director shall prescribe regulations -- . . .
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`providing for protective orders governing the exchange and submission of
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`confidential information”). In that regard, the Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48760 (Aug. 14, 2012) provides:
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`The rules aim to strike a balance between the public’s
`interest in maintaining a complete and understandable
`file history and the parties’ interest in protecting truly
`sensitive information.
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`* * *
`
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of
`Civil Procedure 26(c)(1)(G), which provides for
`protective orders for trade secret or other confidential
`research, development, or commercial information.
`§ 42.54.
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`The standard for granting a motion to seal is “for good cause,” 37 C.F.R.
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`§ 42.54, and the moving party has the burden of proof in showing entitlement to
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`the requested relief, 37 C.F.R. § 42.20(c).
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`A motion to seal is also required to include a proposed protective order and a
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`certification that the moving party has in good faith conferred or attempted to
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`
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`2
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`confer with the opposing party in an effort to come to an agreement as to the scope
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`Case IPR2015-00902
`U.S. Patent 8,669,290
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`of the proposed protective order for this inter partes review. 37 C.F.R. § 42.54.
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`III. Good Cause Exists for Sealing Exhibits 2249 to 2263 Containing Third-
`Party Confidential Information
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`
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`Patent Owner requests that its confidential materials of third parties
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`BioScience and SSCI (Exs. 2249 through 2263) be sealed under 37 C.F.R. § 42.14.
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`As explained herein, good cause exists for sealing this information. These
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`documents contain third party BioScience’s and SSCI’s proprietary information
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`related to each company’s proprietary testing methods. Patent Owner’s expert Dr.
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`Paulson was questioned about these exhibits during his cross-examination.
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`The Board’s rules provide for the protection of trade secret or other
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`confidential commercial information. See 77 Fed. Reg. at 48,760. Here, the
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`public’s interest in the instant proceeding does not outweigh a third party’s interest
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`in protecting this limited sensitive business information.
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`Because public disclosure of the contents of these documents, or
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`descriptions of those contents, would disclose confidential business methods of a
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`third party, Patent Owner requests that Exs. 2249 through 2263 be sealed, as
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`“PROTECTIVE ORDER MATERIAL”, for the duration of this proceeding.
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`3
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`
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`IV. Conclusion
`For the reasons set forth above, Patent Owner respectfully requests that the
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`Case IPR2015-00902
`U.S. Patent 8,669,290
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`Board grant this motion to seal.
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`Date: April 6, 2016
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`Respectfully submitted,
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`
`
`By: /Bryan C. Diner/
`
`Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`Justin J. Hasford, Back-up Counsel
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett
` & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC 20001-4413
`(202) 408-4000
`
`Counsel for Patent Owner
`
`
`
`4
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00902
`U.S. Patent 8,669,290
`
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Motion to Seal was served on April 6, 2016, via email directed to
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`counsel of record for the Petitioner at the following:
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Bryan Skelton
`bryan.skelton@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`Hidetada James Abe
`james.abe@alston.com
`
`Joseph Janusz
`Joe.janusz@alston.com
`
`
`Date: April 6, 2016
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`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
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