`571-272-7822
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` Paper: 101
` Entered: August 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
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`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioner,
`
`v.
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`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_______________
`
`Case IPR2015-00902
`Patent 8,669,290 B2
`_______________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
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`
`
`ORDER
`Granting Patent Owner’s Second Renewed Motion to Seal (Paper 98)
`37 C.F.R. §§ 42.14 and 42.54
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`IPR2015-00902
`Patent 8,669,290 B2
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`In an Order dated June 21, 2016, the Board denied Patent Owner’s
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`request to enter a Stipulated Protective Order. Paper 85. That same day, the
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`Board denied without prejudice all pending motions to seal documents.
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`Papers 85–89. Thereafter, on July 28, 2016, the Board entered a Final
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`Written Decision. Paper 90. On August 2, 2016, Patent Owner filed a
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`Second Renewed Motion to Seal. Paper 98 (“Motion” or “Mot.”). This
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`Order addresses that Motion. Patent Owner states that “Petitioner Lupin”
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`does not oppose the Motion, but that entity is not a party to this proceeding.
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`Mot. 1. Petitioner has not filed an opposition to the Motion.
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`Concurrently herewith, we enter an Order granting Petitioner’s
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`unopposed request for entry of the Default Protective Order (Paper 97,
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`App’x A (copy of Default Protective Order)), which governs the disclosure
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`of confidential information in this proceeding.
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`
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`Request to Seal Deposition Transcript Excerpts
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`Patent Owner requests to seal identified portions of deposition
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`transcripts of Dr. Daryl S. Paulson (Ex. 1123), Dr. William B. Trattler
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`(Ex. 1120), and Dr. Robert O. Williams (Ex. 1099) (“transcripts sought to be
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`sealed”). Mot. 1–2 (identifying by page and line number each portion of
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`each transcript that is sought to be sealed). Patent Owner supports its
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`request with a statement that the deposition transcripts sought to be sealed
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`reveal “certain Patent Owner confidential information, related to Patent
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`Owner’s New Drug Application (“NDA”) (Ex. 2096, 2102, 2103, 2110,
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`IPR2015-00902
`Patent 8,669,290 B2
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`2251, 2291–22931)” as well as “certain third-party confidential information,
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`belonging to BioScience (Ex. 2249–2263).” Id. at 1. Exhibits 2096, 2102,
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`2103, 2110, and 2251 are the subject of Patent Owner’s Renewed Motion to
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`Seal (Paper 96), which we grant in an Order filed concurrently herewith.
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`Under the circumstances, Patent Owner shows sufficiently that the portions
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`of the deposition transcripts––revealing information reflected in those sealed
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`exhibits—should also be sealed. Id. at 1–2. Accordingly, the Motion is
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`granted.
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`Requiring a Joint Stipulation and Counsel Certification
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`By September 2, 2016, Patent Owner and Petitioner shall file a Joint
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`Stipulation that identifies with particularity the exact portions (by page or
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`paragraph number) of all sealed papers and exhibits that are cited in the
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`Final Written Decision. The Joint Stipulation shall include a Counsel
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`Certification attesting to the accuracy and completeness of the Joint
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`Stipulation, including a statement verifying that the exact portion of each
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`paper and exhibit cited in the Final Written Decision is identified (by page or
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`paragraph number) in the Joint Stipulation.
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`We specifically provided the parties advance notice “that information
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`subject to a protective order will become public if identified in a final
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`written decision in this proceeding.” Paper 85, 4. Further, the Rules of
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`1 Exhibits 2291–2293 do not appear to have been filed in the record of this
`proceeding. The Patent Owner’s exhibits end with Exhibit 2279.
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`Patent 8,669,290 B2
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`Practice for Trial Before the Patent Trial and Appeal Board (“Rules of
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`Practice”) provide that:
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`Confidential information that is subject to a protective order ordinarily
`will become public 45 days after denial of a petition to institute a trial
`or 45 days after final judgment in a trial. There is an expectation that
`information will be made public where the existence of the information
`is referred to in a decision to grant or deny a request to institute a review
`or is identified in a final written decision following a trial. A party
`seeking to maintain the confidentiality of information, however, may
`file a motion to expunge the information from the record prior to the
`information becoming public.
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`77 Fed. Reg. No. 157, Part V at Section I.E.6. (Aug. 14, 2012) (emphasis
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`added). There is a presumption, therefore, that any confidential information
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`cited in the Final Written Decision, entered July 28, 2016, shall become
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`public on September 12, 2016.
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`A strong public interest favors maintaining a complete and
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`understandable record of the patent history, including the factual basis for
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`the Board’s findings and the intelligibility of the Final Written Decision.
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`Patent Owner recognizes that public interest but fails to show sufficiently
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`that it is outweighed by any private business interest. Mot. 4–5, 9. By
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`placing confidential information before the Board, Patent Owner accepted
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`the risk that the information would become public if relied upon in the Final
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`Written Decision. Rules of Practice, 77 Fed. Reg. No. 157, Part V at Section
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`I.E.6. (Aug. 14, 2012) (“There is an expectation that information will be
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`made public where the existence of the information . . . is identified in a
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`final written decision following a trial.”).
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`Accordingly, all papers and exhibits identified in the Joint Stipulation
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`shall be unsealed and made publicly available on September 12, 2016, unless
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`a revised public version of the paper or exhibit, conforming to the following
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`requirements, is filed by September 2, 2016 (that is, ten days prior to the
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`date set for unsealing). Specifically, a party may prevent the unsealing of
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`any paper or exhibit identified in the Joint Stipulation by filing, no later than
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`September 2, 2016, a revised public version of the paper or exhibit in which
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`each page or paragraph cited in the Final Written Decision is left unredacted.
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`Material not cited in the Final Written Decision may be redacted in the
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`revised public version.
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`Other Matters
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`Any request for reconsideration of this Order shall be filed no later
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`than September 2, 2016.
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`No further briefing is authorized at this time.
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`Should the parties require assistance in complying with this Order, the
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`Board is available for a teleconference during the week of August 29, 2016.
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`Counsel may initiate a request for a teleconference by sending an email to
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`Trials@USPTO.gov.
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`It is
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`ORDERED that Patent Owner’s Second Renewed Motion to Seal is
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`granted to the extent set forth in this Order;
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`FURTHER ORDERED that, by September 2, 2016, Patent Owner and
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`Petitioner shall file a Joint Stipulation of Papers and Exhibits as described in
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`this Order, which identifies with particularity the exact portions (by page or
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`paragraph number) of all sealed papers and exhibits that are cited in the
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`Final Written Decision;
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`FURTHER ORDERED that the Joint Stipulation shall include a
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`Counsel Certification attesting to the accuracy and completeness of the Joint
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`Stipulation, including a statement verifying that the exact portion of each
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`paper and exhibit cited in the Final Written Decision is identified (by page or
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`paragraph number) in the Joint Stipulation;
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`FURTHER ORDERED that all papers and exhibits identified in the
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`Joint Stipulation shall be unsealed and made publicly available on
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`September 12, 2016, unless a revised public version of the paper or exhibit,
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`conforming to the requirements of this Order, is filed by September 2, 2016;
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`FURTHER ORDERED that a party may prevent the unsealing of any
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`paper or exhibit identified in the Joint Stipulation by filing, no later than
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`September 2, 2016, a revised public version of the paper or exhibit in which
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`each page or paragraph cited in the Final Written Decision is left unredacted;
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`and
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`FURTHER ORDERED that any request for reconsideration of this
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`Order shall be filed no later than September 2, 2016.
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`IPR2015-00902
`Patent 8,669,290 B2
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`PETITIONER:
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`Jitendra Malik
`jitty.malik@alston.com
`
`Lance Soderstrom
`lance.soderstrom@alston.com
`
`Hidetada James Abe
`james.abe@alston.com
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`
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`PATENT OWNER:
`
`Bryan C. Diner
`bryan.diner@finnegan.com
`
`Justin J. Hasford
`justin.hasford@finnegan.com
`
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
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