`
`Filed: September 21, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.,
`
`Petitioner
`
`v.
`
` SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner
`_________________
`Case IPR2015-00902 (Patent 8,669,290 B2)
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`I.
`
`Statement of Relief Requested
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`Pursuant to 37 C.F.R. § 42.56, Patent Owner requests that the Board
`
`expunge from the record the confidential versions of Paper Nos. 33, 34, and 91 and
`
`Exs. 1082, 1081, 1079, 1150, 2082, 2096, 2102, 2103, 2110, 2116, 2130, 2249-54,
`
`2258-2263, and 2273, for the reasons stated herein.
`
`II. Background
`On July 29, 2016, Patent Owner filed a Renewed Motion to Seal concerning
`
`a number of Patent Owner’s exhibits, listed below (see Paper No. 96), and on
`
`August 1, 2016, Patent Owner filed a Second Renewed Motion to Seal concerning
`
`additional exhibits, also listed below, (see Paper No. 98). On August 29, 2016, the
`
`Board granted Patent Owner’s two motions to seal (see Paper Nos. 99, 101),
`
`sealing all or portions of the following papers and exhibits:
`
`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 33 and
`
`34 (filed December 28, 2015), and 91 (filed July 29, 2016).1
`
`
`1 Paper 91 was a revised, confidential version of the Patent Owner’s Response,
`
`filed on July 29, 2016, to conform with the marking requirements of the Default
`
`Protective Order, which the parties requested that the Board enter on July 29, 2016,
`
`and to remove redactions to information (specifically expert testimony) which
`
`Patent Owner no longer sought to seal.
`
`
`
`2
`
`
`
`
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`• Excerpts to Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
`
`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016); Ex.
`
`2110 (filed July 29, 2016)2.
`
`• Materials related to third-party BioScience’s testing procedures: Exs. 2249-
`
`54, 2258-2263 (filed April 6, 2016).
`
`• Expert Declarations: Williams (Ex. 2082) (filed July 29, 2016); Trattler (Ex.
`
`2116) (filed July 29, 2016); and Jarosz (Ex. 2130) (filed July 29, 2016).3
`
`• Transcripts of Expert Cross Examinations: Mr. Hofmann (Ex. 2273) (filed
`
`July 29, 2016); Dr. Paulson (Ex. 1082) (filed March 18, 2016); Dr. Trattler
`
`(Ex. 1081) (filed March 18, 2016); and Dr. Williams (Ex. 1079) (filed
`
`March 18, 2016).
`
`
`2 Revised, confidential versions of Exs. 2096, 2102, 2103, and 2110 were filed on
`
`July 29, 2016 to conform with the marking requirements of the Default Protective
`
`Order.
`
`3 Revised, confidential versions of Exs. 2082, 2116, and 2130 were filed on July
`
`29, 2016 to conform with the marking requirements of the Default Protective Order
`
`and to remove redactions to information (specifically expert testimony) which
`
`Patent Owner no longer sought to seal.
`
`
`
`3
`
`
`
`As outlined in the Joint Stipulation filed herewith, in its Final Written
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`
`
`Decision of July 28, 2016, the Board referred to paragraphs containing sealed,
`
`confidential information, in the following papers and exhibits:
`
`• Patent Owner’s Response (Paper No. 34),
`
`• Hofmann Declaration (Ex. 1150),
`
`• Williams Declaration (Ex. 2082),
`
`• Trattler Declaration (Ex. 2116), and
`
`• Jarosz Declaration (Ex. 2130).
`
`As also noted in the Joint Stipulation, the parties will file revised, public
`
`versions of Patent Owner’s Response and Exs. 1150, 2082, 2116, and 2130,
`
`leaving unredacted the portions of those papers and exhibits cited by the Board in
`
`the Final Written Decision.
`
`III. Reasons for the Relief Requested
`In the Board’s Order of September 19, 2016, the Board authorized an
`
`extension of time to file this Motion to Expunge. (See Paper No. 103.) In that
`
`same Order, the Board noted that it would not entertain a motion to expunge with
`
`respect to confidential information cited in the Board’s Final Written Decision. Id.
`
`at 3. Accordingly, Patent Owner requests the following papers and exhibits
`
`containing confidential information sealed by the Board, but not referred to in the
`
`Board’s Final Written Decision, be expunged from the record:
`4
`
`
`
`
`
`
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`• Patent Owner’s Response (citing the confidential information), Paper Nos.
`
`33 and 34 (filed December 28, 2015), and 91 (filed July 29, 2016).
`
`• Excerpts to Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
`
`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016); Ex.
`
`2110 (filed July 29, 2016).
`
`• Materials related to third-party BioScience’s testing procedures: Exs. 22494-
`
`54, 2258-2263 (filed April 6, 2016).5
`
`• Confidential versions of Expert Declarations: Hofmann (Ex. 1150);
`
`Williams (Ex. 2082); Trattler (Ex. 2116); and Jarosz (Ex. 2130).
`
`• Confidential versions of transcripts of Expert Cross Examinations: Mr.
`
`Hofmann (Ex. 2273) (filed July 29, 2016); Dr. Paulson (Ex. 1082) (filed
`
`March 18, 2016); Dr. Trattler (Ex. 1081) (filed March 18, 2016); and Dr.
`
`Williams (Ex. 1079) (filed March 18, 2016).
`
`Because the public has access to all the materials relevant to the merits of
`
`this proceeding, either through publicly filed papers and exhibits or through
`
`redacted, public versions of Patent Owner’s Response (Paper No. 34), Hofmann
`
`
`4 Only the confidential version of Ex. 2249 should be expunged.
`
`5 Patent Owner has been authorized by third party BioScience to make this request
`
`on its behalf. See Ex. 2279 at ¶ 9.
`
`
`
`5
`
`
`
`
`Declaration (Ex. 1150), Williams Declaration (Ex. 2082), Trattler Declaration (Ex.
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`2116), and the Jarosz Declaration (Ex. 2130) filed herewith, and given the sensitive
`
`and confidential nature of the sealed information (including the BioScience
`
`information, see Ex. 2279 at ¶ 7), good cause exists for the Board to expunge the
`
`papers and exhibits listed above pursuant to 37 C.F.R. § 42.56.
`
`Moreover, Patent Owner submits that the exhibits listed above continue to
`
`contain confidential information and that expunging the them from the record will
`
`not hamper the public interest of maintaining a complete and understandable file
`
`history for public notice purposes. Patent Owner therefore requests the exhibits
`
`listed above be removed from the record.
`
`Patent Owner contacted counsel for Petitioner and they do not oppose this
`
`motion to expunge.
`
`IV. Conclusion
`For the reasons set forth above, Petitioner requests that the Board grant this
`
`motion and expunge confidential versions of Paper Nos. 33, 34, and 91, and Exs.
`
`1082, 1081, 1079, 1150, 2082, 2096, 2102, 2103, 2110, 2116, 2130, 2249-54,
`
`2258-2263, and 2273 from the record.
`
`
`Dated: September 21, 2016
`
`
`
`
`By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
` Attorney for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00902
`Patent No. 8,669,290
`
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56 was served on
`
`September 21, 2016, via email directed to counsel of record for the Petitioner at the
`
`following:
`
`Jitendra Malik, Ph.D
`Jitty.malik@alston.com
`
`Bryan Skelton, Ph.D.
`Bryan.skelton@alston.com
`
`Lance Soderstrom
`Lance.soderstrom@alston.com
`
`Hitetada James Abe
`James.abe@alston.com
`
`Joseph M. Janusz
`Joe.janusz@alston.com
`
`
`
`
`
`
`
` /Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER,
`LLP
`
`7
`
`
`
`
`
`
`
`
`
`Date: September 21, 2016