Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 79
` Entered: June 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., MYLAN INC., LUPIN LTD. and
`LUPIN PHARMACEUTICALS INC.,
`
`Petitioners,
`v.
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`
`Patent Owner.
`____________
`
`Case IPR2015-00903
`Patent 8,129,431 B2
`
`____________
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Motion to Seal Exhibits 2272, 2273, and Patent
`Owner’s Observation Regarding Cross-Examination of Reply Witnesses
`Dr. Laskar and Mr. Hofmann
`37 C.F.R. § 42.14
`
`
`571-272-7822
`
`
`
`
`
` Paper 79
` Entered: June 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., MYLAN INC., LUPIN LTD. and
`LUPIN PHARMACEUTICALS INC.,
`
`Petitioners,
`v.
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`
`Patent Owner.
`____________
`
`Case IPR2015-00903
`Patent 8,129,431 B2
`
`____________
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Motion to Seal Exhibits 2272, 2273, and Patent
`Owner’s Observation Regarding Cross-Examination of Reply Witnesses
`Dr. Laskar and Mr. Hofmann
`37 C.F.R. § 42.14
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`INTRODUCTION
`I.
`Patent Owner filed a Motion to Seal the depositions transcripts of
`Dr. Paul Laskar (Ex. 2272) and Mr. Ivan Hofmann (Ex. 2273), and the
`Patent Owner’s Motion for Observation Regarding Cross-Examination of
`Reply Witnesses Dr. Laskar and Mr. Hofmann (“Patent Owner’s
`Observations”) (Paper 58). Paper 61 (“Mot.”). Patent Owner asserts that
`Petitioners do not oppose the motion. Id. at 1.
`For the reasons described in the following discussion, we deny
`without prejudice Patent Owner’s Motion to Seal.
`II. DISCUSSION
`“There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public, especially in an
`inter partes review which determines the patentability of claims in an issued
`patent and therefore affects the rights of the public.” Garmin Int’l v. Cuozzo
`Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
`(Paper 34). A motion to seal may be granted for good cause. 37 C.F.R. §
`42.54. The moving party bears the burden of showing that there is good
`cause for the relief requested, including why the information is appropriate
`to be filed under seal. 37 C.F.R. §§ 42.20, 42.54. The Office Patent Trial
`Practice Guide notes that 37 C.F.R. § 42.54 identifies 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. 77 Fed.
`Reg. at 48,760. Until a motion to seal is decided, documents filed with the
`motion shall be sealed provisionally. 37 C.F.R. § 42.14.
`
`
`
`2
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`Patent Owner asserts that, in his deposition testimony, Mr. Hofmann
`discloses Patent Owner’s highly sensitive, confidential, technical
`information relating to Patent Owner’s New Drug Application filed
`confidently with the Food and Drug Administration. Mot. 5–6. According
`to Patent Owner that information has not been made public. Id. at 6. Patent
`Owner asserts that public disclosure of those portions of the deposition
`transcript describing that information would result in the disclosure of Patent
`Owner’s confidential business terms in a highly competitive market. Id.
`Therefore, Patent Owner requests that the following portions of Exhibit 2273
`be sealed as “PROTECTIVE ORDER MATERIAL – BOARD’S EYES
`ONLY”: 24:21–25:4; 33:8–9; 33:19–21; 34:3–4; 36:2–3; 37:6; 37:22–38:1;
`38:3–4; 38:19–20; 39:13–14; 48:21–22; 52:11–12. Id. at 5–7.
`Additionally, Patent Owner requests that the deposition transcripts of
`Dr. Laskar (Ex. 2272) and Mr. Hofmann (Ex. 2273), and Patent Owner’s
`Observations relating to the cross-examinations of those deponents be sealed
`in their entirety under Federal Rule of Evidence 615 (“FRE 615”) as
`“PROTECTIVE ORDER MATERIAL–FED R. EVID 615” “until such time
`as the cross examination of Petitioner Lupin’s expert Dr. [Jayne] Lawrence
`in connection with Lupin’s petition in the Related IPR Proceedings, as well
`as any other reply witness offered by Lupin, has concluded.” Mot. 7–8.
` Although Patent Owner have established that portions of Exhibit
`2273 contain confidential information, a protective order has not been
`entered in the captioned proceedings and an adequate proposed protective
`order describing a category of confidential information to be designated as
`“PROTECTIVE ORDER MATERIAL – BOARD’S EYES ONLY” has not
`been filed. Patent Owner’s request to seal the entirety of Exhibits 2272 and
`
`
`
`3
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`2273, and Paper 58 under FRE 615 appears to be moot at this stage in the
`proceeding, as discovery has concluded. Accordingly, Patent Owner’s
`Motion to Seal is denied without prejudice. Under the circumstances, we
`exercise our discretion to maintain Exhibits 2272 and 2273, and Paper 64
`under a provisional seal, in the manners requested, through July 31, 2016, to
`allow time for the parties to file a renewed motion to seal after a protective
`order is entered in this proceeding and/or to withdraw provisionally sealed
`papers and exhibits.
`
`
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Seal Exhibit 2272, Exhibit
`2273, and Paper 58 is denied without prejudice;
`FURTHER ORDERED that Exhibits 2272 and 2273, and Paper 58
`shall remain provisionally sealed until further notice by the Board;
`FURTHER ORDERED a party may file a revised or new motion to
`seal and/or withdraw the provisionally sealed materials on or before July 31,
`2016; and
`FURTHER ORDERED that any opposition to a revised or new
`motion to seal shall be filed within 5 business days after the filing of the
`motion.
`
`
`
`
`4
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`PETITIONERS:
`Jitendra Malik
`jitty.malik@alston.com
`Lance Soderstrom
`lance.soderstrom@alston.com
`Joseph Janusz
`joe.janusz@alston.com
`James Abe
`james.abe@alston.com
`
`Deborah Yellin
`dyellin@crowell.com
`Jonathan Lindsay
`jLindsay@Crowell.com
`Shannon Lentz
`SLentz@Crowell.com
`
`
`PATENT OWNER:
`Bryan Diner
`bryan.diner@finnegan.com
`Justin Hasford
`justin.hasford@finnegan.com
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`
`
`5
`
`
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