Trials@uspto.gov
`571-272-7822
`
`
`
` Paper: 91
` Entered: August 29, 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.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_______________
`
`Case IPR2015-009031
`Patent 8,129,431 B2
`_______________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Renewed Motion to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`1 Case IPR2015-1871 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
` Paper: 91
` Entered: August 29, 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.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_______________
`
`Case IPR2015-009031
`Patent 8,129,431 B2
`_______________
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Renewed Motion to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`1 Case IPR2015-1871 has been joined with this proceeding.
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`
`
`In an Order dated June 21, 2016, the Board denied Patent Owner’s
`
`request to enter a Stipulated Protective Order. Paper 77. That same day, the
`
`Board denied without prejudice all pending motions to seal documents.
`
`Papers 77–80. On July 29, 2016, Petitioner filed a Renewed Motion to Seal.
`
`Paper 86 (“Motion” or “Mot.”). This Order addresses that Motion. Patent
`
`Owner avers that “Petitioner Lupin” does not oppose the Motion. See
`
`Mot. 1. No party has filed an opposition to the Motion.
`
`Concurrently herewith, we enter an Order granting the parties’ joint
`
`request for entry of an Amended Stipulated Protective Order (Paper 81,
`
`App’x A (copy of Amended Stipulated Protective Order)), which governs
`
`disclosure of confidential information in this proceeding.
`
`
`
`New Public Versions of Certain Documents Marked Confidential
`
`Patent Owner does not seek to seal certain portions of documents that
`
`were marked confidential and filed provisionally under seal in this
`
`proceeding. Mot. 2–3 (identifying documents previously marked as
`
`confidential and filed provisionally under seal; namely, portions of Patent
`
`Owner’s Response (Paper 33), Petitioner’s Reply to Patent Owner’s
`
`Response to Petition (Ex. 2271), Patent Owner’s Motion for Observations
`
`(Paper 58), and declarations or testimony of Dr. Paul Laskar (Ex. 2114 and
`
`Ex. 2272), Ivan Hoffman (Ex. 2273), Robert O. Williams (Ex. 2082), and
`
`Stephen G. Davies (Ex. 2105)). Patent Owner states that it will file new
`
`public versions of those papers and exhibits without the “PROTECTIVE
`
`ORDER MATERIAL—FED R. EVID 615” marking. Id. Patent Owner has
`
`completed that action. See Papers 33, 58, Ex. 2015, Ex. 2082, Ex. 2114,
`
`
`
`2
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`Ex. 2271, Ex. 2272, Ex. 2273. Most of those documents were the subject of
`
`Patent Owner’s prior motion to seal (Paper 36) that was denied without
`
`prejudice (Paper 77).
`
`Patent Owner further states that is does not seek to seal certain
`
`research and development presentations (Ex. 2220 and Ex. 2226) that were
`
`the subject of our prior decision (Paper 77) that denied without prejudice
`
`Patent Owner’s prior motion to seal (Paper 36). Mot. 2–3. Patent Owner
`
`states that a public version of those exhibits will be filed. Id. at 3. Patent
`
`Owner has completed that action. See Ex. 2220, Ex. 2226.
`
`No further action is required regarding the above documents.
`
`
`
`Granting Request to Seal New Drug Application Exhibits
`
`Patent Owner requests to seal portions of Exhibits 2096, and further,
`
`to seal in their entirety Exhibits 2102, 2103, and 2110. Mot. 1. Patent
`
`Owner identifies those exhibits as excerpts of Patent Owner’s New Drug
`
`Application (“NDA”). Id. at 5. We previously denied Patent Owner’s prior
`
`motion to seal Exhibit 2096 because Patent Owner sought to seal that
`
`document in its entirety without establishing adequately that all of the
`
`material reflected therein is confidential. Paper 77, 7. For example, we
`
`observed that page 1 of Exhibit 2096 “does not appear to contain any
`
`confidential or proprietary information” and directed Patent Owner to
`
`address that issue in any later-filed motion to seal Exhibit 2096. Id. Patent
`
`Owner accompanies its renewed request to seal Exhibit 2096 with a redacted
`
`version that addresses adequately the Board’s concerns. Mot. 5, 6; Ex. 2096
`
`(public version).
`
`
`
`3
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`
`Based on our review of Exhibits 2102, 2103, and 2110, and Patent
`
`Owner’s arguments pertaining to them, we are persuaded that good cause
`
`exists to seal those exhibits in their entirety. Mot. 6 (explaining that
`
`redaction “would not be practical”). “Petitioner Lupin” does not oppose
`
`sealing Exhibits 2096, 2102, 2103, or 2210 as proposed by Patent Owner,
`
`and no party has filed an opposition to that request. See id. at 5. Under the
`
`circumstances, Patent Owner’s request to seal Exhibits 2096, 2102, 2103,
`
`and 2110 is granted.
`
`Patent Owner requests to seal other documents alleged to reflect
`
`information contained in the exhibits relating to the NDA. Specifically,
`
`Patent Owner seeks to seal pages 3, 55–57, and 59 of Patent Owner’s
`
`Response (Paper 34); paragraphs 152, 153, 177, 178, 180, 181, 185, 186,
`
`and 187 of the declaration of Dr. Williams (Ex. 2082); paragraphs 16, 41,
`
`and 49 of the declaration of Dr. Trattler (Ex. 2116), paragraphs 17, 56, 82,
`
`and 134 of the declaration of Dr. Jarosz (Ex. 2130); and pages 25, 26, 34, 35,
`
`37–40, 49, and 53 of the deposition transcript of Mr. Hoffman (Ex. 2273).
`
`Mot. 5.
`
`Patent Owner shows sufficiently that those documents “describe the
`
`confidential information contained in the NDA.” Id. at 6. “Petitioner
`
`Lupin” does not oppose the sealing of those documents and, further, no party
`
`has filed an opposition to the Motion. See id. at 5. Accordingly, Patent
`
`Owner’s request to seal those documents is granted.
`
`
`
`
`
`4
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`
`Requiring a Joint Stipulation and Counsel Certification
`
`By September 2, 2016, Patent Owner and Petitioner shall file a Joint
`
`Stipulation that identifies with particularity the exact portions (by page or
`
`paragraph number) of all sealed papers and exhibits that are cited in the
`
`Final Written Decision. The Joint Stipulation shall include a Counsel
`
`Certification attesting to the accuracy and completeness of the Joint
`
`Stipulation, including a statement verifying that the exact portion of each
`
`paper and exhibit cited in the Final Written Decision is identified (by page or
`
`paragraph number) in the Joint Stipulation.
`
`We specifically provided the parties advance notice “that information
`
`subject to a protective order will become public if identified in a final
`
`written decision in this proceeding.” Paper 77, 4. Further, the Rules of
`
`Practice for Trial Before the Patent Trial and Appeal Board (“Rules of
`
`Practice”) provide that:
`
`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.
`
`77 Fed. Reg. No. 157, Part V at Section I.E.6. (Aug. 14, 2012) (emphasis
`
`added). There is a presumption, therefore, that any confidential information
`
`cited in the Final Written Decision, entered July 28, 2016, shall become
`
`public on September 12, 2016.
`
`
`
`5
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`
`A strong public interest favors maintaining a complete and
`
`understandable record of the patent history, including the factual basis for
`
`the Board’s findings and the intelligibility of the Final Written Decision.
`
`Patent Owner recognizes that public interest but fails to show sufficiently
`
`that it is outweighed by any private business interest. In this case Mot. 2–5.
`
`By placing confidential information before the Board, Patent Owner
`
`accepted the risk that the information would become public if relied upon in
`
`the Final Written Decision. Rules of Practice, 77 Fed. Reg. No. 157, Part V
`
`at Section I.E.6. (Aug. 14, 2012) (“There is an expectation that information
`
`will be made public where the existence of the information . . . is identified
`
`in a final written decision following a trial.”).
`
`Accordingly, all papers and exhibits identified in the Joint Stipulation
`
`shall be unsealed and made publicly available on September 12, 2016, unless
`
`a revised public version of the paper or exhibit, conforming to the following
`
`requirements, is filed by September 2, 2016 (that is, ten days prior to the
`
`date set for unsealing). Specifically, a party may prevent the unsealing of
`
`any paper or exhibit identified in the Joint Stipulation by filing, no later than
`
`September 2, 2016, a revised public version of the paper or exhibit in which
`
`each page or paragraph cited in the Final Written Decision is left unredacted.
`
`Material not cited in the Final Written Decision may be redacted in the
`
`revised public version.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`
`
`
`Other Matters
`
`Any request for reconsideration of this Order shall be filed no later
`
`than September 2, 2016.
`
`No further briefing is authorized at this time.
`
`Should the parties require assistance in complying with this Order, the
`
`Board is available for a teleconference during the week of August 29, 2016.
`
`Counsel may initiate a request for a teleconference by sending an email to
`
`Trials@USPTO.gov.
`
`
`
`It is
`
`ORDERED that Patent Owner’s Renewed Motion to Seal is granted
`
`to the extent set forth in this Order;
`
`FURTHER ORDERED that, by September 2, 2016, Patent Owner and
`
`Petitioner shall file a Joint Stipulation as described in this Order, which
`
`identifies with particularity the exact portions (by page or paragraph
`
`number) of all sealed papers and exhibits that are cited in the Final Written
`
`Decision;
`
`FURTHER ORDERED that the Joint Stipulation shall include a
`
`Counsel Certification attesting to the accuracy and completeness of the Joint
`
`Stipulation, including a statement verifying that the exact portion of each
`
`paper and exhibit cited in the Final Written Decision is identified (by page or
`
`paragraph number) in the Joint Stipulation;
`
`FURTHER ORDERED that all papers and exhibits identified in the
`
`Joint Stipulation shall be unsealed and made publicly available on
`
`
`
`7
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`September 12, 2016, unless a revised public version of the paper or exhibit,
`
`conforming to the requirements of this Order, is filed by September 2, 2016;
`
`FURTHER ORDERED that a party may prevent the unsealing of any
`
`paper or exhibit identified in the Joint Stipulation by filing, no later than
`
`September 2, 2016, a revised public version of the paper or exhibit in which
`
`each page or paragraph cited in the Final Written Decision is left unredacted;
`
`and
`
`FURTHER ORDERED that any request for reconsideration of this
`
`Order shall be filed no later than September 2, 2016.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`PETITIONER:
`Jitendra Malik
`jitty.malik@alston.com
`Lance Soderstrom
`lance.soderstrom@alston.com
`Hidetada James Abe
`james.abe@alston.com
`Joseph Janusz
`joe.janusz@alston.com
`
`Deborah Yellin
`dyellin@crowell.com
`Jonathan Lindsay
`jLindsay@Crowell.com
`Shannon Lentz
`SLentz@Crowell.com
`
`PATENT OWNER:
`Bryan C. Diner
`bryan.diner@finnegan.com
`Justin J. Hasford
`justin.hasford@finnegan.com
`Joshua L. Goldberg
`joshua.goldberg@finnegan.com
`
`
`
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
