Trials@uspto.gov
`571-272-7822
`
`
`
` Paper: 93
` 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 Second Renewed Motion to Seal (Paper 89)
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`
`1 Case IPR2015-1871 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
` Paper: 93
` 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 Second Renewed Motion to Seal (Paper 89)
`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. Thereafter, on July 28, 2016, the Board entered a Final
`
`Written Decision. Paper 82. On August 2, 2016, Patent Owner filed a
`
`Second Renewed Motion to Seal. Paper 89 (“Motion” or “Mot.”). This
`
`Order addresses that Motion. Patent Owner states 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.
`
`
`
`Request to Seal Deposition Transcript Excerpts
`
`Patent Owner requests to seal identified portions of deposition
`
`transcripts of Dr. Daryl S. Paulson (Ex. 1123), Dr. William B. Trattler
`
`(Ex. 1120), and Dr. Robert O. Williams (Ex. 1099) (“transcripts sought to
`
`be sealed”). Mot. 1–2 (identifying by page and line number each portion of
`
`each transcript that is sought to be sealed). Patent Owner supports its
`
`request with a statement that the deposition transcripts sought to be sealed
`
`reveal “certain Patent Owner confidential information, related to Patent
`
`Owner’s New Drug Application (“NDA”) (Ex. 2096, 2102, 2103, 2110,
`
`2251).” Id. at 1. Ex. 2096, 2102, 2103, and 2110 are the subject of Patent
`
`
`
`2
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`Owner’s Renewed Motion to Seal (Paper 86), which we grant in an Order
`
`filed concurrently herewith.
`
`Exhibit 2251 has not been filed in the record of this proceeding, but
`
`was filed under seal in related IPR2015-00902 (“IPR 902”), and was placed
`
`under seal in an Order, filed concurrently herewith in IPR 902, granting
`
`Patent Owner’s Renewed Motion to Seal (IPR 902, Paper 98) in that related
`
`proceeding.
`
`Under the circumstances, Patent Owner shows sufficiently that the
`
`portions of the deposition transcripts––revealing information reflected in
`
`those sealed exhibits—should also be sealed. Id. at 1–2. Accordingly, the
`
`Motion is granted.
`
`
`
`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
`
`
`
`3
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`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.
`
`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. Mot. 4–5, 9. 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
`
`
`
`4
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`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.
`
`
`
`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 Second 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 of Papers and Exhibits as described in
`
`this Order, which identifies with particularity the exact portions (by page or
`
`
`
`5
`
`
`
`IPR2015-00903
`Patent 8,129,431 B2
`
`
`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
`
`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.
`
`
`
`
`
`6
`
`
`
`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
`
`
`
`
`
`7
`
`
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