Paper No. ____
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`Filed: September 21, 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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`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC, MYLAN PHARMACEUTICALS
`INC., MYLAN INC., LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`Petitioner
`v.
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` SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner
`__________________
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`Case IPR2015-00903 (Patent 8,129,431 B2)1
`__________________
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`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
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`1 Case IPR2015-01871 has been joined with this proceeding.
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`Filed: September 21, 2016
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`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.,
`Patent Owner
`__________________
`
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`__________________
`
`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
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`1 Case IPR2015-01871 has been joined with this proceeding.
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`I.
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`Statement of Relief Requested
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`Case IPR2015-00903
`Patent No. 8,129,431
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`Pursuant to 37 C.F.R. § 42.56, Patent Owner requests that the Board
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`expunge from the record the confidential versions of Paper Nos. 33, 34, and Exs.
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`1079, 1081, 1082, 1150, 2096, 2102, 2103, 2110, 2116, 2130 and 2273 for the
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`reasons stated herein.
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`II. Background
`On July 29, 2016, Patent Owner filed a Renewed Motion to Seal concerning
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`a number of Patent Owner’s exhibits, listed below (see Paper No. 86), and on
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`August 1, 2016, Patent Owner filed a Second Renewed Motion to Seal concerning
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`additional exhibits, also listed below, (see Paper No. 89). On August 29, 2016, the
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`Board granted Patent Owner’s two motions to seal (see Paper Nos. 91, 93), sealing
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`all or portions of the following papers and exhibits:
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`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 33 and
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`34 (filed December 28, 2015).
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`2
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`Case IPR2015-00903
`Patent No. 8,129,431
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`• Excerpts to Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
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`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016); Ex.
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`2110 (filed July 29, 2016)2.
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`• Expert Declarations: Williams (Ex. 2082) (filed Dec. 28, 2015); Trattler (Ex.
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`2116) (filed July 29, 2016); and Jarosz (Ex. 2130) (filed July 29, 2016).3
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`• Transcripts of Expert Cross Examinations: Mr. Hofmann (Ex. 2273) (filed
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`July 29, 2016); Dr. Paulson (Ex. 1082) (filed March 18, 2016); Dr. Trattler
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`(Ex. 1081) (filed March 18, 2016); and Dr. Williams (Ex. 1079) (filed
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`March 18, 2016).
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`As outlined in the Joint Stipulation filed herewith, in its Final Written
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`Decision of July 28, 2016, the Board referred to paragraphs containing sealed,
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`confidential information, in the following papers and exhibits:
`
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`2 Revised, confidential versions of Exs. 2096, 2102, 2103, and 2110 were filed on
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`July 29, 2016 to conform with the marking requirements of the Default Protective
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`Order.
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`3 Revised, confidential versions of Exs. 2116, and 2130 were filed on July 29, 2016
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`to conform with the marking requirements of the Default Protective Order and to
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`remove redactions to information (specifically expert testimony) which Patent
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`Owner no longer sought to seal.
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`3
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`Case IPR2015-00903
`Patent No. 8,129,431
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`
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`• Patent Owner’s Response (Paper No. 34),
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`• Hofmann Declaration (Ex. 1150),
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`• Williams Declaration (Ex. 2082),
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`• Trattler Declaration (Ex. 2116), and
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`• Jarosz Declaration (Ex. 2130).
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`As also noted in the Joint Stipulation, the parties will file revised, public
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`versions of Patent Owner’s Response and Exs. 1150, 2082, 2116, and 2130,
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`leaving unredacted the portions of those papers and exhibits cited by the Board in
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`the Final Written Decision.
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`III. Reasons for the Relief Requested
`In the Board’s Order of September 19, 2016, the Board authorized an
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`extension of time to file this Motion to Expunge. (See Paper No. 95.) In that same
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`Order, the Board noted that it would not entertain a motion to expunge with respect
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`to confidential information cited in the Board’s Final Written Decision. Id. at 3.
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`Accordingly, Patent Owner requests the following papers and exhibits containing
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`confidential information sealed by the Board, but not referred to in the Board’s
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`Final Written Decision, be expunged from the record:
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`• Patent Owner’s Response (citing the confidential information), Paper Nos.
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`33 and 34 (filed December 28, 2015).
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`4
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`Case IPR2015-00903
`Patent No. 8,129,431
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`• Excerpts to Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
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`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016); Ex.
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`2110 (filed July 29, 2016).
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`• Confidential versions of Expert Declarations: Hofmann (Ex. 1150); Trattler
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`(Ex. 2116); and Jarosz (Ex. 2130).
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`• Confidential versions of transcripts of Expert Cross Examinations: Mr.
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`Hofmann (Ex. 2273) (filed July 29, 2016); Dr. Paulson (Ex. 1082) (filed
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`March 18, 2016); Dr. Trattler (Ex. 1081) (filed March 18, 2016); and Dr.
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`Williams (Ex. 1079) (filed March 18, 2016).
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`Because the public has access to all the materials relevant to the merits of
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`this proceeding, either through publicly filed papers and exhibits or through
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`redacted, public versions of Patent Owner’s Response (Paper No. 34), Hofmann
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`Declaration (Ex. 1150), Williams Declaration (Ex. 2082), Trattler Declaration (Ex.
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`2116), and the Jarosz Declaration (Ex. 2130) filed herewith, and given the sensitive
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`and confidential nature of the sealed information, good cause exists for the Board
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`to expunge the papers and exhibits listed above pursuant to 37 C.F.R. § 42.56.
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`Moreover, Patent Owner submits that the exhibits listed above continue to
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`contain confidential information and that expunging the them from the record will
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`not hamper the public interest of maintaining a complete and understandable file
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`5
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`history for public notice purposes. Patent Owner therefore requests the exhibits
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`Case IPR2015-00903
`Patent No. 8,129,431
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`listed above be removed from the record.
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`Patent Owner contacted counsel for Petitioner and they do not oppose this
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`motion to expunge.
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`IV. Conclusion
`For the reasons set forth above, Petitioner requests that the Board grant this
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`motion and expunge confidential versions of Paper Nos. 33, 34, and Exs. 1079,
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`1081, 1082, 1150, 2096, 2102, 2103, 2110, 2116, 2130 and 2273 from the record.
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`Dated: September 21, 2016
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`By: /Joshua L. Goldberg/
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`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
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`Attorney for Patent Owner
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`6
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`CERTIFICATE OF SERVICE
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`Case IPR2015-00903
`Patent No. 8,129,431
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNER’S MOTION TO EXPUNGE UNDER 37 C.F.R. § 42.56 was served on
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`September 21, 2016, via email directed to counsel of record for the Petitioner at the
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`following:
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`Jitendra Malik, Ph.D
`Jitty.malik@alston.com
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`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
`
`Deborah H. Yellin
`DYellin@Crowell.com
`
`Shannon Lentz
`SLentz@Crowell.com
`
`Jonathan Lindsay
`JLindsay@Crowell.com
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` /Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
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`Date: September 21, 2016
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`7
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`Case IPR2015-00903
`Patent No. 8,129,431
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`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER,
`LLP
`
`8
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