Paper No. __
`Filed: May 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.
`Petitioner,
`
`
`
`
`v.
`
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`__________________
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)1
`__________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading. IPR2016-00089 has been joined with IPR2015-01097; IPR2016-00091
`has been joined with IPR2015-01100; and IPR2016-00090 has been joined with
`IPR2015-01105. Each of these joined proceedings includes Petitioners
`InnoPharma Licensing, Inc., InnoPharma Licensing LLC, InnoPharma Inc., Mylan
`Pharmaceuticals Inc., and Mylan Inc. (collectively, “InnoPharma”) in addition to
`the parties identified above.
`
`
`Filed: May 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.
`Petitioner,
`
`
`
`
`v.
`
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`__________________
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)1
`__________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`heading. IPR2016-00089 has been joined with IPR2015-01097; IPR2016-00091
`has been joined with IPR2015-01100; and IPR2016-00090 has been joined with
`IPR2015-01105. Each of these joined proceedings includes Petitioners
`InnoPharma Licensing, Inc., InnoPharma Licensing LLC, InnoPharma Inc., Mylan
`Pharmaceuticals Inc., and Mylan Inc. (collectively, “InnoPharma”) in addition to
`the parties identified above.
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Governing Rules and PTAB Guidance ............................................................ 1
`
`III. Good Cause Exists for Sealing Exhibit 2323 Containing Patent Owner
`Confidential Information ................................................................................. 3
`
`IV. Conclusion ....................................................................................................... 4
`
`
`
`
`
`ii
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`I.
`
`
`Introduction
`
`Through this Motion to Seal, Patent Owner requests that confidential
`
`portions of Ex. 2323, Reply Expert Report of John C. Jarosz on Objective Indicia
`
`of Non-Obviousness, from the related Senju Pharmaceutical, et al. v. Lupin Ltd. et
`
`al., No. 14-cv-00667, be sealed. With the filing of this Motion, Patent Owner will
`
`also file a redacted version of Ex. 2323. Under 37 C.F.R. § 42.54, Patent Owner
`
`renews its request for entry of the Proposed Stipulated Protective Order, (Paper 26
`
`in IPR2015-1097, IPR2015-01100, and IPR2015-01105, and Paper 25 in IPR2015-
`
`1099), filed on February 25, 2016. To the best of Patent Owner’s knowledge, the
`
`Patent Owner certifies that the information identified as confidential in this motion
`
`has not been published or otherwise made public. Petitioner does not oppose this
`
`motion to seal.
`
`II. Governing Rules and PTAB Guidance
`Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
`
`inter partes review are open and available for access by the public but a party may
`
`file a concurrent motion to seal and the information at issue is sealed pending the
`
`outcome of the motion.
`
`Similarly, 37 C.F.R. § 42.14 provides:
`
`
`
`1
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`
`The record of a proceeding, including documents and
`things, shall be made available to the public, except as
`otherwise ordered. A party intending a document or
`thing to be sealed shall file a motion to seal concurrent
`with the filing of the document or thing to be sealed. The
`document or thing shall be provisionally sealed on
`receipt of the motion and remain so pending the outcome
`of the decision on the motion.
`
`It is, however, only “confidential information” that is protected from
`
`disclosure. 35 U.S.C. § 316(a)(7)(“The Director shall prescribe regulations -- . . .
`
`providing for protective orders governing the exchange and submission of
`
`confidential information”). In that regard, the Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48760 (Aug. 14, 2012) provides:
`
`The rules aim to strike a balance between the public’s
`interest in maintaining a complete and understandable
`file history and the parties’ interest in protecting truly
`sensitive information.
`
`* * *
`
`Confidential Information: The rules identify 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
`
`
`
`2
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`
`research, development, or commercial information.
`§ 42.54.
`
`The standard for granting a motion to seal is “for good cause,” 37 C.F.R.
`
`§ 42.54, and the moving party has the burden of proof in showing entitlement to
`
`the requested relief, 37 C.F.R. § 42.20(c).
`
`A motion to seal is also required to include a proposed protective order and a
`
`certification that the moving party has in good faith conferred or attempted to
`
`confer with the opposing party in an effort to come to an agreement as to the scope
`
`of the proposed protective order for this inter partes review. 37 C.F.R. § 42.54.
`
`III. Good Cause Exists for Sealing Exhibit 2323 Containing Patent Owner
`Confidential Information
`
`
`
`Patent Owner requests that confidential portions of Ex. 2323, specifically on
`
`pages 26 and 39, be sealed under 37 C.F.R. § 42.14. As explained herein, good
`
`cause exists for sealing this information. This document contains Patent Owner’s
`
`market information related to Patent Owner’s commercial embodiment of the
`
`Patents-at-Issue. Patent Owner and Dr. Jarosz rely on these materials to show
`
`Patent Owner’s commercial success.
`
`The Board’s rules provide for the protection of trade secret or other
`
`confidential commercial information. See 77 Fed. Reg. at 48,760. Here, the
`
`
`
`3
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`public’s interest in the instant proceeding does not outweigh Patent Owner’s
`
`interest in protecting this limited sensitive business information.
`
`Because public disclosure of the contents of these documents, or
`
`descriptions of those contents, would disclose confidential business information,
`
`Patent Owner requests that portions of Ex. 2323 be sealed, as “PROTECTIVE
`
`ORDER MATERIAL”, for the duration of this proceeding.
`
`IV. Conclusion
`For the reasons set forth above, Patent Owner respectfully requests that the
`
`Board grant this motion to seal.
`
`Date: May 5, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /Bryan C. Diner/
`
`Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`Justin J. Hasford, Back-up Counsel
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett
` & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC 20001-4413
`(202) 408-4000
`
`Counsel for Patent Owner
`
`
`
`4
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`
`
`Owner’s Motion to Seal was filed on May 5, 2016, and served via email directed
`
`to counsel of record for the Petitioner at the following:
`
`
`
`
`
`Deborah Yellin
`dyellin@crowell.com
`
`Jonathan Lindsay
`jlindsay@crowell.com
`
`Teresa Stanek Rea
`TRea@crowell.com
`
`Chiemi Suzuki
`CSuzuki@crowell.com
`
`Jitendra Malik
`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
`
`
`
`
`
`
`IPR2015-01097 (US Patent No. 8,751,131)
`IPR2015-01099 (US Patent No. 8,669,290)
`IPR2015-01100 (US Patent No. 8,927,606)
`IPR2015-01105 (US Patent No. 8,871,813)
`
`
`Dated: May 5, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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