`571-272-7822
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` Paper 61
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` Entered: June 21, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD., LUPIN PHARMACEUTICALS INC., INNOPHARMA
`LICENSING, INC., INNOPHARMA LICENSING LLC, INNOPHARMA
`INC., INNOPHARMA LLC, MYLAN PHARMACEUTICALS INC., and
`MYLAN INC.,
`
`Petitioners,
`v.
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`SENJU PHARMACEUTICAL CO., LTD.,
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`Patent Owner.
`____________
`
`Case IPR2015-01097 (Patent 8,754,131 B2)1
`Case IPR2015-01100 (Patent 8,927,606 B1)2
` Case IPR2015-01105 (Patent 8,871,813 B2)3
`____________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
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`DECISION4
`Denying Petitioners’ Motion to Seal Exhibits 1094, 1099, 1104, 1120–1123,
`1125, 1133, 1149, 1154, 1158, and Petitioners’ Reply
`37 C.F.R. § 42.14
`
`
`
` 1
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` Case IPR2016-00089 has been joined with this proceeding.
`2 Case IPR2016-00091 has been joined with this proceeding.
`3 Case IPR2016-00090 has been joined with this proceeding.
`4 This Decision relates to and shall be filed in each referenced case.
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
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`I.
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`INTRODUCTION
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`In each of the captioned proceedings, Petitioners filed a Motion to
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`Seal portions of a number of depositions transcripts (Exs. 1094, 1099,
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`1120–1123, and 1125), a portion of the Petitioners’ Reply to the Patent
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`Owner’s Response, and the entirety of Exhibits 1104, 1133, 1149, 1154, and
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`1158. Paper 365 (“Mot.”).
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`For the reasons described in the following discussion, we deny
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`without prejudice Petitioners’ Motion to Seal Exhibits 1094, 1099, 1104,
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`1120–1123, 1125, 1133, 1149, 1154, 1158, and Petitioner’s Reply.
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`II. DISCUSSION
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`“There is a strong public policy for making all information filed in a
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`quasi-judicial administrative proceeding open to the public, especially in an
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`inter partes review which determines the patentability of claims in an issued
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`patent and therefore affects the rights of the public.” Garmin Int’l v. Cuozzo
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`Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
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`(Paper 34). A motion to seal may be granted for good cause. 37 C.F.R. §
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`42.54. The moving party bears the burden of showing that there is good
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`cause for the relief requested, including why the information is appropriate
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`to be filed under seal. 37 C.F.R. §§ 42.20, 42.54. The Office Patent Trial
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`Practice Guide notes that 37 C.F.R. § 42.54 identifies confidential
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`information in a manner consistent with Federal Rule of Civil Procedure
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`26(c)(1)(G), which provides for protective orders for trade secret or other
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`
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` 5
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` Petitioners state the “word-for-word” identical paper was filed in each
`captioned proceeding. Paper and Exhibit numbers are the same in each of
`those proceeding.
`
`
`
`2
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
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`confidential research, development, or commercial information. 77 Fed.
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`Reg. at 48,760. Until a motion to seal is decided, documents filed with the
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`motion shall be sealed provisionally. 37 C.F.R. § 42.14.
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`Petitioners’ Motion to Seal is deficient in a number of ways. None of
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`the Exhibits are properly described. Indeed, the five exhibits that Petitioners
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`seek to seal in their entirety are not characterized even by title. See Mot. 4.
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`Moreover, Petitioners failed to provide what portions of Exhibits 1094 and
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`1104, and what portion of the Petitioners’ Reply to Patent Owner’s
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`Response (or the relevant paper number(s)) it seeks to seal. Id. Further,
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`Petitioners state that they “make no assertion whether or not [the materials
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`that they seek to seal] contain confidential information.” Id. Instead,
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`Petitioners assert that Patent Owner has requested Petitioner to file the
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`documents under seal and to “file an appropriate motion to seal ….” Id.
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`Petitioners have not done so. As the moving party, Petitioners have failed
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`their burden of showing that there is good cause for the relief requested. See
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`37 C.F.R. §§ 42.20, 42.54.
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`Moreover, a protective order has not been entered in the captioned
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`proceedings and an acceptable proposed protective order has not been filed.
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`For the foregoing reasons, Petitioners’ Motion to Seal Exhibits 1094,
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`1099, 1104, 1120–1123, 1125, 1133, 1149, 1154, 1158, and Petitioners’
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`Reply is denied without prejudice. We exercise our discretion to maintain
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`those materials under a provisional seal, in the manner filed, through July
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`31, 2016, to allow time for a party to file motion to seal that shows good
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`cause for the relief requested, after a protective order has been entered in this
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`proceeding, and/or to withdraw the provisionally sealed materials.
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`
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`3
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`
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`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
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`ORDER
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`In accordance with the foregoing, it is hereby:
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`ORDERED that the Petitioners’ Motion to Seal Exhibits 1094, 1099,
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`1104, 1120–1123, 1125, 1133, 1149, 1154, 1158, and Petitioners’ Reply is
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`denied without prejudice;
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`FURTHER ORDERED that Exhibits 1094, 1099, 1104, 1120–1123,
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`1125, 1133, 1149, 1154, 1158, and Petitioners’ Reply shall remain
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`provisionally sealed until further notice by the Board;
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`FURTHER ORDERED a party may file a revised or new motion to
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`seal and/or withdraw the provisionally sealed materials on or before July 31,
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`2016; and
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`FURTHER ORDERED that any opposition to a revised or new
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`motion to seal shall be filed within 5 business days after the filing of the
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`motion.
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`4
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`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
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`PETITIONERS:
`
`Deborah Yellin
`DYellin@crowell.com
`
`Jonathan Lindsay
`JLindsay@crowell.com
`
`Teresa Rea
`trea@crowell.com
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Bryan Skelton
`bryan.skelton@alston.com
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`
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`PATENT OWNER:
`
`Bryan Diner
`bryan.diner@finnegan.com
`
`Justin Hasford
`justin.hasford@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
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`5
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