` Entered: June 21, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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.
`____________
`
`Case IPR2015-01099
`Patent 8,669,290 B2
`____________
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Motion to Seal Exhibit 1181
`37 C.F.R. § 42.14
`
`INTRODUCTION
`I.
`Petitioner filed a Motion to Seal the transcript of the deposition of
`Ivan T. Hofmann taken in IPR2015-00902 and IPR015-00903 (Ex. 1181).
`Paper 49 (“Mot.”).
`For the reasons described in the following discussion, we deny
`without prejudice Petitioner’s Motion to Seal Exhibit 1181.
`
`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`
`II. DISCUSSION
`“There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public, especially in an
`inter partes review which determines the patentability of claims in an issued
`patent and therefore affects the rights of the public.” Garmin Int’l v. Cuozzo
`Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
`(Paper 34). A motion to seal may be granted for good cause. 37 C.F.R. §
`42.54. The moving party bears the burden of showing that there is good
`cause for the relief requested, including why the information is appropriate
`to be filed under seal. 37 C.F.R. §§ 42.20, 42.54. The Office Patent Trial
`Practice Guide notes that 37 C.F.R. § 42.54 identifies 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 research, development, or commercial information. 77 Fed.
`Reg. at 48,760. Until a motion to seal is decided, documents filed with the
`motion shall be sealed provisionally. 37 C.F.R. § 42.14.
`Petitioner asserts, “It is Petitioners’ understanding that this document
`has been designated by Patent Owner as Protective Order Material or Fed. R.
`Evid. 615 Materials.” Mot. 1. We have no record of that designation.
`Petitioner cites only to the “Proposed Stipulated Protective Orders.” Id.
`Exhibit 1181, however, is not cited in any previous motion to seal or
`proposed protective order. Petitioner’s motion fails to characterize what
`portion of the exhibit is deemed confidential and why. In other words,
`Petitioners, as the moving party, have failed their burden of showing that
`there is good cause for the relief requested. See 37 C.F.R. §§ 42.20, 42.54.
`
`
`
`2
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`IPR2015-01099
`Patent 8,669,290 B2
`
`Indeed, Petitioner states that it “makes no assertion as to whether or not
`[Exhibit 1181] may contain confidential information.” Id.
`Moreover, a protective order has not been entered in the captioned
`proceedings and an acceptable proposed protective order has not been filed.
`For the foregoing reasons, Petitioner’s Motion to Seal Exhibit 1181 is
`denied without prejudice. We exercise our discretion to maintain
`Exhibit 1181 under a provisional seal, in the manner requested, through July
`31, 2016, to allow time for a party to file a motion to seal the exhibit,
`showing good cause for the relief requested, after a protective order is
`entered in this proceeding, and/or to withdraw the provisionally sealed
`exhibit.
`
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that the Petitioner’s Motion to Seal Exhibit 1181 is denied
`without prejudice;
`FURTHER ORDERED that Exhibit 1181 shall remain provisionally
`sealed until further notice by the Board;
`FURTHER ORDERED a party may file a revised or new motion to
`seal and/or withdraw provisionally sealed Exhibit 1181 on or before July 31,
`2016; and
`FURTHER ORDERED that any opposition to a revised or new
`motion to seal shall be filed within 5 business days after the filing of the
`motion.
`
`
`
`3
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`
`
`IPR2015-01099
`Patent 8,669,290 B2
`
`PETITIONER:
`Deborah H. Yellin
`Jonathan Lindsay
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`DYellin@crowell.com
`JLindsay@crowell.com
`trea@crowell.com
`slentz@crowell.com
`
`PATENT OWNER:
`Bryan C. Diner
`Joshua L. Goldberg
`Justin J. Hasford
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`joshua.goldberg@finnegan.com
`justin.hasford@finnegan.com
`
`
`
`4