`571-272-7822
`
`Paper: 72
`
` Entered: September 15, 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.
`____________
`
`Case IPR2015-01099
`Patent 8,699,290 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
`37 C.F.R. §§ 42.14
`
`
`
`
`
`IPR2015-01099
`Patent 8,699,290 B2
`
`On July 29, 2016, Patent Owner filed a Second Renewed Motion to
`
`Seal. Paper 68 (“Motion” or “Mot.”). This Order addresses that Motion.
`Concurrently herewith, we issue an order granting Petitioner’s request for
`entry of the Board’s Default Protective Order. A Final Writtten Decision
`was entered by the Board on September 12, 2016. Paper 69.
`Patent Owner seeks to seal exhibits and papers that are alleged to
`reflect confidential information belonging to Patent Owner and non-party
`BioScience. Mot. 1. Specifically, Patent Owner identifies by line and page
`number certain portions of deposition transcripts (Ex. 1123 (Paulson
`transcript), Ex. 1120 (Trattler transcript), and Ex. 1099 (Williams
`transcript)) as well as specific paragraphs of a witness declaration (Ex. 1122
`(Hofmann declaration)) (referred to herein as the “deposition transcripts and
`witness declaration”) that reflect confidential information owned by Patent
`Owner or non-party BioScience. Mot. 1–2.
`Patent Owner states that the deposition transcripts and witness
`declaration cite or describe confidential information reflected in other
`exhibits, namely, Patent Owner’s New Drug Application (“NDA”) (Exs.
`2096, 2102, 2103, 2110, 2251, 2291–2293). Id. at 1. Those other exhibits
`are the subject of Patent Owner’s Renewed Motion to Seal (Paper 67), which
`we grant in an Order filed concurrently herewith. Under the circumstances,
`Patent Owner shows sufficiently that the identified portions of the deposition
`transcripts and witness declaration––revealing information reflected in those
`sealed exhibits—should also be sealed. Mot. 1–2.
`No party has filed an opposition. Accordingly, Patent Owner’s
`request to seal the deposition transcripts and witness deposition is granted.
`
`
`
`2
`
`
`
`IPR2015-01099
`Patent 8,699,290 B2
`
`
`
`
`
`Requiring a Joint Stipulation and Counsel Certification
`Within thirty five (35) days after entry of the Final Written Decision,
`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 61, 4. Further, the Rules of
`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. 48756, 48761, Section I.E.6. (Aug. 14, 2012) (emphasis
`added). There is a presumption, therefore, that any confidential information
`cited in the Final Written Decision shall become public forty five (45) days
`after entry of the Final Written Decision.
`
`
`
`3
`
`
`
`IPR2015-01099
`Patent 8,699,290 B2
`
`
`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. By
`placing confidential information before the Board, Petitioner accepted the
`risk that the information will become public if relied upon in the Final
`Written Decision. Rules of Practice, 77 Fed. Reg. 48756, 48761, 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 forty five (45) days after entry
`of the Final Written Decision, unless a revised public version of the paper or
`exhibit, conforming to the following requirements, is filed no later than
`thirty five (35) days (that is, ten days prior to the date set for unsealing) after
`entry of the Final Written Decision. Specifically, a party may prevent the
`unsealing of any paper or exhibit identified in the Joint Stipulation by filing,
`no later than thirty five (35) days after entry of the Final Written Decision, 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.
`
`
`It is
`ORDERED that Patent Owner’s Second Renewed Motion to Seal is
`
`granted to the extent set forth in this Order;
`
`
`
`4
`
`
`
`IPR2015-01099
`Patent 8,699,290 B2
`
`
`FURTHER ORDERED that, within thirty five (35) days after entry of
`the Final Written Decision, Patent Owner and Petitioner shall file a Joint
`Stipulation as described in this Order, which 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;
`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 forty five
`(45) days after entry of the Final Written Decision, unless a revised public
`version of the paper or exhibit, conforming to the requirements of this Order,
`is filed no later than thirty five (35) days (that is, ten days prior to the date
`set for unsealing) after entry of the Final Written Decision;
`FURTHER ORDERED that a party may prevent the unsealing of any
`paper or exhibit identified in the Joint Stipulation by filing, no later than
`thirty five (35) days after entry of the Final Written Decision, a revised
`public version of the paper or exhibit in which each page or paragraph cited
`in the Final Written Decision is left unredacted.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2015-01099
`Patent 8,699,290 B2
`
`
`
`PETITIONER:
`Deborah 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 Diner
`Justin Hasford
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`
`
`6