`Filed: October 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
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`Petitioner
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`v.
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` SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner
`_________________
`Case IPR2015-01099 (Patent 8,669,290 B2)
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`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
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`I.
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`Statement of Relief Requested
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`Case IPR2015-01099
`Patent No. 8,669,290
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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. 22, 23, and 64 and
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`Exs. 1099, 1120, 1122, 1123, 1154, 1181, 2082, 2096, 2102, 2103, 2110, 2116,
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`2126, 2128, 2130, 2251, 2258, 2267-2278, 2291-2293, 2294, and 2323, 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. 67), 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. 68). On September 15, 2016,
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`the Board granted Patent Owner’s two motions to seal (see Paper Nos. 71, 72),
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`sealing all or portions of the following papers and exhibits:
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`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 22 and
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`23 (filed February 25, 2016), and 64 (filed July 29, 2016).1
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`1 Paper 64 was a revised, confidential version of the Patent Owner’s Response,
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`filed on July 29, 2016, to conform with the marking requirements of the Default
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`Protective Order, which the parties requested that the Board enter on July 29, 2016,
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`and to remove redactions to information (specifically expert testimony) which
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`Patent Owner no longer sought to seal.
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`2
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`Case IPR2015-01099
`Patent No. 8,669,290
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`• Excerpts of 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); Ex. 2251 (filed July 29, 2016); Exs. 2291-2293
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`(filed July 29, 2016).2
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`• Information related to alleged commercial success of Patent Owner’s
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`product from a related district court case: Ex. 2258 (filed February 25,
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`2016); Ex. 2323 (filed May 5, 2016).
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`• Materials related to third-party BioScience’s testing procedures: Exs. 2267-
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`2278, 2294 (filed February 25, 2016).
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`• Expert Declarations: Hofmann (Ex. 1122) (filed April 22, 2016); Williams
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`(Ex. 2082) (filed July 29, 2016); Trattler (Ex. 2116) (filed July 29, 2016);
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`Myers (Ex. 2126) (filed July 29, 2016); Paulson (Ex. 2128) (filed February
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`25, 2016); and Jarosz (Ex. 2130) (filed July 29, 2016).3
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`2 Revised, confidential versions of Exs. 2096, 2102, 2103, 2110, 2251, and 2291-
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`2293 were filed on July 29, 2016 to conform with the marking requirements of the
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`Default Protective Order.
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`3 Revised, confidential versions of Exs. 2082, 2116, 2126 and 2130 were filed on
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`July 29, 2016 to conform with the marking requirements of the Default Protective
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`3
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`Case IPR2015-01099
`Patent No. 8,669,290
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`• Transcripts of Expert Cross Examinations: Dr. Paulson (Ex. 1123) (filed
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`April 22, 2016); Dr. Trattler (Ex. 1120) (filed April 22, 2016); Dr. Williams
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`(Ex. 1099) (filed April 22, 2016); and Mr. Hofmann (Ex. 1181) (excerpts
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`from transcript) (filed May 18, 2016).
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`As outlined in the Joint Stipulation filed herewith, in its Final Written
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`Decision of September 12, 2016, the Board referred to paragraphs containing
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`sealed, confidential information, in the following papers and exhibits:
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`• Patent Owner’s Response (Paper No. 22),
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`• Hofmann Declaration (Ex. 1122),
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`• Ex. 1154
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`• Williams Declaration (Ex. 2082), 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. 1122, 1154, 2082, 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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`Order and to remove redactions to information (specifically expert testimony)
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`which Patent Owner no longer sought to seal.
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`4
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`III. Reasons for the Relief Requested
`In the Board’s Order of September 15, 2016, the Board noted that, with
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`Case IPR2015-01099
`Patent No. 8,669,290
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`respect to confidential information not cited in the Final Written Decision, a party
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`seeking to maintain the confidentiality of such information may file a motion to
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`expunge the information from the record prior to it becoming public. (See Paper
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`No. 71 at 6.) Accordingly, Patent Owner requests the following papers and
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`exhibits containing confidential information sealed by the Board, but not referred
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`to in the Board’s Final Written Decision, be expunged from the record:
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`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 22 and
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`23 (filed February 25, 2016), and 64 (filed July 29, 2016).
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`• Excerpts of 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); Ex. 2251 (filed July 29, 2016); Exs. 2291-2293
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`(filed July 29, 2016).
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`• Information related to alleged commercial success of Patent Owner’s
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`product from a related district court case: Ex. 2258 (filed February 25,
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`2016)4; Ex. 2323 (filed May 5, 2016).
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`4 Only the confidential version of Ex. 2258 should be expunged.
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`5
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`Case IPR2015-01099
`Patent No. 8,669,290
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`• Materials related to third-party BioScience’s testing procedures: Exs. 22675-
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`78, 2294 (filed February 25, 2016).6
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`• Confidential versions of Expert Declarations: Hofmann (Ex. 1122);
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`Williams (Ex. 2082); Trattler (Ex. 2116); Myers (Ex. 2126); Paulson (Ex.
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`2128); and Jarosz (Ex. 2130).
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`• Confidential versions of transcripts of Expert Cross Examinations: Dr.
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`Paulson (Ex. 1123) (filed April 22, 2016); Dr. Trattler (Ex. 1120) (filed
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`April 22, 2016); Dr. Williams (Ex. 1099) (filed April 22, 2016); and Mr.
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`Hofmann (Ex. 1181) (excerpts from transcript) (filed May 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. 22), Hofmann
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`Declaration (Ex. 1122), Williams Declaration (Ex. 2082), and the Jarosz
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`Declaration (Ex. 2130) filed herewith, and given the sensitive and confidential
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`nature of the sealed information (including the BioScience information, see Ex.
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`5 Only the confidential version of Ex. 2267 should be expunged.
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`6 Patent Owner has been authorized by third party BioScience to make this request
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`on its behalf. See Ex. 2347 at ¶ 9.
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`6
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`2347 at ¶ 7), good cause exists for the Board to expunge the papers and exhibits
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`Case IPR2015-01099
`Patent No. 8,669,290
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`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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`history for public notice purposes. Patent Owner therefore requests the exhibits
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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.7
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`IV. Conclusion
`For the reasons set forth above, Patent Owner requests that the Board grant
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`this motion and expunge confidential versions of Paper Nos. 22, 23, and 64 and
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`Exs. 1099, 1120, 1122, 1123, 1154, 1181, 2082, 2096, 2102, 2103, 2110, 2116,
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`2126, 2128, 2130, 2251, 2258, 2267-2278, 2291-2293, 2294, and 2323 from the
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`record.
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`7 Petitioner Lupin provided express notice that it does not object to Patent Owner’s
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`motion to expunge for all exhibits listed herein except for Ex. 1181. Patent Owner
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`contacted Petitioner Lupin regarding Ex. 1181 on October 17, 2016, but Petitioner
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`Lupin did not respond prior to this motion being filed.
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`7
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`Dated: October 17, 2016
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`Case IPR2015-01099
`Patent No. 8,669,290
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`By: /Joshua Goldberg/
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`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
` Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01099
`Patent No. 8,669,290
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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 were served on October
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`17, 2016, via email directed to counsel of record for the Petitioner at the following:
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`Deborah Yellin
`DYellin@crowell.com
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`Jonathan Lindsay
`JLindsay@crowell.com
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`Teresa Stanek Rea
`TRea@crowell.com
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`Chiemi Suzuki
`CSuzuki@crowell.com
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`Shannon Lentz
`slentz@crowell.com
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`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
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`9
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`Date: October 17, 2016