`Filed: December 1, 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 RENEWED 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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`reconsider its decision regarding the expungement from the record the confidential
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`versions of Ex. 1181, for the reasons stated herein.
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`II. Background
`On October 17, 2016, Patent Owner filed a Motion to Expunge Under 37
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`C.F.R. § 42.56, requesting expungement of certain confidential versions of Papers
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`and Exhibits, including Ex. 1181. Ex. 1181 is a transcript of the expert cross
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`examination of Mr. Hofmann. The Board did not refer to Ex. 1181 in its Final
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`Written Decision of September 12, 2016.
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`On October 26, 2016, the Board granted-in-part Patent Owner’s Motion,
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`expunging confidential versions of all the requested Papers and Exhibits, except Ex.
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`1181. The Board did not grant Patent Owner’s request to expunge Ex. 1181
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`because Patent Owner had not obtained the consent of Petitioner Lupin. See Order
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`80 at 2. The Board, however, preserved the sealed status of Ex. 1181 pending
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`appeal and authorized Patent Owner to renew its request to expunge Ex. 1181
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`within ten business days after the time for filing a notice of appeal expires, or if an
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`appeal is taken, ten business days after a final disposition of such appeal.
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`Petitioner Lupin informed the Board by email on September 2, 2016 that this IPR
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`has settled. Moreover, on November 9, 2016, Petitioner Lupin informed Patent
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`2
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`Owner that it does not oppose Patent Owner’s motion to expunge Ex. 1181.
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`Case IPR2015-01099
`Patent No. 8,669,290
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`Having gained the consent of Petitioner Lupin and because no appeal will be taken,
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`Patent Owner now renews its request to expunge Ex. 1181.
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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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`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 now renews its request that Ex. 1181
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`having been sealed by the Board, but not referred to in the Board’s Final Written
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`Decision, be expunged from the record.
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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 Papers and Exhibits filed October 17, 2016, and given
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`the sensitive and confidential nature of the sealed information in Ex. 1181, good
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`cause exists for the Board to expunge Ex. 1181 pursuant to 37 C.F.R. § 42.56.
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`Moreover, Patent Owner submits that the Ex. 1181 continues to contain
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`confidential information and that expunging it from the record will not hamper the
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`public interest of maintaining a complete and understandable file history for public
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`3
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`notice purposes. Patent Owner therefore requests that Ex. 1181 be removed from
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`Case IPR2015-01099
`Patent No. 8,669,290
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`the record.
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`Patent Owner contacted counsel for Petitioner Lupin and they do not oppose
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`this renewed motion to expunge Ex. 1181.
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`IV. Conclusion
`For the reasons set forth above, Petitioner requests that the Board grant this
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`renewed motion and expunge confidential versions of Exhibit 1181 from the record.
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`Dated: December 1, 2016
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
` Attorney for Patent Owner
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`4
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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 Joint
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`Stipulation and Counsel Certification Regarding Confidential Information
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`Cited in Final Written Decision were served on December 1, 2016, via email
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`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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`5
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`Date: December 1, 2016
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