Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 60
`
`
` Entered: June 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`
`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.
`
`DECISION4
`Denying Petitioner Lupin’s and Patent Owner’s Joint Motion to Seal
`Exhibits 2082, 2109, and Patent Owner’s Response
`37 C.F.R. § 42.14
`
`
`
` 1
`
` 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.
`
`
`571-272-7822
`
`
`
` Paper 60
`
`
` Entered: June 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`
`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.
`
`DECISION4
`Denying Petitioner Lupin’s and Patent Owner’s Joint Motion to Seal
`Exhibits 2082, 2109, and Patent Owner’s Response
`37 C.F.R. § 42.14
`
`
`
` 1
`
` 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)
`
`
`I.
`
`INTRODUCTION
`
`In each of the captioned proceedings, Petitioner Lupin Ltd. and Lupin
`
`Pharmaceuticals Inc. and Patent Owner Senju Pharmaceutical Company,
`
`Ltd. (“the parties”) filed a Joint Motion to Seal the entirety of Exhibit 2109
`
`(Petitioner Lupin’s Amended New Drug Application (“ANDA”)) and
`
`portions of Patent Owner’s Response, Paper 23, and Exhibit 2082 (the
`
`declaration of Dr. Robert O. Williams). Paper 275 (“Mot.”).
`
`The parties explain that those materials contain confidential material
`
`that Petitioner Lupin would does not want to disclose to Petitioner
`
`InnoPharma or Patent Owner. Mot. 5. To that end, the parties request that
`
`those materials be sealed as “PROTECTIVE ORDER MATERIAL–
`
`BOARD’S EYES ONLY.” Id.
`
`For the reasons described in the following discussion, we deny
`
`without prejudice the Joint Motion to Seal.
`
`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
`
`
`
` Paper and Exhibit numbers are the same in each captioned proceeding.
`
`2
`
` 5
`
`
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`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.
`
`The parties assert that the information that it seeks to seal has not been
`
`made public. Mot. 6. In particular, the parties assert that Petitioner Lupin’s
`
`ANDA was filed confidentially with the Food and Drug Administration, and
`
`Exhibit 2109 is an excerpt of that filing. Id. at 6–7. The parties state, “[t]he
`
`information that the parties seek to seal contains Lupin’s highly sensitive,
`
`confidential development information and technical, business information.”
`
`Id. According to the parties, if Exhibit 2109 becomes public, Petitioner
`
`Lupin’s competitors could gain an unfair competitive advantage. Id.
`
`Further, the parties assert that portions of the Patent Owner’s
`
`Response (Paper 23, a portion of page 50) and the Williams declaration (Ex.
`
`2082 at ¶¶ 206 and 234 in IPR2015-01097, ¶¶ 204 and 238 in IPR2015-
`
`001100, and ¶¶ 204 and 229 in IPR2015-01105) cite or substantially
`
`describe the information contained in Exhibit 2109 in connection with
`
`discussions of secondary considerations of non-obviousness. Id. at 7. Thus,
`
`for the same reasons asserted regarding Exhibit 2109, the parties request that
`
`we seal the identified portions of Paper 23 and Exhibit 2082. Id.
`
`
`
`Although the parties have established that those materials represent or
`
`contain confidential information, a protective order has not been entered in
`
`
`
`3
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`the captioned proceedings and an adequate proposed protective order
`
`describing a category of confidential information to be designated as
`
`“PROTECTIVE ORDER MATERIAL – BOARD’S EYES ONLY” has not
`
`been filed. Thus, the joint motion to seal is denied without prejudice. Under
`
`the circumstances, we exercise our discretion to maintain Exhibits 2082,
`
`2109, and Papers 22 and 23 under a provisional seal, in the manner
`
`requested, through July 31, 2016, to allow time for the parties to file a
`
`renewed motion to seal after a protective order is entered in this proceeding
`
`and/or to withdraw provisionally sealed papers and exhibits.
`
`In accordance with the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that the Joint Motion to Seal is denied without prejudice;
`
`FURTHER ORDERED that Exhibits 2082, 2109, and Papers 22 and
`
`23, shall remain provisionally sealed until further notice by the Board;
`
`FURTHER ORDERED the parties may file a renewed motion to seal
`
`and/or withdraw provisionally sealed exhibits on or before July 31, 2016;
`
`and
`
`FURTHER ORDERED that any opposition to a renewed motion to
`
`seal shall be filed within 5 business days after the filing of the motion(s).
`
`
`
`4
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`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
`
`
`
`PATENT OWNER:
`
`Bryan Diner
`bryan.diner@finnegan.com
`
`Justin Hasford
`justin.hasford@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`5
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