Paper No. ____
`Filed: October 17, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC., INNOPHARMA
`LICENSING, INC., INNOPHARMA LICENSING LLC, INNOPHARMA INC.,
`INNOPHARMA LLC, MYLAN PHARMACEUTICALS INC., and MYLAN INC.
`Petitioner
`
`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)34
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
`
`
`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 A word-for-word identical paper has been filed in each proceeding identified in
`
`the heading.
`
`
`Filed: October 17, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC., INNOPHARMA
`LICENSING, INC., INNOPHARMA LICENSING LLC, INNOPHARMA INC.,
`INNOPHARMA LLC, MYLAN PHARMACEUTICALS INC., and MYLAN INC.
`Petitioner
`
`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)34
`
`
`
`
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`UNDER 37 C.F.R. § 42.56
`
`
`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 A word-for-word identical paper has been filed in each proceeding identified in
`
`the heading.
`
`
`
`I.
`
`Statement of Relief Requested
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`Pursuant to 37 C.F.R. § 42.56, Patent Owner requests that the Board
`
`expunge from the record the confidential versions of Paper Nos. 23 and 24 and Exs.
`
`1099, 1120, 1122, 1123, 1154, 1181, 2082, 2096, 2102, 2103, 2110, 2116, 2126,
`
`2128, 2130, 2251, 2258, 2267-2278, 2291-2293, 2294, and 2323, for the reasons
`
`stated herein.
`
`II. Background
`On July 29, 2016, Patent Owner filed a Renewed Motion to Seal concerning
`
`a number of Patent Owner’s exhibits, listed below (see Paper No. 68), and on
`
`August 1, 2016, Patent Owner filed a Second Renewed Motion to Seal concerning
`
`additional exhibits, also listed below, (see Paper No. 69). On September 15, 2016,
`
`the Board granted Patent Owner’s two motions to seal (see Paper Nos. 73, 74),
`
`sealing all or portions of the following papers and exhibits:
`
`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 23 and
`
`24 (filed February 25, 2016).
`
`• Excerpts of Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
`
`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016);
`
`
`
`2
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`Ex. 2110 (filed July 29, 2016); Ex. 2251 (filed July 29, 2016); Exs. 2291-
`
`2293 (filed July 29, 2016).5
`
`• Information related to alleged commercial success of Patent Owner’s
`
`product from a related district court case: Ex. 2258 (filed February 25,
`
`2016); Ex. 2323 (filed May 5, 2016).
`
`• Materials related to third-party BioScience’s testing procedures: Exs. 2267-
`
`2278, 2294 (filed February 25, 2016).
`
`• Expert Declarations: Hofmann (Ex. 1122) (filed April 22, 2016); Williams
`
`(Ex. 2082) (filed February 25, 2016); Trattler (Ex. 2116) (filed July 29,
`
`2016); Myers (Ex. 2126) (filed July 29, 2016); Paulson (Ex. 2128) (filed
`
`February 25, 2016); and Jarosz (Ex. 2130) (filed July 29, 2016).6
`
`
`5 Revised, confidential versions of Exs. 2096, 2102, 2103, 2110, 2251, and 2291-
`
`2293 were filed on July 29, 2016 to conform with the marking requirements of the
`
`Stipulated Protective Order.
`
`6 Revised, confidential versions of Exs. 2116, 2126, and 2130 were filed on July 29,
`
`2016 to conform with the marking requirements of the Stipulated Protective Order
`
`and to remove redactions to information (specifically expert testimony) which
`
`Patent Owner no longer sought to seal.
`
`
`
`3
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`• Transcripts of Expert Cross Examinations: Dr. Paulson (Ex. 1123) (filed
`
`April 22, 2016); Dr. Trattler (Ex. 1120) (filed April 22, 2016); Dr. Williams
`
`(Ex. 1099) (filed April 22, 2016); and Mr. Hofmann (Ex. 1181) (excerpts
`
`from transcript) (filed May 18, 2016).
`
`As outlined in the Joint Stipulation filed herewith, in its Final Written
`
`Decision of September 12, 2016, the Board referred to paragraphs containing
`
`sealed, confidential information, in the following papers and exhibits:
`
`• Patent Owner’s Response (Paper No. 23),
`
`• Hofmann Declaration (Ex. 1122),
`
`• Ex. 1154
`
`• Williams Declaration (Ex. 2082), and
`
`• Jarosz Declaration (Ex. 2130).
`
`As also noted in the Joint Stipulation, the parties will file revised, public
`
`versions of Patent Owner’s Response and Exs. 1122, 1154, 2082, and 2130,
`
`leaving unredacted the portions of those papers and exhibits cited by the Board in
`
`the Final Written Decision.
`
`III. Reasons for the Relief Requested
`In the Board’s Order of September 15, 2016, the Board noted that, with
`
`respect to confidential information not cited in the Final Written Decision, a party
`
`
`
`4
`
`
`
`seeking to maintain the confidentiality of such information may file a motion to
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`expunge the information from the record prior to it becoming public. (See Paper
`
`No. 73 at 6.) Accordingly, Patent Owner requests the following papers and
`
`exhibits containing confidential information sealed by the Board, but not referred
`
`to in the Board’s Final Written Decision, be expunged from the record:
`
`• Patent Owner’s Response (citing to confidential exhibits), Paper Nos. 23 and
`
`24 (filed February 25, 2016).
`
`• Excerpts of Patent Owner’s New Drug Application: Ex. 2096 (filed July 29,
`
`2016); Ex. 2102 (filed July 29, 2016); Ex. 2103 (filed July 29, 2016); Ex.
`
`2110 (filed July 29, 2016); Ex. 2251 (filed July 29, 2016); Exs. 2291-2293
`
`(filed July 29, 2016).
`
`• Information related to alleged commercial success of Patent Owner’s
`
`product from a related district court case: Ex. 2258 (filed February 25,
`
`2016)7; Ex. 2323 (filed May 5, 2016).
`
`• Materials related to third-party BioScience’s testing procedures: Exs. 22678-
`
`78, 2294 (filed February 25, 2016).9
`
`
`7 Only the confidential version of Ex. 2258 should be expunged.
`
`8 Only the confidential version of Ex. 2267 should be expunged.
`
`
`
`5
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`• Confidential versions of Expert Declarations: Hofmann (Ex. 1122);
`
`Williams (Ex. 2082); Trattler (Ex. 2116); Myers (Ex. 2126); Paulson (Ex.
`
`2128); and Jarosz (Ex. 2130).
`
`• Confidential versions of transcripts of Expert Cross Examinations: Dr.
`
`Paulson (Ex. 1123) (filed April 22, 2016); Dr. Trattler (Ex. 1120) (filed
`
`April 22, 2016); Dr. Williams (Ex. 1099) (filed April 22, 2016); and Mr.
`
`Hofmann (Ex. 1181) (excerpts from transcript) (filed May 18, 2016).
`
`Because the public has access to all the materials relevant to the merits of
`
`this proceeding, either through publicly filed papers and exhibits or through
`
`redacted, public versions of Patent Owner’s Response (Paper No. 23), Hofmann
`
`Declaration (Ex. 1122), Williams Declaration (Ex. 2082), and the Jarosz
`
`Declaration (Ex. 2130) filed herewith, and given the sensitive and confidential
`
`nature of the sealed information (including the BioScience information, see Ex.
`
`2347 at ¶ 7), good cause exists for the Board to expunge the papers and exhibits
`
`listed above pursuant to 37 C.F.R. § 42.56.
`
`Moreover, Patent Owner submits that the exhibits listed above continue to
`
`contain confidential information and that expunging the them from the record will
`
`9 Patent Owner has been authorized by third party BioScience to make this request
`
`on its behalf. See Ex. 2347 at ¶ 9.
`
`
`
`6
`
`
`
`not hamper the public interest of maintaining a complete and understandable file
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`history for public notice purposes. Patent Owner therefore requests the exhibits
`
`listed above be removed from the record.
`
`Patent Owner contacted counsel for Petitioners and they do not oppose this
`
`motion to expunge.10
`
`IV. Conclusion
`For the reasons set forth above, Patent Owner requests that the Board grant
`
`this motion and expunge confidential versions of Paper Nos. 23 and 24 and Exs.
`
`1099, 1120, 1122, 1123, 1154, 1181, 2082, 2096, 2102, 2103, 2110, 2116, 2126,
`
`2128, 2130, 2251, 2258, 2267-2278, 2291-2293, 2294, and 2323 from the record.
`
`
`Dated: October 17, 2016
`
`
`
`
`
`By: /Joshua L. Goldberg/
`
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
` Attorney for Patent Owner
`
`
`10Petitioner InnoPharma does not object to Patent Owner’s motion to expunge for
`
`all exhibits listed herein. Petitioner Lupin provided express notice that it does not
`
`object to Patent Owner’s motion to expunge for all exhibits listed herein except for
`
`Ex. 1181. Patent Owner contacted Petitioner Lupin regarding Ex. 1181 on October
`
`17, 2016, but Petitioner Lupin did not respond prior to this motion being filed.
`
`
`
`7
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion to Expunge Under 37 C.F.R. § 42.56 was served on October 17,
`
`2016, via email directed to counsel of record for the Petitioner at the following:
`
`Deborah Yellin
`DYellin@crowell.com
`
`Jonathan Lindsay
`JLindsay@crowell.com
`
`Teresa Stanek Rea
`TRea@crowell.com
`
`Chiemi Suzuki
`CSuzuki@crowell.com
`
`Shannon Lentz
`SLentz@crowell.com
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Bryan Skelton, Ph.D.
`Bryan.skelton@alston.com
`
`Lance Soderstrom
`Lance.soderstrom@alston.com
`
`Hitetada James Abe
`James.abe@alston.com
`
`
`
`Joseph M. Janusz
`Joe.janusz@alston.com
`
`8
`
`
`
`
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`9
`
`Date: October 17, 2016
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