Paper No. ____
`Filed: December 1, 2016
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`
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`
`
`
`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 RENEWED 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: December 1, 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 RENEWED 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 and for the reasons stated herein, Patent
`
`Owner requests that the Board reconsider its decision regarding the expungement
`
`from the record of Ex. 1181.
`
`II. Background
`On October 17, 2016, Patent Owner filed a Motion to Expunge Under 37
`
`C.F.R. § 42.56, requesting expungement of certain confidential versions of Papers
`
`and Exhibits, including Ex. 1181. Ex. 1181 is a transcript of the expert cross
`
`examination of Mr. Hofmann. The Board did not refer to Ex. 1181 in its Final
`
`Written Decision of September 12, 2016.
`
`On October 26, 2016, the Board granted-in-part Patent Owner’s Motion,
`
`expunging confidential versions of all the requested Papers and Exhibits, except Ex.
`
`1181. The Board did not grant Patent Owner’s request to expunge Ex. 1181
`
`because although Patent Owner received consent from Petitioner InnoPharma,
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`Patent Owner had not obtained the consent of Petitioner Lupin. (See Paper No. 81
`
`at 2.) The Board, however, preserved the sealed status of Ex. 1181 pending appeal
`
`and authorized Patent Owner to renew its request to expunge Ex. 1181 within ten
`
`business days after the time for filing a notice of appeal expires, or if an appeal is
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`taken, ten business days after a final disposition of such appeal. (Paper No. 81 at
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`4.) Petitioner Lupin informed the Board by email on September 2, 2016 that this
`2
`
`
`
`
`
`IPR has settled. Moreover, on November 9, 2016, Petitioner Lupin informed
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`Patent Owner that it does not oppose Patent Owner’s motion to expunge Ex. 1181.
`
`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.
`
`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
`
`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. 73 at 6.) Accordingly, Patent Owner now renews its request that Ex. 1181
`
`having been sealed by the Board, but not referred to in the Board’s Final Written
`
`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 Ex. 1181 continues to contain
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`confidential information and that expunging it from the record will not hamper the
`
`
`
`3
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`public interest of maintaining a complete and understandable file history for public
`
`notice purposes. Patent Owner therefore requests that Ex. 1181 be removed from
`
`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 Exhibit 1181 from the record.
`
`
`Dated: December 1, 2016
`
`
`By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
` Attorney for Patent Owner
`
`
`
`4
`
`
`
`
`
`
`
`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
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`Owner’s Renewed Motion to Expunge Under 37 C.F.R. § 42.56 was served on
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`December 1, 2016, via email directed to counsel of record for the Petitioner at the
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`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
`
`
`
`5
`
`
`
`
`
`
`
`IPR2015-01097 (Patent 8,754,131 B2)
`IPR2015-01100 (Patent 8,927,606 B1)
`IPR2015-01105 (Patent 8,871,813 B2)
`
`
`Joseph M. Janusz
`Joe.janusz@alston.com
`
`/Bradley J. Moore/
`Bradley J. Moore
`Litigation Legal Assistant
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`6
`
`Date: December 1, 2016
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