Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 20
`Entered: February 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP.,
`and QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2015-01277 (Patent 8,309,943)
`Case IPR2015-01279 (Patent 7,786,455)
`Cases IPR2015-01300, -01303, -01377 (Patent 7,435,982)
`Case IPR2015-01362 (Patent 8,969,841)
`Case IPR2015-01368 (Patent 8,525,138)
`Case IPR2015-01375 (Patent 9,048,000)1
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`Tel: 571.272.7822
`
`Paper 20
`Entered: February 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP.,
`and QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner.
`
`Case IPR2015-01277 (Patent 8,309,943)
`Case IPR2015-01279 (Patent 7,786,455)
`Cases IPR2015-01300, -01303, -01377 (Patent 7,435,982)
`Case IPR2015-01362 (Patent 8,969,841)
`Case IPR2015-01368 (Patent 8,525,138)
`Case IPR2015-01375 (Patent 9,048,000)1
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, and IPR2015-01377
`
`A conference call in the above proceedings was held on February 16,
`2016, among respective counsel for Petitioner and Patent Owner, and Judges
`Medley, Chang, and Parvis. The purpose of the call was to discuss a request
`by Patent Owner, Energetiq Technology, Inc., to file a motion to revise the
`Board’s default protective order in each of IPR2015-01277, IPR2015-01279,
`IPR2015-01300, IPR2015-01303, IPR2015-01362, IPR2015-01368,
`IPR2015-01375, and IPR2015-01377 (“IPR proceedings”). See Default
`Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,769–71 (Aug. 14, 2012) (Appendix B).
`During the call, Patent Owner explained that it seeks to submit five
`unredacted documents that include third-party confidential information, such
`as technical information and a license agreement, and, therefore, are subject
`to a Protective Order in a co-pending International Trade Commission (ITC)
`proceeding. Patent Owner indicated that the third party agreed to allow
`Patent Owner to submit these five documents in these IPR proceedings on
`the condition that the five documents are not shown to employees of the
`third party’s competitors, including in-house counsel of Petitioner.
`Petitioner, ASML Netherlands B.V., Excelitas Technologies Corp.,
`and Qioptiq Photonics GmbH & Co. KG, responded that its in-house
`counsel is actively involved in preparing arguments and obtaining evidence
`for these IPR proceedings. Petitioner, therefore, opposes restrictions on use
`of the information that would prohibit disclosure to its in-house counsel.
`The parties were reminded that confidential information that is subject
`to a protective order in these proceedings ordinarily would become public 45
`days after final judgment in a trial. See Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,761. Additionally, the parties were reminded that there is
`
`2
`
`
`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, and IPR2015-01377
`
`an expectation that information will be made public where the existence of
`the information is identified in a final written decision following a trial. Id.
`Furthermore, a motion to expunge the information will not necessarily
`prevail over the public interest in maintaining a complete and
`understandable file history.
`Patent Owner did not provide persuasive explanation indicating that
`Patent Owner made sufficient efforts to de-designate, redact or otherwise
`eliminate or at least reduce the amount of third party confidential
`information subject to the protective order in the ITC proceeding that Patent
`Owner seeks to submit in these IPR proceedings. Accordingly, Patent
`Owner’s request to file a motion to modify the Board’s standard protective
`order is premature. We urge Patent Owner to contact the third party
`regarding de-designating or redacting so as to eliminate third party
`confidential information that Patent Owner seeks to submit in these IPR
`proceedings. We additionally require that the Patent Owner remind the third
`party that information submitted in these IPR proceedings may be made
`public, as set forth in the Office Patent Trial Practice Guide, so as to ensure
`that the third party’s agreement to the use of its information in these IPR
`proceedings is with the knowledge of the risks associated with the
`submission of the information to the Board.
`Patent Owner should not report back to us before they have complied
`with the above. Patent Owner, however, need not contact the Board if
`Patent Owner no longer seeks to revise Board’s default protective order.
`We further note that the Scheduling Orders in these IPR proceedings
`indicate that it is the responsibility of the party whose confidential
`information is at issue, not necessarily the proffering party, to file the motion
`
`3
`
`
`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, and IPR2015-01377
`
`to seal, unless the party whose confidential information is at issue is not a
`party to these IPR proceedings. See, e.g., IPR2015-01277, Paper 14. For
`the avoidance of doubt, if Patent Owner obtains the fully-informed
`agreement of the third party to use its information in these proceedings and
`Patent Owner proceeds with the Board’s default protective order rather than
`contacting us, Patent Owner is responsible for filing the motions to seal in
`each of the IPR proceedings and has the burden of proof to establish that it is
`entitled to the requested relief, i.e., sealing of the documents. See 37
`C.F.R. § 42.20(c).
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that Patent Owner’s request to file a motion to revise the
`Board’s default protective order is denied.
`
`
`4
`
`
`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, and IPR2015-01377
`
`PETITIONER:
`Donald R. Steinberg
`David L. Cavanaugh
`Michael H. Smith
`WILMER CUTLER PICKERING HALE & DORR LLP
`don.steinberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Steven M. Bauer
`Joseph A. Capraro Jr.
`Safraz W. Ishmael
`Jinnie L. Reed
`PROSKAUER ROSE LLP
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`sishmael@proskauer.com
`
`5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
