Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 18
`Entered: June 13, 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)
`Cases IPR2015-01362, IPR2016-00127 (Patent 8,969,841)
`Case IPR2015-01368 (Patent 8,525,138)
`Cases IPR2015-01375, IPR2016-00126 (Patent 9,048,000)1
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`JUDGMENT
`Termination of Proceedings after Institution
`37 C.F.R. § 42.73
`
`
`
`1 This Decision addresses the same issue in the above-identified inter partes
`reviews. We exercise our discretion to issue one Order to be docketed in
`each case. The parties, however, are not authorized to use this style of filing
`in subsequent papers, without prior authorization.
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`
`Joint Motion to Terminate and Joint Request to Treat Written Settlement
`Agreement as Business Confidential Information
`On June 6, 2016, Petitioner, ASML Netherlands B.V., Excelitas
`Technologies Corp., and Qioptiq Photonics GmbH & Co. KG, and Patent
`Owner, Energetiq Technology, Inc. filed a Joint Motion to Terminate in each
`of the above-identified proceedings. Paper 31.2 The parties also filed a true
`copy of their Written Settlement Agreement, made in connection with the
`termination of the proceedings, in accordance with 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(b). Ex. 1021.3 Additionally, the parties jointly requested
`that their Written Settlement Agreement, including written attachments, filed
`as Exhibit 1021, be treated as business confidential information. Paper 31,
`6. For the reasons set forth below, the Joint Motions to Terminate and the
`Joint Request are granted.
`In their Joint Motions to Terminate, the parties indicate that they have
`settled all of their disputes involving the following patents: U.S. Patent Nos.
`7,435,982; 7,786,455; 8,309,943; 8,525,138; 8,969,841; 9,048,000; and
`9,185,786. Paper 31, 5. In particular, the parties have agreed to settle and
`dismiss their related district court case (Energetiq Tech., Inc. v. ASML
`Netherlands B.V., No. 1:15-cv-10240-LTS (D. Mass.)) and terminate the
`
`2 For the purpose of clarity and expediency, we treat IPR2015-01277 as
`representative, and all citations are to IPR2015-01277 unless otherwise
`noted.
`3 In the Institution Decision, we consolidated the IPR2015-01300 and
`IPR2015-01303 inter partes reviews and determined that all further filings
`in the consolidated proceedings shall be made in only Case IPR2015-01300.
`IPR2015-01300, Paper 13. Accordingly, the parties submitted the Joint
`Motion to Terminate and Settlement Agreement in only IPR2015-01300
`(Paper 31; Ex. 1119), but not in IPR2015-01303.
`
`2
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`International Trade Commission investigation (In the Matter of Certain
`Laser-Driven Light Sources, Subsystems Containing Laser-Driven Light
`Sources, and Products Containing Same, Inv. 337-TA-983 (U.S.
`International Trade Commission)). Id. at 1. Furthermore, the parties also
`have submitted Motions to Terminate all other inter partes reviews
`requested by Petitioner for the aforementioned patents. Id.
`The Board instituted inter partes reviews in each of IPR2015-01277,
`IPR2015-01279, IPR2015-01300, IPR2015-01303, IPR2015-01362,
`IPR2015-01368, IPR2015-01375, IPR2015-01377, IPR2016-00126, and
`IPR2016-00127. Petitioner has not filed a Reply in any of these cases and
`no Final Hearing has been held.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Upon consideration of
`the facts before us, we determine that it is appropriate to terminate the
`above-identified proceedings as to both parties, and enter judgment.
`
`Motion to Seal Patent Owner Response and Related Exhibits
`We further note that Patent Owner filed Motions to Seal (Paper 23 in
`IPR2015-01362 and Paper 24 in IPR2015-01375) Patent Owner Responses
`(Paper 22 in IPR2015-01362 and Paper 23 in IPR2015-01375) and certain
`documents filed as Exhibits 2008, 2010, 2016, 2027, 2028, 2030, 2036,
`2037, 2040, 2041, 2042, 2043, and 2065 in each of IPR2015-01362 and
`IPR2015-01375.
`There is a strong public policy in favor of making information filed in
`inter partes review proceedings open to the public. See Garmin Int’l v.
`
`3
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`Cuozzo Speed Techs., Case IPR2012-00001 (PTAB March 14, 2013) (Paper
`34). Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in
`an inter partes review are open and available for access by the public. The
`standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54.
`A moving party bears the burden of showing that the relief requested should
`be granted. 37 C.F.R. § 42.20(c).
`Regarding Patent Owner’s Motions to Seal, Patent Owner, as the
`moving party, has failed to carry its burden. For example, Patent Owner
`requests that we seal Exhibit 2008 because the document purportedly
`“contains confidential information in the form of Energetiq proprietary
`design information and third party business strategy information.” Paper 23,
`4. Exhibit 2008 is dated January 4, 2006, more than ten years ago, includes
`extensive redactions, and the remaining material does not appear to be
`confidential, without further explanation. As an additional example, Patent
`Owner requests that we seal Exhibits 2010 and 2016 because these
`documents purportedly contain “confidential information in the form of
`multiple references to documents having proprietary design information and
`business strategy information.” Id. Exhibit 2010 is approximately 120
`pages and Exhibit 2016 is approximately 45 pages. Both Exhibits 2010 and
`2016 include much material that does not appear to be confidential, without
`further explanation. Additionally, Patent Owner’s motion to seal requests
`that these entire documents be sealed without providing proof in the record
`that all of the information in these documents is confidential. Other of the
`Exhibits submitted by Patent Owner as confidential have similar issues.
`
`4
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`
`We recognize a denial of the motions to seal would immediately
`unseal the material that Patent Owner desires to remain confidential and the
`effect would be irreversible. Therefore, rather than denying the motions at
`this time, we will provide Patent Owner five business days (1) to refile its
`motion to seal with further argument and evidence, along with public
`versions of the Exhibits that include redactions of only confidential material,
`or (2) to withdraw the motions to seal and request that we expunge the
`confidential versions of the Patent Owner Responses (Paper 22 in IPR2015-
`01362 and Paper 23 in IPR2015-01375), as well as Exhibits 2008, 2010,
`2016, 2027, 2028, 2030, 2036, 2037, 2040, 2041, 2042, 2043, and 2065 filed
`in each of IPR2015-01362 and IPR2015-01375.
`
`5
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the parties’ joint request in each proceeding that the
`settlement agreement (IPR2015-01277, Ex. 1021; IPR2015-01279,
`Ex. 1020; IPR2015-01300, Ex. 1119; IPR2015-01362, Ex. 1030; IPR2015-
`01368, Ex. 1030; IPR2015-01377, Ex. 1223; IPR2015-01375, Ex. 1033;
`IPR2016-00126, Ex. 1130; IPR2016-00127, Ex. 1129) be treated as business
`confidential information, be kept separate from the patent file, and made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c), is granted;
`FURTHER ORDERED that the joint motions to terminate in each of
`the IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127 proceedings are granted and each of
`the proceedings is terminated with respect to both Petitioner and Patent
`Owner; and
`FURTHER ORDERED that the Patent Owner Responses in IPR2015-
`01362 and IPR2015-01375, as well as Exhibits 2008, 2010, 2016, 2027,
`2028, 2030, 2036, 2037, 2040, 2041, 2042, 2043, and 2065 in each of
`IPR2015-01362 and IPR2015-01375, will be made available to the public
`after 5 PM Eastern, five business days after the entry date of this decision,
`unless prior to that time, Patent Owner (1) refiles its motion to seal with
`further argument and evidence, along with public versions of the Exhibits
`that include redactions of only confidential material, or (2) withdraws the
`
`6
`
`

`
`IPR2015-01277, IPR2015-01279, IPR2015-01300, IPR2015-01303,
`IPR2015-01362, IPR2015-01368, IPR2015-01375, IPR2015-01377,
`IPR2016-00126, and IPR2016-00127
`
`motions to seal and requests that we expunge the confidential versions of the
`Patent Owner Responses (Paper 22 in IPR2015-01362 and Paper 23 in
`IPR2015-01375), as well as Exhibits 2008, 2010, 2016, 2027, 2028, 2030,
`2036, 2037, 2040, 2041, 2042, 2043, and 2065 filed in each of IPR2015-
`01362 and IPR2015-01375
`
`
`
`
`
`
`
`PETITIONER:
`
`Donald R. Steinberg
`David L. Cavanaugh
`Michael H. Smith
`Brian Seeve
`Theodoros Konstantakopoulos
`Arthur Shum
`Richard Goldenberg
`WILMER CUTLER PICKERING HALE & DORR LLP
`Don.Steinberg@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`Brian.Seeve@wilmerhale.com
`Theodoros.Konstantakopoulos@wilmerhale.com
`Arthur.Shum@wilmerhale.com
`Richard.Goldenberg@wilmerhale.com
`
`PATENT OWNER:
`
`Steven M. Bauer
`Joseph A. Capraro Jr.
`PROSKAUER ROSE LLP
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`
`
`7