`571-272-7822
`
`
`
`
`Paper 10
`Entered: September 6, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC,
`Petitioner,
`
`v.
`
`ECOLAB USA,1
`Patent Owner.
`
`____________
`
`Case IPR2016-01281 (Patent 8,465,623 B2)
` Case IPR2016-01282 (Patent 8,088,250 B2)2
`____________
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and JEFFREY W.
`ABRAHAM, Administrative Patent Judges.
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. §§ 42.5, 42.20
`
`
`1 Patent Owner states that Ecolab, USA, not Nalco Company–as indicated in
`the caption of the Petition and on the face of the challenged patents, is the
`current owner of the challenged patents. IPR2016-01281, Paper 5;
`IPR2016-01282, Paper 5.
`2 This Order addresses similar issues in two cases. We exercise our
`discretion to issue a single Order, to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`Case IPR2016-01281 (Patent 8,465,623 B2)
`Case IPR2016-01282 (Patent 8,088,250 B2)
`
`On September 1, 2016, a telephone conference was held among
`respective counsel for the parties and Judges Kalan, Tornquist, and
`Abraham. Patent Owner requested the call to seek authorization to file a
`motion to strike the declaration of, and to disqualify, Petitioner’s declarant,
`Dr. David A. Dyer, Ph.D.
`
`During the call, Patent Owner stated that Dr. Dyer, through his
`employment at International Paper Company, had access to Nalco
`Company’s confidential information. Patent Owner indicated that Dr.
`Dyer’s knowledge of Nalco Company’s confidential information likely has
`informed and influenced, and would continue to inform and influence, Dr.
`Dyer’s opinions offered as an expert for Petitioner in these proceedings. As
`a result, Patent Owner seeks to strike the Dyer Declaration (IPR2016-01281,
`Ex. 1002; IPR2016-01282, Ex. 1002) and disqualify Dr. Dyer from
`participating in these proceedings.
`
`Petitioner disagrees that the Board should strike the Dyer Declaration
`and/or disqualify Dr. Dyer from participating in these proceedings.
`Petitioner contends that applying the two-prong test discussed in Agila
`Specialties Inc., v. Cephalon, Inc., Case No. IPR2015-00503, slip op. 4
`(PTAB Aug. 19, 2015), (Paper 13), does not warrant disqualification of Dr.
`Dyer. Additionally, Petitioner argues that Dr. Dyer relied upon only public
`information available in prior art references in forming his opinions
`regarding the patentability of the challenged claims under 35 U.S.C. §§ 102
`and 103.
`
`Given the extremely fact-intensive nature of this issue, we authorize
`Patent Owner to file a motion to strike the Dyer Declaration and to
`disqualify Dr. Dyer. In view of the drastic relief requested, Patent Owner
`must support its motion with a reasonable amount of specific evidence
`
`2
`
`
`
`Case IPR2016-01281 (Patent 8,465,623 B2)
`Case IPR2016-01282 (Patent 8,088,250 B2)
`tailored to the relief requested (including, but not limited to, evidence
`demonstrating the existence of any confidentiality agreements and the nature
`of the confidential information provided to Dr. Dyer) and applicable legal
`authority, as conclusory statements will not suffice.
`
`During the call, Patent Owner stated that, if authorized to file a
`motion, Patent Owner would need to file its motion under seal. Currently
`there is no protective order in this proceeding. The parties are directed to 37
`C.F.R. § 42.54 and the Office Patent Trial Practice Guide for guidance
`regarding a protective order and motions to seal.
`
`In view of the foregoing, it is hereby
`ORDERED that Patent Owner is authorized to file a motion to strike
`the Dyer Declaration and/or disqualify Dr. Dyer;
`
`FURTHER ORDERED that Patent Owner must limit its motion to 10
`pages and must file the motion within five business days of the issuance of
`this order;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to the motion within five business days of Patent Owner’s filing
`of the motion;
`
`FURTHER ORDERED that Petitioner’s opposition to the motion is
`limited to 10 pages; and
`
`FURTHER ORDERED that no reply is authorized at this time.
`
`
`
`
`
`3
`
`
`
`
`
`Case IPR2016-01281 (Patent 8,465,623 B2)
`Case IPR2016-01282 (Patent 8,088,250 B2)
`PETITIONER:
`
`Michael Chu
`Kevin Shortsle
`MCDERMOTT WILL & EMERY LLP
`
`mchu@mwe.com
`kshortsle@mwe.com
`
`PATENT OWNER:
`
`Anthony Zeuli
`Andrew Lagatta
`Anneliese Mayer
`MERCHANT & GOULD P.C.
`
`tzeuli@merchantgould.com
`alagatta@merchantgould.com
`amayer@merchantgould.com
`
`4
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