Filed on behalf of Ecolab USA Inc.
`
`By: Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5208
`Fax: (612) 332-9081
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`ECOLAB USA INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`
`____________
`
`PATENT OWNER’S MOTION TO SEAL EXHIBITS 2002-2004, 2010-2011,
`PORTIONS OF EXHIBITS 2007-2008 AND MOTION
`
`
`
`
`
`By: Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5208
`Fax: (612) 332-9081
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`ECOLAB USA INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`
`____________
`
`PATENT OWNER’S MOTION TO SEAL EXHIBITS 2002-2004, 2010-2011,
`PORTIONS OF EXHIBITS 2007-2008 AND MOTION
`
`
`
`
`
`Patent Owner1 requests that its confidential commercial information be
`
`sealed pursuant to 37 C.F.R. §§ 42.14 and 42.54(A). Patent Owner requests the
`
`Board enter the default protective order set forth in Appendix B of the Office Trial
`
`Practice Guide, which is filed concurrently with this motion. Patent Owner has
`
`conferred in good faith with Petitioner; Petitioner is considering the default
`
`Protective Order, but has not yet provided any indication as to whether it opposes
`
`entry of the default protective order, and has not yet provided indication as to
`
`whether it opposes sealing the exhibits that are the subject of this motion.
`
`The proposed protective order is attached as Exhibit A hereto. Pursuant to
`
`Appendix B of the Trial Practice Guide, the terms of the order take effect upon the
`
`filing of this motion. 77 Fed. Reg. 48756, 48770 (August 14, 2012).
`
`Confidential information is protected from disclosure. 35 U.S.C. § 316(a)(7).
`
`The Trial Practice Guide provides:
`
`The rules aim to strike a balance between the public’s interest in maintaining
`a complete and understandable file history and the parties’ interest in
`protecting truly sensitive information. . . . The rules identify confidential
`information in a manner consistent with Federal Rule of Civil Procedure
`26(c)(1)(G), which provides for protective orders for trade secret or other
`confidential research, development, or commercial information.
`
`
`
`
`1 Nalco Company owned U.S. Patent 8,088,250 and U.S. Patent 8,465,623 until
`December 31, 2014, when they were assigned to Ecolab USA Inc. (EX2009 at ¶ 4.)
`Nalco currently holds an exclusive license to the patents, and Nalco and Ecolab are
`commonly owned. (EX2009 at ¶¶ 3, 5.) Both Nalco and Ecolab are real parties in
`interest in this proceeding, and are collectively referenced herein as “Patent
`Owner.”
`
`
`
`77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
`
`
`
`To establish that evidence should remain under seal, a party must identify
`
`the information as confidential, and show its need to rely on that information. See
`
`Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc., Case IPR2014-
`
`00736, Paper 38 at 2 (PTAB Apr. 14, 2015) (establishing requirements of Motion
`
`to Seal). The party also needs to explain (1) adverse consequences and harm from
`
`public disclosure of that confidential information, and (2) why the party presenting
`
`the information must rely on the information, rather than a stipulation. Kayak
`
`Software Corp. et al., v. Intern’l. Bus. Mach. Corp., Case IPR2-16-00608, Paper 19
`
`at 5. Finally, the party must balance the public’s interest in maintaining a complete
`
`and understandable record, the harm to a party from disclosure, and the need of
`
`either party to rely specifically on the information at issue. Id.
`
`Patent Owner requests that specific information, regarding (1) its
`
`confidential processes and information shared with International Paper under
`
`Nondisclosure Agreements and (2) the details of development and testing of filler
`
`pretreatments, not be revealed to the public as provided for in the default protective
`
`order. The specific information requested to be sealed consists of:
`
`A. A declaration from an employee of Patent Owner (EX2002) attaching
`
`copies of confidentiality agreements between Patent Owner and
`
`International Paper, outlining testing jointly performed by those
`
`
`
`companies, involvement of Dr. Dyer in that testing, and exchange of
`
`confidential information;
`
`B. A Mutual Nondisclosure Agreement (EX2003) between Patent Owner
`
`and International Paper describing the relationship between those parties.
`
`C. A Project-Specific Non-Disclosure Agreement (EX2004) between Patent
`
`Owner and International Paper listing specific types of information to be
`
`maintained as confidential.
`
`D. Portions of correspondence (EX2007) from Wendy Ward, an attorney
`
`for Patent Owner, to Kevin Shortsle, attorney for Petitioner, identifying
`
`specific information disclosed by Patent Owner to International Paper
`
`and Dr. Dyer under NDA.
`
`E. Portions of correspondence (EX2008) from Kevin Shortsle to Wendy
`
`Ward regarding the specific information exchanged between Patent
`
`Owner and International Paper regarding filler pretreatment technologies
`
`that are the subject of the patent at issue.
`
`F. A declaration from a Patent Owner employee (EX2010) describing
`
`cooperative testing and product development between Patent Owner and
`
`International Paper during relevant time periods, including discussion of
`
`specific trials, information disclosed to International Paper by Patent
`
`
`
`Owner, and involvement of Dr. Dyer in such work. This information was
`
`shared by Patent Owner under NDA. See EX2002-2004.
`
`G. A declaration from a further Patent Owner employee and inventor on the
`
`’250 and ’623 patents at issue in IPR2016-01281 and IPR2016-01282
`
`(EX2011) describing cooperative testing and product development
`
`between Patent Owner and International Paper during relevant time
`
`periods, including discussion of specific trials, information disclosed to
`
`International Paper by Patent Owner, information specifically provided
`
`by the inventor to Dr. Dyer, and involvement of Dr. Dyer in such work.
`
`This information was shared by Patent Owner under NDA. See EX2002-
`
`2004.
`
`Each of the above Exhibits and redacted portions of Patent Owner’s Motion
`
`reflects confidential information that, to the knowledge of Patent Owner, has not
`
`been made public.
`
`Regarding EX2002, EX2010, and EX2011, each of these declarations
`
`represents detailed information regarding the information specifically disclosed by
`
`Patent Owner to International Paper pursuant to confidentiality obligations. This
`
`includes details regarding the technology at issue in this case, including the
`
`patented technology, and disclosed under NDA during the relevant time periods.
`
`EX2002 additionally describes details of the confidential work history between
`
`
`
`Patent Owner and International Paper, as well as non-disclosure agreements
`
`between Patent Owner and International Paper, the terms of which are confidential.
`
`EX2003 and EX2004 represent proprietary, nonstandard agreements between
`
`Patent Owner and International Paper. EX 2004 further includes a confidential
`
`description of some of the information to be exchanged under NDA.
`
`The redacted portions of EX2007 and EX2008 represent discussions
`
`between counsel for Petitioner and Patent Owner regarding the subject matter
`
`disclosed by Patent Owner to International Paper, and its relationship to the patent
`
`at issue. Characterizations by the parties regarding the disclosure and testing by
`
`Patent Owner and International Paper are likewise confidential.
`
`Not only is the information sought to be sealed confidential, Patent Owner
`
`needs to rely on the information submitted herewith to support its accompanying
`
`Motion to Disqualify and Strike the Declaration of Petitioner’s Expert, Dr. David
`
`Dyer. The information submitted in the accompanying motion and EX2002-2004,
`
`EX2010-2011, and portions of EX2007-2008 specifically relates to (1) the detailed
`
`confidential information provided to International Paper and Dr. Dyer, and
`
`(2) testing performed by Patent Owner regarding technologies including the patent
`
`at issue. These illustrate the information provided to Dr. Dyer, and its sensitivity to
`
`Patent Owner. The information for which confidentiality is sought is either
`
`(1) specifically requested by the Board in its order in this proceeding to establish
`
`
`
`the extent of Dr. Dyer’s access to Patent Owner’s confidential information (Paper
`
`12 at 2-3), or presented by necessity to rebut Petitioner’s argument that
`
`confidentiality does not apply (EX2007).
`
`Public disclosure of Patent Owner’s confidential information would have
`
`serious adverse consequences. Disclosure of Patent Owner’s testing of filler
`
`technologies would cause competitive harm by disclosing to competitors
`
`proprietary testing information. The NDAs themselves reflect a negotiated
`
`contract, the terms of which are not available to the public. Public disclosure of
`
`those terms would harm Patent Owner in future agreement negotiations. And, the
`
`terms of the NDAs require Patent Owner to prevent disclosure of the testing and
`
`information exchanged under the NDAs.
`
`The parties cannot stipulate away a need for submission of any of the above
`
`information. Petitioner and Patent Owner have reached an impasse regarding
`
`continued involvement of Dr. Dyer, who has received this confidential
`
`information.
`
`Patent Owner asserts that the public interest in a clear record is outweighed
`
`here by the Patent Owner’s need to rely on the detailed factual information
`
`submitted and the high need for confidentiality in this matter. To the extent such
`
`information is not required to be maintained under seal (e.g., patent assignment
`
`information), Patent Owner seeks only suppression of specific information and has
`
`
`
`attempted to narrowly tailor its requests. Patent Owner requests sealing of
`
`EX2002-2004, EX2010-2011, and allowed redaction of EX2007-2008 and the
`
`accompanying Motion to Disqualify and Strike the Declaration of Petitioner’s
`
`Expert, Dr. David Dyer. If the Board ultimately disagrees regarding the scope of
`
`Patent Owner’s requests, Patent Owner respectfully requests an opportunity to
`
`further redact, modify, or withdraw the exhibit or exhibits in questions before any
`
`information in the exhibits is made public.
`
`Date: September 13, 2016
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`NalcoIPR@merchantgould.com
`
`
`
`(Trial No. IPR2016-01281)
`
`ATTORNEYS FOR PATENT OWNER
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S MOTION TO
`
`SEAL EXHIBITS 2002-2004, 2010-2011, PORTIONS OF EXHIBITS 2007-2008
`
`AND MOTION” and “CERTIFICATION OF SERVICE” for the above-captioned
`
`matter were served in their entirety on September 13, 2016, upon the following
`
`parties via e-mail at the below email addresses:
`
`Lead Counsel
`Michael P. Chu (Reg. No. 37,112)
`McDermott Will & Emery LLP
`227 W. Monroe Street
`Chicago, Illinois 60606
`Telephone: 312-984-5485
`Facsimile: 312-984-7700
`mchu@mwe.com
`
`
`Date: September 13, 2016
`
`(Trial No. IPR2016-01281)
`
`
`
`Backup Counsel
`Kevin P. Shortsle (Reg. No. 58,084)
`McDermott Will & Emery LLP
`227 W. Monroe Street
`Chicago, Illinois 60606
`Telephone: 312-984-3361
`Facsimile: 312-984-7700
`kshortsle@mwe.com
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`NalcoIPR@merchantgould.com
`
`ATTORNEYS FOR PATENT OWNER
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