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 DISQUALIFY AND STRIKE THE
`DECLARATION OF PETITIONER’S EXPERT, DR. DAVID DYER
`
`
`
`
`
`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 DISQUALIFY AND STRIKE THE
`DECLARATION OF PETITIONER’S EXPERT, DR. DAVID DYER
`
`
`
`
`
`Case IPR2016-01281
`Patent 8,465,623
`I.
`Introduction.
`Petitioner’s proposed expert, Dr. David Dyer, should be disqualified from
`
`participating in this proceeding and his declaration should be stricken.
`
`
`
`
`
` That confidential information relates
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`directly to the technology of the patents Petitioner asks this Board to review.
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`Petitioner was aware of these facts when it chose to retain Dr. Dyer as its
`
`expert for this matter. Dr. Dyer’s declaration should be stricken and he should be
`
`disqualified because his access to Patent Owner’s confidential information taints
`
`his analysis of what one of skill in the art would understand about the prior art and
`
`proposed combinations of the same. Dr. Dyer should be disqualified for the
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`additional reason that his role as Petitioner’s expert creates a serious risk of
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`improper disclosure of Patent Owner’s confidential information. Neither Petitioner
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`nor Dr. Dyer should be permitted to encourage direct violations of Dr. Dyer’s
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`confidentiality obligations to Patent Owner.
`
`II. Background.
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`On July 5, 2016, Petitioner filed a Petition for an inter partes review of
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`claims 1-8, 12-13, and 17-18 of U.S. Patent No. 8,088,250 (“the ’250 patent”) and
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`a Petition for inter partes review of claims 1-8, 12-13, and 16-19 of U.S. Patent
`
`No. 8,465,623 (“the ’623 patent”). In support of its patentability challenges,
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`
`
`1
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`
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`Petitioner submitted and relied upon declarations submitted by Dr. David Dyer.
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`(EXl002.) Dr. Dyer is a former employee of International Paper. He worked there
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`from 1985 until March of 2015, most recently as an Engineering Fellow providing
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`global support for manufacturing operations.1 (EX1025.)
`
`During Dr. Dyer’s employment at International Paper, Patent Owner2 and
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`International Paper entered into a Mutual Nondisclosure Agreement,‘
`
`
`
`Nalco Company owned the ’250 and ’623 patents until December 31, 2014, when
`they were assigned to Ecolab USA Inc. (EX2009 at 1] 4.) Nalco currently holds an
`exclusive license to the patents, and Nalco and Ecolab are commonly owned.
`(EX2009 at 111] 3, 5.) Both Nalco and Ecolab are real parties in interest in this
`proceeding, and are collectively referenced herein as “Patent Owner.”
`
`2
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`In addition to the general agreement described above,
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`Pursuant to the NDAs, Patent Owner disclosed confidential information to
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`International Paper, including
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`3
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`Given the nature and amount of confidential Patent Owner information to
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`which he had access, it is unreasonable to expect a person in Dr. Dyer’s position to
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`compartmentalize such information to prevent unauthorized use or disclosure in
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`this proceeding. Under the terms of the NDAs, Dr. Dyer had access to information
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`on
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`4
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` Dr. Dyer himself states in his declaration that he is
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`relying on his experience with International Paper, including projects he
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`participated in involving “filler increase technology” and “filler pretreatment,” as
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`well as projects “focusing on chemistry, papermaking controls, and quality
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`
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`improvements . . . .” (EX1002 at ¶ 10.)
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`
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`Ten days after learning that Dr. Dyer had been selected as Petitioner’s expert
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`in this matter, Patent Owner placed Petitioner on notice of its objection. (EX2007.)
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`Patent Owner explained to Petitioner that it had a confidentiality agreement with
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`Dr. Dyer’s employer,
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`
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` and that Dr. Dyer’s
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`service as an expert for Petitioner in this matter would be improper. (EX2007.)
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`
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` (EX2008.) Nevertheless,
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`Petitioner rejected Patent Owner’s request that it find a new, independent expert,
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`instead choosing to press forward in reliance on its declaration from Dr. Dyer.
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`III. Argument.
`Dr. Dyer should be disqualified from serving as an expert for Petitioner in
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`this proceeding and his declaration should be stricken. While disqualification of an
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`5
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`
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`expert is a drastic measure, it is the appropriate outcome here.3 An expert should be
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`disqualified where: (1) it is objectively reasonable for the moving party to believe
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`that it had a confidential relationship with the expert; and (2) the moving party
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`disclosed confidential information to the expert that is relevant to the current
`
`proceeding. Agila Specialties Inc. v. Cephalon, Inc., Case IPR2015-00503, Paper
`
`No. 13 at 4 (PTAB Aug. 19, 2015).
`
`A.
`
`Patent Owner Believed that It Had a Confidential
`Relationship with Dr. Dyer, and that Belief Was Objectively
`Reasonable.
`
`
`Patent Owner reasonably believed that it had a confidential relationship with
`
`Dr. Dyer. The fact that Patent Owner and International Paper entered into NDAs
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` cannot be disputed. Nor
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`can it be disputed that the NDAs required International Paper employees who
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`received confidential information, such as Dr. Dyer, to maintain it in confidence.
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`Those facts should be dispositive of the issue. Indeed, “[m]any courts have held
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`that the existence of a confidentiality agreement substantiates a reasonable
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`expectation of a confidential relationship.” Brunstad v. Medtronic, Inc., No. 14-v-
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`255, 2015 U.S. Dist. LEXIS 56985, at *8 (W.D. Wis. Apr. 30, 2015).
`
`Petitioner has wrongly suggested that Patent Owner’s confidential
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`relationship was solely with International Paper and did not extend to Dr. Dyer.
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`3 Moreover, the remedy is not so drastic here. There are 8 weeks remaining in the
`statutory period for Petitioner to retain a new, independent expert and re-file.
`6
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`
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`Such an argument ignores Dr. Dyer’s employment obligations and, more
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`practically, the reality of how businesses operate. International Paper exists as a
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`corporate legal entity, but it operates through its people.
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`
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`
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`(EX2003 at ¶ 4(e).) Those employees are the people who were entrusted with the
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`confidential information and those employees are the people who have a duty to
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`Patent Owner to maintain that information in confidence.
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`Moreover, the NDAs require
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`
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` As
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`such, Patent Owner understood that the International Paper employees with access
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`to Patent Owner’s confidential information would be bound to protect it.
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` And Patent Owner believed, reasonably, that it
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`had a confidential relationship with the individuals, including Dr. Dyer, to whom it
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`disclosed that information. That is the legal standard by which disqualification is
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`judged. Agila Specialties Inc., Paper No. 13 at 4.
`
`
`
`7
`
`
`
`B.
`
`Patent Owner Disclosed to Dr. Dyer Confidential
`Information Relevant to this Proceeding.
`
`Patent Owner disclosed confidential information concerning the technology
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`
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`at issue in this proceeding to Dr. Dyer pursuant to the NDAs. In establishing this
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`element of the test, the proper focus in not on whether the expert has used, or even
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`whether he “will necessarily use or reveal confidential information but, rather,
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`whether [the expert] actually obtained confidential information” from the moving
`
`party “when it was objectively reasonable for [the moving party] to believe it had a
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`confidential or fiduciary relationship with him.” Ross v. Am. Red. Cross, No. 12-
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`4312, 2014 U.S. App. LEXIS 1827, at *19 (6th Cir. 2014) (emphasis in original).
`
`Petitioner cannot dispute that Dr. Dyer received confidential information
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`about
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`8
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`
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`The confidential information to which Dr. Dyer was exposed cannot help but
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`play into his opinions offered in this case because it pertained to the very same
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`filler loading technologies at issue in this proceeding. Given the volume of
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`information transmitted and the repeated contacts between Dr. Dyer and Patent
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`Owner, it is unreasonable to assume that Dr. Dyer could somehow separate in his
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`mind the teachings about the technology that he received pursuant to the NDAs
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`from other information on which he could permissibly rely. His access to Patent
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`Owner’s information by virtue of the NDAs taints the analysis in his declaration of
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`what would be known to one of skill in the art and how one of skill in the art would
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`think to combine the references. This also precludes him from further participation
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`in this proceeding.
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`By virtue of the business partnership between Patent Owner and
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`International Paper concerning the technology at issue, the facts here are akin to a
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`former employee disqualification situation. And, although expert disqualification
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`“is generally not decided by bright-line rules, [] this principle comes close to a
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`rule: ‘[i]n cases where an expert was a former employee and learned of technical
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`information that relates to the lawsuit, most courts have disqualified the expert.’”
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`Brunstad, 2015 U.S. Dist. LEXIS 56985, at *10.
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`Even where the proposed expert is not a former employee of the moving
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`party, courts have found disqualification necessary where the proposed expert’s
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`
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`9
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`
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`access to confidential information relates to the subject matter of the proceeding.
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`United States ex rel. FTC v. Larkin, No. 3-92-789, 1994 U.S. Dist. LEXIS 5626, at
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`*3-8 (D. Minn. Apr. 12, 1994) (disqualifying potential expert who had access to
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`moving party’s confidential information by virtue of his role with outside bank
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`regulating agency); Marvin Lumber & Cedar Co. v. Norton Co., 113 F.R.D. 588,
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`590-92 (D. Minn. 1986) (disqualifying potential expert who had access to moving
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`party’s confidential information by virtue of his role with independent testing
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`company). In Marvin Lumber & Cedar, the court found the proposed expert’s
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`involvement in product development, testing, and long-term access to sensitive
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`product design information supported his disqualification. Id.
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`The facts of the relationship between Dr. Dyer and Patent Owner track the
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`facts of the above cited cases, satisfy the test articulated in Agila Specialties, and
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`support a finding that disqualification is proper here.
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`IV. Conclusion
`
`For the reasons discussed above, the Board should disqualify Dr. Dyer from
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`serving as an expert for Petitioner in this proceeding and strike his declaration.
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`Date: September 13, 2016
`
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`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`Attorneys for Patent Owner
`
`
`
`
`
`10
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that “PATENT OWNER’S MOTION TO
`
`DISQUALIFY AND STRIKE THE DECLARATION OF PETITIONER’S
`
`EXPERT, DR. DAVID DYER,” “PATENT OWNER’S UPDATED EXHIBIT
`
`LIST,” “EXHIBITS 2002-2011” and “CERTIFICATION OF SERVICE” for the
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`above-captioned matter were served in their entirety on September 13, 2016, upon
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`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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