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 REDACTED PORTIONS OF
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`DISQUALIFY AND STRIKE THE DECLARATION OF PETITIONER’S
`EXPERT, DR. DAVID DYER AND EXHIBITS 2014, 2015 AND 2016
`
`
`
`
`
`
`
`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 REDACTED PORTIONS OF
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
`DISQUALIFY AND STRIKE THE DECLARATION OF PETITIONER’S
`EXPERT, DR. DAVID DYER AND EXHIBITS 2014, 2015 AND 2016
`
`
`
`
`
`
`
`Patent Owner Ecolab USA Inc. moves to seal portions of Patent Owner’s
`
`Reply in Support of Its Motion to Disqualify and Strike the Declaration of
`
`Petitioner’s Expert, Dr. David Dyer and the entirety of Exhibits 2014, 2015 and
`
`2016 under 37 C.F.R. §§ 42.14 and 42.54(A). A protective order was previously
`
`filed and agreed upon by the parties but not yet entered in this case. (Paper 021 at
`
`footnote 1.) Patent Owner has contacted Petitioner to determine if they oppose this
`
`motion; Petitioner has not yet provided any indication as to whether it opposes
`
`sealing the exhibits that are the subject of this motion.
`
`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.
`
`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-
`
`
`
`1
`
`
`
`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.
`
`
`
`Exhibit 2014 is a declaration from an Ecolab employee attaching copies of
`
`the confidential inter-company agreements transferring ownership of inter alia
`
`U.S. Patent 8,088,250 and U.S. Patent 8,465,623 from Nalco Company to Ecolab
`
`USA Inc. Exhibits 2015 and 2016 are copies of the confidential inter-company
`
`agreements themselves. The redacted portions of Patent Owner’s Reply in Support
`
`of Its Motion to Disqualify and Strike the Declaration of Petitioner’s Expert, Dr.
`
`David Dyer reflect the information contained in Exhibits 2014, 2015 and 2016
`
`concerning Ecolab’s corporate structure and inter-company agreements, as well as
`
`details concerning the nondisclosure agreement with International Paper (which
`
`was the subject of a prior motion to seal).
`
`Each of the above Exhibits and the redacted portions of the reply brief
`
`reflect confidential information concerning Ecolab’s corporate business structure
`
`
`
`2
`
`
`
`that, to the knowledge of Patent Owner, has not been made public. Business-
`
`sensitive details of organizational structure should be maintained confidential. See
`
`Accord Healthcare Inc., USA v. Daiichi Sankyo Co., Ltd., Case IPR2015-00864,
`
`Paper 27 at 3. Petitioner recognizes the confidential nature of inter-company
`
`agreements such as Exhibits 2015 and 2016 and has filed Exhibit 2015 under seal
`
`in the pending litigation between Patent Owner and Petitioner. (Doc. No. 086-01
`
`in Nalco Co. v. Solenis LLC, No. 1:15-cv-08913 (N.D. Ill. filed Oct. 7, 2015).)
`
`Not only is the information sought to be sealed confidential, Patent Owner
`
`needs to rely on the information submitted in the Exhibits to support its
`
`accompanying Reply in Support of its Motion to Disqualify and Strike the
`
`Declaration of Petitioner’s Expert, Dr. David Dyer. The information submitted in
`
`Exhibits 2014, 2015 and 2016 specifically relates to confidential corporate
`
`structure and licensing agreements of Ecolab USA and Nalco. These illustrate the
`
`common interest in confidentiality had by Ecolab USA and Nalco. The
`
`information for which confidentiality is sought is presented to address the relative
`
`interests of Nalco and Ecolab USA in the present proceeding.
`
`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 concerning those matters. Patent
`
`Owner requests sealing of Exhibits 2014, 2015 and 2016, and redacting portions of
`
`
`
`3
`
`
`
`the reply brief. 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 question before any
`
`information in the exhibits is made public.
`
`Date: September 27, 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
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S MOTION TO
`SEAL REDACTED PORTIONS OF PATENT OWNER’S REPLY IN SUPPORT
`OF ITS MOTION TO DISQUALIFY AND STRIKE THE DECLARATION OF
`PETITIONER’S EXPERT, DR. DAVID DYER AND EXHIBITS 2014, 2015
`AND 2016” and “CERTIFICATION OF SERVICE” for the above-captioned
`matter were served in their entirety on September 27, 2016, upon the following
`parties via e-mail at the below email addresses:
`Lead Counsel
`Backup Counsel
`Michael P. Chu (Reg. No. 37,112)
`Kevin P. Shortsle (Reg. No. 58,084)
`McDermott Will & Emery LLP
`McDermott Will & Emery LLP
`227 W. Monroe Street
`227 W. Monroe Street
`Chicago, Illinois 60606
`Chicago, Illinois 60606
`Telephone: 312-984-5485
`Telephone: 312-984-3361
`Facsimile: 312-984-7700
`Facsimile: 312-984-7700
`mchu@mwe.com
`kshortsle@mwe.com
`
`
`Respectfully submitted,
`
`Date: September 27, 2016
`
`(Trial No. IPR2016-01281)
`
`
`
`
`
`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
`
`5
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