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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 18
`Entered: September 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INOGEN, INC.,
`Petitioner,
`
`v.
`
`SEPARATION DESIGN GROUP IP HOLDINGS, LLC,
`Patent Owner.
`
`Case IPR2017-00300 (Patent 8,894,751 B2)
`Case IPR2017-00453 (Patent 9,199,055 B2)1
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order resolves issues common to both IPR2017-00300 and IPR2017-
`00453, so we use our discretion to enter the same Order in both proceedings.
`The parties may not use this combined caption without prior authorization
`from the Board.
`
`
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`INTRODUCTION
`In IPR2017-0300, Inogen, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“’300 Pet.”) requesting inter partes review of claims 22–32 of U.S. Patent
`No. 8,894,751 B2 (Ex. 1001, “the ’751 patent”). Separation Design Group
`IP Holdings, LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“’300 Prelim. Resp.”). We instituted inter partes review. Paper 8.
`In IPR2017-00453, Petitioner filed a Petition (Paper 2, “’453 Pet.”)
`requesting inter partes review of claims 12–21 of U.S. Patent No. 9,199,055
`B2 (Ex. 1001, “the ’055 patent”). Patent Owner filed a Preliminary
`Response (Paper 8, “’453 Prelim. Resp.”). We instituted inter partes
`review. Paper 10.
`After institution of these reviews, Patent Owner filed its Response in
`both proceedings. IPR2017-00300, Paper 14; IPR2017-00453, Paper 16.
`Simultaneously, Patent Owner filed Exhibits numbered 2013–2045 in each
`proceeding. Certain of these Exhibits were produced by Petitioner in a
`related infringement suit under the terms of a protective order entered by the
`District Court. After the Response and accompanying Exhibits were filed,
`the parties discussed whether the Exhibits subject to the District Court
`protective order were allowed to be used in the present proceedings.
`Following those discussions, Patent Owner contacted the Board by email to
`request expungement of certain Exhibits, replacement of other Exhibits, and
`authorization to file a motion to seal the Response and some of the Exhibits.
`We held a conference call, which was attended by counsel for
`Petitioner, counsel for Patent Owner, and Judges Kalan, Tornquist, and
`Kaiser.
`
`2
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`EXHIBITS 2014, 2015, 2035, 2036, AND 2038
`Patent Owner requests that we expunge Exhibits 2014, 2015, 2035,
`2036, and 2038 from the record of IPR2017-00300.2 Petitioner does not
`oppose the expungement of these Exhibits. Patent Owner bases its request
`on the terms of a protective order entered in the District Court, under the
`terms of which these documents were produced, that prohibits the use of
`these documents in any proceeding other than the infringement litigation in
`the District Court. Because the parties agree that these Exhibits should not
`be part of the record of this proceeding, we grant Patent Owner’s request and
`expunge Exhibits 2014, 2015, 2035, 2036, and 2038.
`
`MOTIONS TO SEAL
`Patent Owner requests authorization to file motions to seal several
`additional Exhibits. “A party may file a motion to seal where the motion to
`seal contains a proposed protective order.” 37 C.F.R. § 42.54(a). During the
`conference call, the parties represented that they had discussed the terms of a
`protective order and that they believe they can come to an agreement on
`those terms, but that they had not yet reached such an agreement. We direct
`the parties to agree on the terms of a protective order and to move for the
`entry of the agreed order. If the parties cannot agree on a proposed
`protective order after conferring in good faith, Patent Owner shall move for
`entry of a protective order in conjunction with the motions to seal discussed
`below, and Petitioner will have an opportunity to oppose the motion. We
`discuss each of the parties’ requests below.
`
`
`2 We note that these Exhibits were not filed in IPR2017-00453.
`
`3
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`EXHIBIT 2032
`Like the Exhibits discussed above, Exhibit 2032 was produced by
`Petitioner in a related infringement suit and is subject to the protective order
`entered by the District Court. Unlike those Exhibits, Patent Owner contends
`that Exhibit 2032 is important to the resolution of this proceeding.
`Accordingly, argues Patent Owner, expunging Exhibit 2032 altogether is not
`acceptable. During the conference call, the parties could not agree on the
`proper course of action with respect to this Exhibit. Therefore, we order the
`parties to agree on a course of action, such as replacing Exhibit 2032 with an
`acceptable redacted version or moving to seal Exhibit 2032, and we
`authorize the parties to move for such relief as is necessary to implement
`that agreed plan. If the parties cannot agree on a plan with respect to Exhibit
`2032, Patent Owner shall move for appropriate relief, and Petitioner may
`oppose the motion as detailed below. Whether the motion is agreed or
`disputed, it must explain why there is good cause to grant the requested
`relief.
`
`RESPONSE AND EXHIBIT 2040
`Patent Owner requests authorization to file a motion to seal its
`Response and Exhibit 2040 in IPR2017-00453 and to file a redacted public
`version of each document omitting references to Exhibits 2014, 2015, 2032,
`2035, 2036, and 2038, which have been expunged. Patent Owner may move
`to seal these documents. Patent Owner’s motion shall note whether
`Petitioner disputes the granting of the requested relief; if so, Petitioner will
`be given an opportunity to oppose the motion. Whether the motion is agreed
`or disputed, it must explain why there is good cause to grant the requested
`relief.
`
`4
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`EXHIBIT 2039
`Patent Owner requests authorization to file a motion to seal Exhibit
`2039 in IPR2017-00300 and IPR2017-00453. Patent Owner may move to
`seal these documents. Patent Owner’s motion shall note whether Petitioner
`disputes the granting of the requested relief; if so, Petitioner will be given an
`opportunity to oppose the motion. Whether the motion is agreed or
`disputed, it must explain why there is good cause to grant the requested
`relief.
`
`
`ORDER
`
`It is hereby
`ORDERED that Patent Owner is authorized to file a motion, to be
`filed separately in each of IPR2017-00300 and IPR2017-00453, requesting
`the following relief:
`Entry of a protective order in both IPR2017-00300 and IPR2017-
`00453;
`Sealing or replacement of Exhibit 2032 in both IPR2017-00300 and
`IPR2017-00453;
`Sealing of Exhibit 2040 and Patent Owner’s Response in IPR2017-
`00453 only; and
`Sealing of Exhibit 2039 in both IPR2017-00300 and IPR2017-00453;
`FURTHER ORDERED that Patent Owner’s motion shall explain
`whether Petitioner opposes each item of requested relief;
`FURTHER ORDERED that Patent Owner’s motion shall explain, for
`each item of requested relief, why there is good cause to grant the relief;
`
`5
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`FURTHER ORDERED that, if Petitioner opposes any item of
`requested relief, Petitioner is authorized to file an opposition to Patent
`Owner’s motion;
`FURTHER ORDERED that Patent Owner’s motion shall be filed no
`later than one week after the date of entry of this Order;
`FURTHER ORDERED that Petitioner’s opposition, should Petitioner
`choose to file one, shall be filed no later than one week after the date Patent
`Owner’s motion is filed; and
`FURTHER ORDERED that Exhibits 2014, 2015, 2035, 2036, and
`2038 are expunged from the record of IPR2017-00300.
`
`
`
`
`
`6
`
`
`
`IPR2017-00300 (Patent 8,894,751 B2)
`IPR2017-00453 (Patent 9,199,055 B2)
`
`
`
`PETITIONER:
`
`John B. Sganga, Jr.
`Nicholas M. Zovko
`Linda H. Liu
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jbs@knobbe.com
`2nmz@knobbe.com
`2lhl@knobbe.com
`
`
`
`PATENT OWNER:
`
`Brett M. Pinkus
`Richard Wojcio
`FRIEDMAN, SUDER & COOKE
`pinkus@fsclaw.com
`wojcio@fsclaw.com
`
`
`
`
`
`
`
`
`
`7
`
`
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