Trials@uspto.gov
`571-272-7822
`
`Paper: 25
`Entered: April 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`

`

`IPR2017-00851
`Patent 8,440,369 B2
`
`
`On March 1, 2018, Petitioner filed its Reply (Paper 20) and its
`Opposition to Patent Owner’s Motion to Amend (Paper 21), along with
`exhibits related thereto. On that same day, Petitioner informed the Board via
`email (attached) that it “inadvertently publicly filed material deemed
`potentially confidential by third parties” in Exhibit 1061 and the Reply, and
`had filed a Motion to Expunge and Seal (Paper 22, “Motion”) “on realizing
`its error.” Petitioner further informed the Board that Exhibit 1067 and its
`Opposition contain “allegedly confidential information solely for the parties
`and the Board.” On March 2, 2018, the Board provisionally restricted access
`to Exhibit 1061 and the Reply from “public” to “parties and Board only.”
`Exhibit 1067 and the Opposition were designated for restricted access by
`Petitioner at the time of filing. Patent Owner did not file an opposition to
`Petitioner’s Motion.
`Petitioner neither requested nor received authorization to file the
`Motion prior to its filing. See 37 C.F.R. § 42.20(b). We note that Petitioner
`styled its Motion as a motion to expunge and seal, and that a motion to seal
`does not require Board authorization prior to filing. Petitioner’s Motion,
`however, does not include a proposed protective order and does not request
`that any papers be sealed in accordance with 37 C.F.R. § 42.54, and
`therefore is not a motion to seal. Because the Motion to Expunge is
`unauthorized, we intend to expunge it.
`Our rules require that “[a] party intending a document or thing to be
`sealed shall file a motion to seal concurrent with the filing of the document
`or thing to be sealed.” 37 C.F.R § 42.14 (emphasis added). Section 42.14
`further states that the “[r]ecord of a proceeding, including documents and
`
`
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`2
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`IPR2017-00851
`Patent 8,440,369 B2
`
`things, shall be made available to the public, except as otherwise ordered.”
`To this end, as set forth in the Board’s default protective order:
`Where confidentiality is alleged as to some but not all of
`the information submitted to the Board, the submitting party shall
`file confidential and non-confidential versions of its submission,
`together with a Motion to Seal the confidential version setting
`forth the reasons why the information redacted from the non-
`confidential version is confidential and should not be made
`available to the public. The non-confidential version of the
`submission shall clearly indicate the locations of information that
`has been redacted. The confidential version of the submission
`shall be filed under seal.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14,
`2012). Additionally, as set forth in the Scheduling Order that governs this
`case, “[r]edactions should be limited strictly to isolated passages consisting
`entirely of confidential information. The thrust of the underlying argument
`or evidence must be clearly discernable from the redacted version.” Paper 8,
`4. Thus, the default rule is that all papers filed in an inter partes review are
`open and available for access by the public; only “confidential information”
`may be protected from disclosure upon a showing of good cause. See
`35 U.S.C. §§ 316(a)(1), 316(a)(7); 37 C.F.R. §§ 42.14, 42.54(a).
`In order to establish “good cause” for sealing, a party
`must demonstrate adequately that (1) the information sought to
`be sealed is truly confidential, (2) a concrete harm would result
`upon public disclosures, (3) there exists a genuine need to rely in
`the trial on the specific information sought to be sealed, and (4)
`on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
`Argentum Pharmaceuticals LLC v. Alcon Research, Ltd., Case IPR2017-
`01053, slip op. at 4 (PTAB Jan. 19, 2018) (Paper 27) (citations omitted). A
`motion to seal will not be granted if it is based only on broad or generic
`
`
`
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`IPR2017-00851
`Patent 8,440,369 B2
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`contentions of confidentiality.1 Moreover, information subject to a
`protective order will become public if identified in a final written decision in
`this proceeding, and a motion to expunge information will not necessarily
`prevail over the public interest in maintaining a complete and
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,761.
`The Scheduling Order indicates that it is the responsibility of the party
`whose confidential information is at issue, not necessarily the proffering
`party, to file the motion to seal, unless the party whose confidential
`information is at issue is not a party to the IPR proceeding. Paper 8, 3.
`Exhibit 1061, which Petitioner identifies as containing information
`designated as confidential by a third party, is the Deposition Transcript of
`Dr. Walter Van Schalkwijk, who is Patent Owner’s expert witness in this
`proceeding. Exhibit 1067, which Petitioner also identifies as containing
`information designated as confidential by a third party, is the Deposition
`Transcript of Dr. Warren Smith, who was retained by Patent Owner as a
`translator in this proceeding. For the avoidance of doubt, we determine that
`Patent Owner, therefore, is responsible for filing the motion to seal
`confidential information from Dr. Van Schalkwijk and Dr. Smith, and has
`
`1 To the extent further guidance is necessary, we make the following
`observations. Few, if any, exhibits, should ever be confidential in their
`entirety, without good cause to show that all of the information contained
`therein is truly sensitive. See 37 C.F.R. § 42.54(a). For example, deposition
`transcripts, declarations, and papers containing a party’s arguments will
`generally contain substantial non-confidential portions. In all cases, the
`Motion to seal must set forth the reasons why the information redacted from
`the non-confidential version is confidential and should not be made publicly
`available. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,771
`(emphasis added).
`
`
`
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`IPR2017-00851
`Patent 8,440,369 B2
`
`the burden of proof to establish that it is entitled to the requested relief, i.e.,
`sealing of the documents. See 37 C.F.R. § 42.20(c). To the extent that
`Petitioner’s Reply and Opposition contain information confidential to Patent
`Owner, Dr. Van Schalkwijk, and/or Dr. Smith, Patent Owner is responsible
`for moving to seal those documents as well.
`No later than May 1, 2018, Patent Owner shall file a motion to seal
`that contains a proposed protective order. 37 C.F.R. § 42.54; Paper 8, 3–4.
`The parties are encouraged to adopt the default protective order set forth in
`the Office Patent Trial Practice Guide. The motion must include a
`certification that the moving party has in good faith conferred or attempted
`to confer with other affected parties in an effort to resolve the dispute. Id.
`No later than April 27, 2018, Patent Owner shall serve on Petitioner
`copies of Exhibit 1061, Exhibit 1067, Petitioner’s Reply, and Petitioner’s
`Opposition wherein Patent Owner has redacted information that is
`confidential to Dr. Van Schalkwijk, Dr. Smith, and/or Patent Owner. No
`other redactions or changes to the original documents are authorized. Patent
`Owner’s redactions shall be based on a good faith belief that the information
`redacted is, in fact, confidential. After service of the redacted documents by
`Patent Owner on Petitioner, Petitioner shall file, no later than May 1, 2018,
`the redacted versions of Exhibit 1061, Exhibit 1067, its Reply, and its
`Opposition in PTAB E2E. The original, un-redacted versions of Exhibit
`1061, Exhibit 1067, Petitioner’s Reply, and Petitioner’s Opposition shall
`remain provisionally sealed until such time as the motion to seal is decided.
`Any document filed with restricted public access not addressed in a motion
`to seal and not identified to be expunged by May 1, 2018 will be designated
`as public.
`
`
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`IPR2017-00851
`Patent 8,440,369 B2
`
`
`Counsel are directed to review the Office Patent Trial Practice Guide,
`the Scheduling Order, and the Board’s regulations to assure adherence to the
`procedural requirements for filing confidential documents.
`
`For the foregoing reasons, it is
`ORDERED that Petitioner’s Motion to Expunge and Seal (Paper 22)
`shall be expunged;
`FURTHER ORDERED that Patent Owner shall file, no later than
`May 1, 2018, a motion to seal that complies with the instructions set forth in
`this Order;
`FURTHER ORDERED that Patent Owner shall serve on Petitioner,
`no later than April 27, 2018, redacted copies of Exhibit 1061, Exhibit 1067,
`Petitioner’s Reply (Paper 20), and Petitioner’s Opposition (Paper 21) that
`comply with the instructions set forth in this Order;
`FURTHER ORDERED that Petitioner shall file, no later than May 1,
`2018, the redacted copies of Exhibit 1061, Exhibit 1067, Paper 20, and
`Paper 21 in PTAB E2E;
`FURTHER ORDERED that, no later than May 1, 2018, the parties
`shall notify the Board via email to identify each exhibit or paper filed with
`restricted access, if any, that is (1) no longer sought to be maintained as
`confidential, or (2) sought to be expunged and no longer relied upon in this
`proceeding; and
`FURTHER ORDERED that the parties are instructed to meet and
`confer in good faith as necessary to give effect to the foregoing instructions.
`
`
`
`
`
`
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`IPR2017-00851
`Patent 8,440,369 B2
`
`From: Carden, Richard [mailto:Carden@mbhb.com]
`Sent: Thursday, March 1, 2018 11:46 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Subject: IPR2017-00851
`
`Your Honors:
`
`In filing its Reply in Support of its Petition for Inter Partes Review and its Opposition to Patent
`Owner’s Motion to Amend, Petitoner inadvertently publicly filed material deemed potentially
`confidential by third parties. Specifically, that information is contained in Ex. 1061 (the
`deposition transcript of Dr. Walter van Schalkwijk) and in its Reply. Petitioner filed other
`material containing allegedly confidential information solely for the parties and the Board
`(specifically Ex. 1067 and its Opposition Brief). On realizing its error, Petitioner immediately
`contacted Patent Owner’s counsel and filed a motion to expunge and seal, a copy of which is
`attached. Because of the sensitivity of this issue, Petitioner wanted to bring it to the Board’s
`attention as soon as possible, and request that the Board grant the motion at its earliest
`convenience.
`
`Should the Board have any questions, I am happy to address them.
`
`Respectfully,
`Richard Carden
`
`
`
`
`S. Richard Carden, CIPP/E [ ] Partner
`300 South Wacker Drive [ ] Chicago, Illinois 60606-6709
`312-913-3330 direct [ ] 312-913-0001 main [ ] 312-913-0002 fax
`carden@mbhb.com [ ] www.mbhb.com
`
`
`
`
`
`This message and any attachments may contain confidential information protected by the attorney-client or other privilege. If you
`believe that it has been sent to you in error, please reply to the sender that you received the message in error, and then delete the
`message from your system.
`
`
`
`
`
`7
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`

`

`IPR2017-00851
`Patent 8,440,369 B2
`
`PETITIONER:
`
`S. Richard Carden
`James V. Suggs
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`
`
`
`
`
`
`
`8
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