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`
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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: July 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASPHALT PRODUCTS UNLIMITED, INC.,
`Petitioner,
`
`v.
`
`BLACKLIDGE EMULSIONS, INC.,
`Patent Owner.
`
`Cases IPR2017-01241 and -01242
`Patents 7,503,724 B2 and 7,918,624 B2
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`I. BACKGROUND
`All three panel members conducted a conference call at Patent
`Owner’s urging to address whether the panel would authorize (1) a motion to
`disqualify Petitioner’s technical expert, Alan James Ph.D., and
`(2) submission of a protective order differing from the default form used in
`inter partes review proceedings to include, among other changes, an ability
`
`
`
`IPR2017-01241 and -01242
`Patent 7,503,724 B2 and 7,918,624 B2
`
`for parties to designate information as “attorneys eyes only.” All counsel of
`record for each party participated in the call, and the call was transcribed by
`a court reporter.
`The alleged need for an alternative protective order is driven by Patent
`Owner’s belief that we should authorize it to move to disqualify Dr. James
`because his testimony is based, at least in part, upon his allegedly improper
`use of confidential information1 that he obtained from Patent Owner.
`Without such an alternative protective order, Patent Owner contends that it
`cannot share or submit the evidence underlying its belief that Dr. James
`should be disqualified. Before the call, Patent Owner had prepared and
`shared with Petitioner a draft form of a proposed protective order. Petitioner
`expressed concerns about the draft protective order based, in part, on
`restrictions in the draft order relating to sharing information with “other
`experts.” Based on its concerns about the confidentiality of information
`allegedly relied upon by Dr. James, Patent Owner had not fully provided to
`Petitioner its evidence allegedly supporting its contention that Dr. James had
`improperly relied upon confidential information in forming his opinions.
`Patent Owner contends that the protection afforded in the default protective
`order and under the Rules, e.g., 37 C.F.R. § 42.55, is inadequate.
`We instructed the parties to confer to determine whether they could
`agree upon terms that would permit exchange of information that could
`facilitate a resolution of the underlying issues relating to the allegedly
`improper use of confidential information by Dr. James. The parties are
`
`
`1 We use “confidential information” as defined in our Rules to refer to “trade
`secret or other confidential research, development, or commercial
`information.” 37 C.F.R. § 42.2.
`
`2
`
`
`
`IPR2017-01241 and -01242
`Patent 7,503,724 B2 and 7,918,624 B2
`
`further instructed to contact the Board via e-mail within three (3) business
`days from the entry of this Order to indicate whether they have resolved
`their dispute regarding the appropriate form of a protective order for these
`proceedings.
`The panel also informed the parties that it will take Patent Owner’s
`request for authorization to move to disqualify Dr. James under advisement
`and issue a ruling in due course. To facilitate its consideration of Patent
`Owner’s request, the panel instructed the parties to submit a copy of the
`transcript of the call as an exhibit in these proceedings at their earliest
`convenience. If the transcript is not filed within three (3) business days from
`the entry of this Order, the parties shall indicate in the e-mail communication
`mentioned above when they believe that the transcript will be filed.
`II. ORDER
`For the reasons given, it is:
`ORDERED that the parties shall confer to attempt to devise an
`alternative protective order that will facilitate an exchange of information
`needed by both parties to attempt to resolve their dispute relating to
`Dr. James’ alleged improper use of confidential information;
`FURTHER ORDERED that the parties shall promptly file as an
`exhibit in these proceedings a copy of the transcript of the conference call;
`and
`
`FURTHER ORDERED that, within three (3) business days of the
`entry of this Order, the parties shall report via e-mail to Trials@USPTO.gov
`the status of their efforts (1) to agree upon an alternative protective order and
`(2) to file a transcript of the conference call if it has not already been filed;
`
`3
`
`
`
`IPR2017-01241 and -01242
`Patent 7,503,724 B2 and 7,918,624 B2
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`to move to disqualify Dr. James is taken under advisement and will be
`addressed in due course in a separate paper.
`
`4
`
`
`
`IPR2017-01241 and -01242
`Patent 7,503,724 B2 and 7,918,624 B2
`
`PETITIONER:
`
`Robert Waddell
`Michael K. Leachman
`JONES WALKER LLP
`rwaddell@joneswalker.com
`mleachman@joneswalker.com
`
`PATENT OWNER:
`
`John F. Triggs
`Ryan D. Levy
`Seth R. Odgen
`William E. Seyki
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`jft@iplawgroup.com
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`
`5
`
`
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