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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: August 10, 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.
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On July 19, 2017, the panel held a conference call with counsel for the
`parties to discuss, among other things, Patent Owner’s request for
`authorization to file a motion to disqualify Petitioner’s technical expert,
`Dr. Alan James. In an Order summarizing that call, we directed the parties
`to submit a transcript of the call to facilitate our consideration of the request.
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,503,724 B2)
`
`
`
`See Paper 9, 3.1 Consistent with that Order, Patent Owner filed the
`transcript as Exhibit 2001.
`Patent Owner contends that in these proceedings, Dr. James has
`improperly used and disclosed Patent Owner’s trade secret and confidential
`information, which Dr. James acquired subject to a confidentiality
`agreement. Patent Owner has filed a lawsuit in the U.S. District Court for
`the Southern District of Mississippi against Dr. James and his employer for
`trade secret misappropriation and breach of contract. Ex. 2001, 7–8;
`Blacklidge Emulsions, Inc. v. Akzo Nobel Surface Chemistry LLC, Case No.
`1:17-cv-173-LG-RHW (S.D. Miss.) (“Mississippi Litigation”). Petitioner
`has moved to intervene in the Mississippi Litigation. Paper 10, 2. Patent
`Owner has filed a motion for a preliminary injunction, through which it
`seeks to preclude Dr. James from disclosing any additional confidential
`information in these proceedings. Ex. 2001, 7.
`After considering the information and arguments the parties presented
`on the call, we grant Patent Owner’s request for authorization. Patent
`Owner’s motion should be supported by evidence that Patent Owner had a
`confidential relationship with Dr. James and should provide a detailed
`explanation of why confidential information it disclosed to Dr. James is
`relevant to the issues in these proceedings. See Agila Specialties Inc. v.
`Cephalon, Inc., Case IPR2015-00503, slip op. at 4–5 (PTAB Aug. 19, 2015)
`(Paper 13).
`
`
`1 For simplicity, citations in this Order refer to the record in IPR2017-01241.
`Similar or identical documents to those referenced herein exist in IPR2017-
`01242.
`
`2
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,503,724 B2)
`
`
`
`We note that, according to publicly available docket information
`regarding the Mississippi Litigation, the District Court has scheduled a
`hearing on the motion for a preliminary injunction for August 25, 2017. As
`set forth below, Patent Owner should file the transcript from that hearing and
`any order regarding the motion for preliminary injunction promptly after
`they become available.
`For the foregoing reasons, it is:
`ORDERED that Patent Owner is authorized to file a motion to
`disqualify Dr. Alan James from testifying as Petitioner’s expert in these
`proceedings;
`FURTHER ORDERED that Patent Owner’s motion must not exceed
`seven pages and must be filed by August 18, 2017;
`FURTHER ORDERED that Petitioner is authorized to file, no later
`than August 30, 2017, an opposition of no more than seven pages;
`FURTHER ORDERED that no further briefing on the motion is
`authorized at this time;
`FURTHER ORDERED that Patent Owner shall file as an exhibit in
`these proceedings the transcript from the hearing on the motion for
`preliminary injunction in the Mississippi Litigation within two business days
`of the transcript becoming available; and
`FURTHER ORDERED that Patent Owner shall file as an exhibit in
`these proceedings any order from the District Court concerning the motion
`for preliminary injunction in the Mississippi Litigation within two business
`days of the order being issued.
`
`
`
`
`3
`
`
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,503,724 B2)
`
`
`
`PETITIONER:
`
`Robert Waddell
`Michael K. Leachman
`JONES WALKER LLP
`rwaddell@joneswalker.com
`mleachman@joneswalker.com
`
`
`PATENT OWNER:
`
`John F. Triggs
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`jft@iplawgroup.com
`
`
`4
`
`
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