Trials@uspto.gov
`571-272-7822
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`Paper: 54
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`Entered: July 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01572
`Patent 8,646,529 B2
`____________
`
`
`Before PATRICK R. SCANLON, HYUN J. JUNG, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Joint Motion to Expunge
`37 C.F.R. § 42.56
`Dismissing Motions to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`

`

`IPR2017-01572
`Patent 8,646,529 B2
`
`
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`I. MOTION TO EXPUNGE
`On June 13, 2018, we granted a Joint Motion to Terminate. Paper 52.
`With our prior authorization, the parties subsequently filed a Joint Motion to
`Expunge the Documents under Seal. Paper 53 (“Mot.”). Specifically, the
`parties move to expunge Papers 7–9, 11, 18, 20, 26, 28, 32, 41, 42, 46, and
`47,1 as well as Exhibits 1101, 1103, 1104,2 1107, 2005, 2009, and 2011–
`2014, pursuant to 37 C.F.R. § 42.56. Mot. 2. For the reasons set forth
`below, we grant the Joint Motion to Expunge.
`Because sealed information ordinarily becomes publicly available
`after denial of a petition to institute a trial or after final judgment in a trial, a
`party wishing to preserve its confidentiality may file a motion to expunge
`the information from the record. Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48761 (Aug. 14, 2012); 37 C.F.R. § 42.56. However, a strong
`public policy exists for making information filed in an inter partes review
`publicly available. 37 C.F.R. § 42.14; see also 77 Fed. Reg. at 48760–61.
`
`
`1 Paper 8 is the unredacted, confidential version of the Patent Owner’s
`Motion for Extension of Time for Preliminary Response. Paper 18 is the
`unredacted, confidential version of the Patent Owner’s Preliminary
`Response, and Paper 42 is the unredacted, confidential version of the Patent
`Owner’s Response. Paper 47 is the unredacted, confidential version of the
`Joint Motion to Terminate. Papers 7, 20, 32, 41, and 46 are the unredacted,
`confidential versions of Patent Owner’s Motions to Seal. Paper 9 is the
`unredacted, confidential version of the Petitioner’s Opposition to Patent
`Owner’s Motion for Extension of Time for Preliminary Response, and Paper
`26 is the unredacted, confidential version of the Petitioner’s Sur-Reply to
`Patent Owner’s Preliminary Response. Paper 11 and 28 are the unredacted,
`confidential version of Petitioner’s Motions to Seal.
`2 Exhibit 1104 as used herein refers to the unredacted, confidential version
`of the exhibit.
`
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`2
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`IPR2017-01572
`Patent 8,646,529 B2
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`The public’s interest in maintaining a complete and understandable file
`history is balanced with the parties’ interest in protecting truly sensitive
`information. 77 Fed. Reg. at 48760.
`We did not rely on Papers 8, 9, 18, and 26, or Exhibits 1101, 1103,
`1104, 1107, 2005, 2009, and 2011–2014 in rendering the Institution
`Decision. Paper 37. We did not need to consider Paper 42 and did not rely
`on Paper 47 in granting the Joint Motion to Terminate. Paper 52. The
`redacted, public versions of the Patent Owner’s Motion for Extension of
`Time for Preliminary Response (Paper 23), Petitioner’s Opposition to Patent
`Owner’s Motion for Extension of Time for Preliminary Response (Paper
`10), Patent Owner’s Preliminary Response (Paper 21), Petitioner’s Sur-
`Reply to Patent Owner’s Preliminary Response (Paper 27), Patent Owner’s
`Response (Paper 45), and Joint Motion to Terminate (Paper 50) provide
`sufficient information for the public to understand the procedural posture
`and record of this proceeding. For the reasons discussed below, we dismiss
`the motions to seal (Papers 7, 11, 20, 28, 32, 41, 46) as moot. In addition,
`we agree with the parties’ reasons for asserting that expunging these papers
`and exhibits is appropriate. See Mot. 4–10. Thus, we find the public’s
`interest in being able to access this information does not outweigh the
`parties’ need to protect their confidential information.
`Accordingly, we grant the parties’ request to expunge Papers 7–9, 11,
`18, 20, 26, 28, 32, 41, 42, 46, and 47, and Exhibits 1101, 1103, 1104, 1107,
`2005, 2009, and 2011–2014.
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`IPR2017-01572
`Patent 8,646,529 B2
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`II. MOTIONS TO SEAL
`Patent Owner filed Motions to Seal, requesting to seal the unredacted,
`confidential version of Patent Owner’s Motion for Extension of Time for
`Preliminary Response, Paper 8; the unredacted, confidential version of
`Patent Owner’s Preliminary Response, Paper 18; Exhibit 2014; the
`unredacted, confidential version of Patent Owner’s Response, Paper 42; and
`the unredacted, confidential version of the Joint Motion to Terminate, Paper
`47. Papers 7, 20, 32, 41, 46.3 Petitioner filed Motions to Seal, requesting to
`seal the unredacted, confidential version of its Opposition to Patent Owner’s
`Motion for Extension of Time for Preliminary Response, Paper 9; Exhibits
`1101 and 1103; the unredacted, confidential version of its Sur-Reply to
`Patent Owner’s Preliminary Response, Paper 26; and Exhibits 1104 and
`1107. Papers 11, 28.4 Although Patent Owner’s Motions to Seal did not
`expressly identify the confidential versions of its motions as papers to be
`under seal, we interpret the Motions to Seal as covering the confidential
`versions.
`As noted above, however, we have granted the parties’ request to
`expunge Papers 8, 9, 18, 26, 42, and 47, as well as Exhibits 1101, 1103,
`1104, 1107, and 2014. Accordingly, the Motions to Seal are dismissed as
`moot.
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`3 Papers 22, 24, 35, 44, and 51 are the public versions of the Motions to Seal.
`The confidential versions of the Motions to Seal were filed as Papers 7, 20,
`32, 41, and 46.
`4 Papers 12 and 29 are the public version of the Motion to Seal. The
`confidential versions of the Motions to Seal were filed as Papers 11 and 28.
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`4
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`IPR2017-01572
`Patent 8,646,529 B2
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`III. ORDER
`
`It is:
`ORDERED that the Joint Motion to Expunge is granted;
`FURTHER ORDERED that Papers 7–9, 11, 18, 20, 26, 28, 32, 41, 42,
`46, and 47, and Exhibits 1101, 1103, 1104, 1107, 2005, 2009, and 2011–
`2014 are expunged from the record; and
`FURTHER ORDERED that Patent Owner’s and Petitioner’s Motions
`to Seal are dismissed as moot.
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`IPR2017-01572
`Patent 8,646,529 B2
`
`
`PETITIONER:
`
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`
`PATENT OWNER:
`
`Michael L. Kiklis
`Christopher Ricciuti
`Katherine Cappaert
`Lisa Mandrusiak
`Marc K. Weinstein
`OBLON, MCCLELLAN, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketcappaert@oblon.com
`cpdocketmandrusiak@oblon.com
`CPDocketWeinstein@oblon.com
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