Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 105
`Entered: March 28, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`PROPPANT EXPRESS INVESTMENTS, LLC,
`PROPPANT EXPRESS SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`
`
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01917
`Patent 9,296,518 B2
`
`______________
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding; Parties’ Motions to Seal
`37 C.F.R. § 42.5
`
`
`
`
`Tel: 571-272-7822
`
`Paper 105
`Entered: March 28, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`PROPPANT EXPRESS INVESTMENTS, LLC,
`PROPPANT EXPRESS SOLUTIONS, LLC,
`Petitioner,
`
`v.
`
`
`
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01917
`Patent 9,296,518 B2
`
`______________
`
`Before MITCHELL G. WEATHERLY, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding; Parties’ Motions to Seal
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01917
`Patent 9,296,518 B2
`
`
`
`The parties have filed a dozen motions to seal in this proceeding. See
`Papers 32, 35, 48, 51, 52, 59, 65, 69, 72, 75, 77, and 98.1 The first eleven of
`those motions accompany various filings in this proceeding. The twelfth
`motion is a Joint Motion to Seal filed by the parties to replace a number of
`the pending motions and clarify what actually needs to be sealed. See
`Paper 98 (“Joint Motion” or “Joint Mot.”).
`In the Joint Motion, the parties request that we maintain the seal on
`the Patent Owner’s Response (Paper 31), Supplemental Patent Owner
`Response (Paper 40), Petitioner’s Reply (Paper 47), Patent Owner’s Sur-
`Reply (Paper 66), Transcript of the November 19, 2018 Call (Paper 70),
`Petitioner’s Motion to Strike (Paper 71), Petitioner’s Oral Hearing
`Demonstratives (Paper 76), Patent Owner’s Oral Hearing Demonstratives
`(Ex. 2096), and Exhibits 1059, 1085, 1091–1094, 1096, 1114, 2054–2066,
`2075, 2079, 2081, and 2082. Joint Mot. 1. The parties also informed us that
`they do not wish to maintain the seal on Exhibits 1082–1084, 1097, 2073,
`2080, 2087, and 2088, Patent Owner’s Motion to Terminate (Paper 53), and
`Petitioner’s Opposition to Motion to Terminate (Paper 60). Id.
`Given that the Joint Motion to Seal addresses papers and exhibits that
`were previously addressed, some of the prior motions to seal that sought to
`seal those same papers have been entirely superseded by the new Joint
`Motion to Seal. Therefore, those superseded motions to seal are now moot.
`
`
`1 Papers 49 and 50 are also labeled as motions to seal on the docket, but they
`are both copies of Exhibit 2085 (which is a redacted version of
`Exhibit 2049).
`
`2
`
`
`
`IPR2017-01917
`Patent 9,296,518 B2
`
`
`Accordingly, we dismiss the motions to seal reflected in Papers 65, 69, 75,
`and 77 as moot.
`As we mentioned above, the parties have also informed us that certain
`exhibits should not be maintained under seal. Joint Mot. 1. Two of the
`previously filed motions to seal—Papers 52 and 59—address only exhibits
`and papers that are no longer to be maintained under seal—Papers 53 and 60
`and Exhibits 2087, 2088, and 1097. Accordingly, we deny the motions to
`seal reflected in Papers 52 and 59, as the parties no longer seek to seal those
`papers and exhibits.
`In addition, two of the motions to seal address exhibits that are now
`addressed in the Joint Motion to Seal and include exhibits that the parties no
`longer seek to maintain under seal. See Papers 35 and 48. Accordingly, the
`motions to seal at Papers 35 and 48 are denied-in-part as to Exhibits 2080
`and 1082, and dismissed-in-part as moot as to the remaining papers and
`exhibits.
`This leaves the following motions to seal pending before us: (1) the
`Joint Motion to Seal, (2) Paper 32 (“First Motion to Seal” or “First Mot.”),
`(3) Paper 51 (“Second Motion to Seal,” or “Second Mot.”), and (4) Paper 72
`(“Third Motion to Seal,” or “Third Mot.”). We consider these remaining
`four motions below.
`“There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public.” Garmin Int’l v.
`Cuozzo Speed Techs., LLC, Case IPR2012–00001, slip op. at 1–2 (PTAB
`Mar. 14, 2013) (Paper 34). The standard for granting a motion to seal is
`“good cause.” 37 C.F.R. § 42.54. That standard includes showing that the
`
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`IPR2017-01917
`Patent 9,296,518 B2
`
`
`information addressed in the motion to seal is truly confidential, and that
`such confidentiality outweighs the strong public interest in having the record
`open to the public. See Garmin, slip op. at 2–3.
`The moving party bears the burden of showing that the relief
`requested should be granted, and establishing that the information sought to
`be sealed is confidential information. 37 C.F.R. § 42.20(c).
`In the First Motion to Seal, Patent Owner seeks to seal the Patent
`Owner Response (Paper 31) and Exhibit 2071. See First Mot. 2. The parties
`also seek to seal the Patent Owner Response in the later-filed Joint Motion to
`Seal. Joint. Mot. 1. Thus, the portion of the First Motion to Seal relating to
`the Patent Owner Response is moot. However, no other motion to seal
`addresses Exhibit 2071. We have reviewed Patent Owner’s contentions in
`the First Motion to Seal, and agree with Patent Owner that harm could result
`to Patent Owner if the confidential financial information contained in
`Exhibit 2071 were released. First Mot. 2–3. Accordingly, we agree with
`Patent Owner that good cause exists to seal Exhibit 2071. Thus, we grant-
`in-part the First Motion to Seal as it relates to Exhibit 2071 and dismiss-in-
`part the First Motion to Seal as it relates to the Patent Owner Response.
`In the Second Motion to Seal, Patent Owner seeks to seal an
`unredacted copy of Exhibit 2049—the Declaration of Fred Smith—because
`it contains confidential, proprietary information about the product
`manufactured by Patent Owner’s licensee, SandBox Logistics, LLC. Second
`Mot. 1–2. Patent Owner has also filed a redacted copy of Exhibit 2049 as
`Exhibit 2085. We have reviewed Patent Owner’s contentions and agree that
`
`4
`
`
`
`IPR2017-01917
`Patent 9,296,518 B2
`
`
`Patent Owner has shown good cause to seal Exhibit 2049. Accordingly, we
`grant the Second Motion to Seal.
`In the Third Motion to Seal, Patent Owner seeks to seal Patent
`Owner’s Opposition to Petitioner’s Motion to Strike (“Patent Owner’s
`Opposition,” Paper 73) and Exhibit 2095, because they contain confidential
`commercial financial information, including revenue. Third Mot. 1. Patent
`Owner has filed a redacted version of Patent Owner’s Opposition as
`Paper 74. We have reviewed Patent Owner’s contentions and agree that
`Patent Owner has shown good cause to seal Patent Owner’s Opposition and
`Exhibit 2095. Third Mot. 2–4. Accordingly, we grant the Third Motion to
`Seal.
`
`As we detailed above, in the Joint Motion, the parties request that we
`maintain the seal on the Patent Owner’s Response (Paper 31), Supplemental
`Patent Owner Response (Paper 40), Petitioner’s Reply (Paper 47), Patent
`Owner’s Sur-Reply (Paper 66), Transcript of the November 19, 2018, Call
`(Paper 70), Petitioner’s Motion to Strike (Paper 71), Petitioner’s Oral
`Hearing Demonstratives (Paper 76), Patent Owner’s Oral Hearing
`Demonstratives (Ex. 2096), and Exhibits 1059, 1085, 1091–1094, 1096,
`1114, 2054–2066, 2075, 2079, 2081, and 2082. Joint Mot. 1. We have
`reviewed the parties’ contentions in the Joint Motion to Seal, and agree with
`the parties that harm could result if the confidential information contained in
`papers and exhibits sought to be sealed was released. Joint Mot. 2–7. The
`parties have also filed redacted copies of these papers and exhibits. See
`Papers 89–92 and 95–97; Exs. 1115–1134 and 2099–2105. Accordingly, we
`
`5
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`
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`IPR2017-01917
`Patent 9,296,518 B2
`
`
`agree with the parties that good cause exists to seal these papers and
`exhibits. Thus, we grant the parties’ Joint Motion to Seal.
`Pursuant to an order we issued, the parties have submitted a proposed
`redacted version of the Final Written Decision in this case, and notice
`explaining the material in the Final Written Decision that they seek to seal.
`See Paper 99 (Notice), 103 (Redacted Final Written Decision). We have
`reviewed the proposed redactions, and find them reasonable. Accordingly,
`we enter the redacted version of the Final Written Decision.
`Although we grant the parties’ motions to seal, we note that
`confidential information subject to a protective order ordinarily becomes
`public 45 days after final judgment in a trial, unless a motion to expunge is
`granted. 37 C.F.R. § 42.56; Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,761 (Aug. 14, 2012). In view of the foregoing, the confidential
`documents filed in the instant proceedings will remain under seal, at least
`until the time period for filing a notice of appeal has expired or, if an appeal
`is taken, the appeal process has concluded. The records for the instant
`proceedings will be preserved in their entirety, and the confidential
`documents will not be expunged or made public, pending appeal.
`
`
`ORDER
`
`It is:
`ORDERED that the parties’ Joint Motion to Seal (Paper 98) and
`Patent Owner’s Motions to Seal (Papers 51 and 72) are granted;
`FURTHER ORDERED that Patent Owner’s Motion to Seal
`(Paper 32) is granted-in-part and dismissed-in-part as moot;
`
`6
`
`
`
`IPR2017-01917
`Patent 9,296,518 B2
`
`
`
`FURTHER ORDERED that Patent Owner’s Motion to Seal
`(Paper 52) and Petitioner’s Motion to Seal (Paper 59) are denied;
`FURTHER ORDERED that Patent Owner’s Motion to Seal
`(Paper 35) and Petitioner’s Motion to Seal (Paper 48) are denied-in-part and
`dismissed-in-part as moot;
`FURTHER ORDERED that the parties’ Motions to Seal (Papers 65,
`69, 75, and 77) are dismissed as moot;
`FURTHER ORDERED that Exhibits 1082–1084, 1097, 2073, 2080,
`2087, and 2088, Patent Owner’s Motion to Terminate (Paper 53), and
`Petitioner’s Opposition to Motion to Terminate (Paper 60) are unsealed;
`FURTHER ORDERED that the Patent Owner’s Response (Paper 31),
`Supplemental Patent Owner Response (Paper 40), Petitioner’s Reply (Paper
`47), Patent Owner’s Sur-Reply (Paper 66), Transcript of the November 19,
`2018, Call (Paper 70), Petitioner’s Motion to Strike (Paper 71), Patent
`Owner’s Opposition to Petitioner’s Motion to Strike (Paper 73), Petitioner’s
`Oral Hearing Demonstratives (Paper 76), Patent Owner’s Oral Hearing
`Demonstratives (Ex. 2096), and Exhibits 1059, 1085, 1091–1094, 1096,
`1114, 2049, 2054–2066, 2071, 2075, 2079, 2081, 2082, and 2095 are
`maintained under seal; and
`FURTHER ORDERED that the parties’ Redacted Version of the Final
`Written Decision is entered.
`.
`
`
`
`7
`
`
`
`IPR2017-01917
`Patent 9,296,518 B2
`
`
`PETITIONER:
`
`Mark Garrett
`W.Andrew Liddel
`Jeffrey Kitchen
`Jeremy Albright
`Charles Walker
`Catherine Garza
`NORTON ROSE FULBRIGHT US LLP
`Mark.garrett@nortonrosefulbright.com
`Andrew.liddell@nortonrosefulbright.com
`Jeff.kitchen@nortonrosefulbright.com
`Jeremy.albright@nortonrosefulbright.com
`Charles.walker@nortonorsefulbright.com
`Cat.garza@nortonrosefulbright.com
`
`
`PATENT OWNER:
`
`Gianni Cutri
`Eugen Goryunov
`Adam Kaufmann
`Kyle Kantarek
`KIRKLAND & ELLIS LLP
`Gianni.cutri@kirkland.com
`egoryunov@kirkland.com
`adam.kaufmann@kirkland.com
`kyle.kantarek@kirkland.com
`
`
`
`
`
`
`
`
`8
`
`
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