Trials@uspto.gov Paper 29
`571-272-7822 Entered: August 23, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`____________
`
`Cases
` IPR2018-00297 (Patent RE45,553 E)
`IPR2018-00298 (Patent RE45,386 E)
` IPR2018-00299 (Patent 7,230,232 B2)
` IPR2018-00313 (Patent RE45,386 E)1
`____________
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`1 This Order addresses an issue that is identical in all four cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties, however, may not use this style heading unless authorized.
`
`
`
`
`
`571-272-7822 Entered: August 23, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`____________
`
`Cases
` IPR2018-00297 (Patent RE45,553 E)
`IPR2018-00298 (Patent RE45,386 E)
` IPR2018-00299 (Patent 7,230,232 B2)
` IPR2018-00313 (Patent RE45,386 E)1
`____________
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`1 This Order addresses an issue that is identical in all four cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties, however, may not use this style heading unless authorized.
`
`
`
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`
`I. DISCUSSION
`A conference call was held on August 21, 2018, between respective
`counsel for the parties and Judges Zecher, Horvath, and Galligan. The
`purpose of the conference call was to discuss Petitioner’s, Agilent
`Technologies, Inc. (“Agilent”), request for authorization to file a Joint
`Motion for Entry of a Stipulated Protective Order in all four proceedings that
`deviates from the default protective order set forth in the Office Patent Trial
`Practice Guide (“Practice Guide”), 77 Fed. Reg. 48,756, Appendix B (Aug.
`14, 2012).
`As background, an inter partes review is a public proceeding.
`Consequently, there is a strong public policy in making sure the record is
`open to the public. We recognize, however, that the parties may have an
`interest in protecting truly confidential information. To that end, the rules
`governing an inter partes review seek to strike a balance between the
`public’s interest and the parties’ interest. See Practice Guide at 48,760.
`Section 42.14 of Title 37 of the Code of Federal Regulations is
`directed to “Public Availability” and is reproduced below:
`The record of a proceeding, including documents and things,
`shall be made available to the public, except as otherwise
`ordered. 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. The document or thing shall be
`provisionally sealed on receipt of the motion and remain so
`pending the outcome of the decision on the motion.
`37 C.F.R. § 42.14. When filing a motion to seal, a proposed protective order
`is required. 37 C.F.R. § 42.54 (stating that “[a] party may file a motion to
`seal where the motion to seal contains a proposed protective order”). If the
`parties choose to propose a protective order that deviates from the default
`
`
`
`2
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`protective order set forth in Appendix B of the Practice Guide, they must
`submit a jointly stipulated protective order accompanied by a red-lined
`version based on the default protective order.
`
`During the conference call, Agilent indicated that there is a related
`district court case between itself and Patent Owner, Thermo Fischer
`Scientific Inc. and Thermo Fisher Scientific (Bremen) GMBH (collectively,
`“Thermo”), who is a competitor in the field of mass spectrometers. Agilent
`represented that confidential information was exchanged in the related
`district court case and that the district court agreed to allow Thermo to use
`that information in these proceedings. Agilent anticipated that Thermo will
`try to use that confidential information to establish secondary considerations.
`Agilent then represented that it met and conferred with Thermo, at which
`point the parties were able to work out a jointly stipulated protective order
`covering all four proceedings that would allow Agilent to expunge
`confidential information without objection from Thermo. Upon inquiry
`from the panel, Thermo indicated that, although it has not yet formulated all
`its arguments in response to each Petition, it was likely to use Agilent’s
`confidential information as evidence of secondary considerations.
`
`We authorized the parties to file a Joint Motion for Entry of a
`Stipulated Protective Order in all four proceedings, but noted that any
`deviations from the default protective order set forth in Appendix B of the
`Practice Guide should be clearly demarcated in a red-lined version that is
`filed concurrently with the jointly stipulated protective order. We also
`explained that, when a party moves to file a paper or evidence under seal,
`that party should file the following: (1) a redacted version of the paper or
`evidence that is available to the public; (2) an un-redacted version of the
`
`
`
`3
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`paper or evidence that is available to the Board and parties only; and (3) a
`motion to seal. The moving party should attempt to minimize the material
`that is redacted, and any redactions should be limited to isolated passages
`consisting solely of confidential information. The general thrust of the
`moving party’s argument must be discernable from the redacted version of
`the paper or evidence. In the motion to seal itself, merely explaining that the
`information should be sealed to remain compliant with a protective order
`entered in a related district court case does not, by itself, satisfy the “good
`cause” standard needed to seal a paper or evidence—further explanation is
`required. If the information sought to be sealed is specific to the non-
`moving party (e.g., Thermo, relying on Agilent’s confidential information to
`establish secondary considerations), the parties should jointly file the motion
`to seal in order to provide the non-moving party with an opportunity to
`explain why that information is, indeed, confidential. For further guidance
`on filing a motion for entry of a proposed protective order and a motion to
`seal, the parties are directed to Argentum Pharmaceuticals LLC v. Alcon
`Research, Ltd., Case IPR2017-01053 (PTAB Jan. 19, 2018) (Paper 27)
`(informative).
`
`Lastly, we take this opportunity to remind the parties that confidential
`information subject to a protective order may become public if that
`information is identified in a final written decision, and a motion to expunge
`the confidential information will not prevail necessarily over the public’s
`interest in maintaining a complete and understandable file history. See
`Practice Guide at 48,761.
`
`
`
`
`4
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`
`II. ORDER
`In consideration of the foregoing, it is:
`ORDERED that Agilent’s request for authorization to file a Joint
`Motion for Entry of a Stipulated Protective Order in all four proceedings is
`granted; and
`FURTHER ORDERED that the parties are authorized to file a single
`Joint Motion for Entry of a Stipulated Protective Order that captions all four
`proceedings.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`For PETITIONER:
`Brian M. Buroker
`Mark N. Reiter
`David L. Glandorf
`Anne Y. Brody
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`mreiter@gibsondunn.com
`dglandorf@gibsondunn.com
`abrody@gibsondunn.com
`
`
`For PATENT OWNER:
`
`Adam R. Brausa
`Sonal N. Mehta (pro hac vice)
`Eneda Hoxha (pro hac vice)
`Durie Tangri LLP
`abrausa@durietangri.com
`smethta@durietangri.com
`ehoxha@durietangri.com
`
`
`
`
`
`
`
`6
`
`
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