throbber
Trials@uspto.gov
`571-272-7822
`
` Paper No. 12
` Entered: February 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THERMO FISHER SCIENTIFIC, INC.,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`____________
`
`Case IPR2018-01367 (Patent 8,835,113 B2)
`Case IPR2018-01368 (Patent 8,835,113 B2)
`Case IPR2018-01369 (Patent 8,110,673 B2)
`Case IPR2018-01370 (Patent 8,110,673 B2)
`____________
`
`Before ERICA A. FRANKLIN, MICHELLE N. ANKENBRAND, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION1
`Denying Petitioner’s Combined Motion for Entry of Protective Order and
`Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`1 This Order addresses issues that are common to each case.
`
`

`

`IPR2018-01367 (Patent 8,835,113 B2)
`IPR2018-01368 (Patent 8,835,113 B2)
`IPR2018-01369 (Patent 8,110,673 B2)
`IPR2018-01370 (Patent 8,110,673 B2)
`
`In each of the above-captioned proceedings, Petitioner filed a
`Combined Motion for Entry of Modified Protective Order and Motion to
`Seal Confidential Information. Paper 3.2 Patent Owner has not filed an
`opposition to the combined motions.
`Petitioner asserts that its Proposed Protective Order (Paper 3,
`Addendum A) differs from the Board’s default protective order set forth in
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug.
`14, 2012) (“Trial Practice Guide”) by “(i) including counsel of record in the
`related litigation; (ii) clarifying the scope of in-house counsel authorized to
`receive confidential information; and (iii) specifying a timeframe during
`which those in possession of confidential information must destroy it after a
`final decision in this proceeding.” Paper 3, 1; see id. Addendum B
`(Redlined version of Proposed Protective Order showing modifications to
`Board’s default protective order). Petitioner seeks to seal Exhibits 1048,
`1051, 1052, 1053, 1054, 1055, and 1056, in their entirety.3
`As set forth in 37 C.F.R. § 42.54, a motion to seal must include a
`proposed protective order and a “certification that the moving party has in
`good faith conferred or attempted to confer with other affected parties in an
`effort to resolve the dispute.” In its combined motions, Petitioner states,
`
`2 Citations to paper numbers and exhibits refer to those filed in IPR2018-
`01367. Similar papers and exhibits were filed in IPR2018-01368, IPR2018-
`01369, and IPR2018-01370.
`3 Petitioner includes a prefix of “TFS” for its exhibits that we do not include
`here.
`
`2
`
`

`

`IPR2018-01367 (Patent 8,835,113 B2)
`IPR2018-01368 (Patent 8,835,113 B2)
`IPR2018-01369 (Patent 8,110,673 B2)
`IPR2018-01370 (Patent 8,110,673 B2)
`
`“[b]ecause this motion is being submitted concurrently with Thermo Fisher’s
`petition, Thermo Fisher has not yet conferred with patent owner regarding
`this motion or inquired whether patent owner would oppose the requested
`relief.” Paper 3, 2. In other words, Petitioner acknowledges that its
`combined motions do not comply with § 42.54. Further, based upon our
`review of the current record, we do not find that Petitioner has subsequently
`satisfied that rule by submitting the required certification at some later date.
`Accordingly, we deny the combined motions without prejudice.
`After meeting and conferring in good faith, Petitioner may renew its
`combined motion for entry of a proposed protective order and motion to
`seal, wherein the combined motion includes the proper certification. In each
`case, we exercise our discretion to maintain the exhibits under a provisional
`seal to permit Petitioner and Patent Owner an opportunity to meet and
`confer, and to allow Petitioner an opportunity to file a renewed combined
`motion in each proceeding, in accordance with the following Order.
`Petitioner is reminded that “[a]fter denial of a petition to institute a trial or
`after final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” 37 C.F.R. § 42.56.
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that Petitioner’s Combined Motion to Seal and Motion for
`Protective Order in each captioned case is denied without prejudice;
`FURTHER ORDERED that Petitioner may renew its combined
`motion on or before March 6, 2019;
`
`
`
`
`3
`
`

`

`IPR2018-01367 (Patent 8,835,113 B2)
`IPR2018-01368 (Patent 8,835,113 B2)
`IPR2018-01369 (Patent 8,110,673 B2)
`IPR2018-01370 (Patent 8,110,673 B2)
`
`
`FURTHER ORDERED that Petitioner may file a motion to expunge
`from the record any of Exhibits 1048, 1051, 1052, 1053, 1054, 1055, and
`1056;
`
`FURTHER ORDERED that Patent Owner may file an opposition to
`any renewed combined motion and/or motion to expunge filed by Petitioner
`within 5 business days after Petitioner files such motion(s); and
`FURTHER ORDERED that Exhibits 1048, 1051, 1052, 1053, 1054,
`1055, and 1056 shall remain provisionally sealed until a decision on any
`filed renewed combined motion for entry of protective order and motion to
`seal is entered, or, if no such motion is filed, 45 days after denial of the
`petition to institute.
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2018-01367 (Patent 8,835,113 B2)
`IPR2018-01368 (Patent 8,835,113 B2)
`IPR2018-01369 (Patent 8,110,673 B2)
`IPR2018-01370 (Patent 8,110,673 B2)
`
`PETITIONER:
`
`Deborah Sterling
`dsterling-ptab@sternekessler.com
`
`Ashita Doshi
`ashita.doshi@thermofisher.com
`
`Olga Partington
`opartington-ptab@sternekessler.com
`
`Neil Shull
`nshull-ptab@sternekessler.com
`
`PATENT OWNER:
`
`Kerry Taylor
`2kst@knobbe.com
`
`Maria Stout
`2mvs@knobbe.com
`
`Ryan Melnick
`2rem@knobbe.com
`
`Benjamin Anger
`2bba@knobbe.com
`
`5
`
`

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