`571-272-7822
`
` Entered: July 9, 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 MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
`Patent Judge, ERICA A. FRANKLIN and JOHN E. SCHNEIDER,
`Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`DECISION1
`Granting Petitioner’s Motions to Expunge
`37 C.F.R. § 42.56
`
`
`
` 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, with our authorization,
`Petitioner filed a motion to expunge Exhibits 1048 and 1051–56.2 Paper
`12.3
`Previously, Petitioner filed a Combined Motion for Entry of Modified
`Protective Order and Motion to Seal Confidential Information (“combined
`motion”) in each proceeding, wherein Petitioner sought to seal Exhibits 1048
`and 1051–1056, in their entirety. Paper 3. We denied each combined
`motion without prejudice upon determining that they did not comply with
`our rules, because the motion did not include 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,” as required by 37 C.F.R. § 42.54.
`Paper 11, 2–3. In that Order, we invited Petitioner to renew the combined
`motions, including the required certification, after meeting and conferring
`with Patent Owner in good faith. Id. at 3. Additionally, we explained that
`we would exercise our discretion to maintain the exhibits under a provisional
`seal. Id.
`As we had denied the Petition in each proceeding, Paper 10, we also
`reminded Petitioner 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,” Paper 11, 3 (quoting 37 C.F.R. § 42.56).
`
`
`
` 2
`
` We omit the “TFS” prefix that Petitioner includes with its exhibit numbers.
`3 Citations to paper numbers refer to those filed in IPR2018-01367. A
`similar paper was filed in each of IPR2018-01368, IPR2018-01369, and
`IPR2018-01370.
`
`
`
`
`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)
`
`
`Petitioner did not respond to our invitation to renew its combined
`motion in each proceeding. However, Petitioner timely filed motions to
`expunge Exhibits 1048 and 1051–1056. Paper 12. In the motions,
`Petitioner explains sufficiently how those exhibits contain confidential
`information in the form of “competitively-sensitive . . . research,
`development, and commercial activities.” Id. at 2–3. Petitioner also asserts,
`and we confirm, that Exhibits 1048 and 1051–1056 were not cited or
`discussed in the Board’s Decisions Denying Institution in these proceedings.
`Id. at 3; Paper 10. Thus, we agree with Petitioner that the confidential
`information contained in Exhibits 1048 and 1051–1056 is not needed to
`understand the Board’s Decisions. Paper 12, 3.
`Additionally, Petitioner confirms that Patent Owner indicated that it
`would not oppose the motions. Id. at 1. Indeed, Patent Owner has not
`opposed the motions.
`Based upon our consideration of the facts and the arguments presented
`in Petitioner’s unopposed motions to expunge, we grant Petitioner’s request
`to expunge Exhibits 1048 and 1051–1056 in each of the above-captioned
`proceedings.
`
`
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Expunge Exhibits 1048 and
`1051–1056 in each of the above-captioned proceedings is granted; and
`
`
`
`
`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 all versions4 of Exhibits 1048 and 1051–
`1056 in each of the above-captioned proceedings shall be expunged from the
`record.
`
`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
`
`
` 4
`
` Petitioner filed multiple versions of the exhibits with different
`confidentiality designations.
`
`
`
`4
`
`
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