UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2019-00880
`U.S. Patent No. 7,490,749
`______________________
`
`PATENT OWNER’S MOTION TO SEAL
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2019-00880
`U.S. Patent No. 7,490,749
`______________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
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`TABLE OF CONTENTS
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`
`
`I.
`II.
`
`III.
`IV.
`
`
`INTRODUCTION .............................................................................................................. 1
`REASONS FOR THE REQUESTED RELIEF AND STATEMENT OF FACTS ............ 1
`A.
`Good Cause Exists for Sealing Confidential Information ...................................... 1
`B.
`Patent Owner’s Opposition to Petitioner’s Motion to Exclude .............................. 2
`CERTIFICATION OF NON-PUBLICATION................................................................... 2
`CONCLUSION ................................................................................................................... 2
`
`i
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`
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`I.
`
`INTRODUCTION
`Patent Owner (Ethicon) moves to seal portions of the Patent Owner’s
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`Opposition to Petitioner’s Motion to Exclude that rely on Exhibits 2003-2009,
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`2013-2015, 2017, and 2019 pursuant to 37 C.F.R. §§ 42.14 and 42.54. The parties
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`have previously stipulated to a Protective Order filed with Patent Owner’s Motion
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`to Seal on January 14, 2020. See Paper 17.
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`II. REASONS FOR THE REQUESTED RELIEF AND STATEMENT OF
`FACTS
`A. Good Cause Exists for Sealing Confidential Information
`The Board will seal documents for good cause. See 37 C.F.R. § 42.54(a);
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`see also Argentum Pharms. LLC v. Alcon Research, Ltd., Paper 27, 2 (2013). “The
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`rules aim to strike a balance between the public’s interest in maintaining a
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`complete and understandable file history and the parties’ interest in protecting truly
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`sensitive information.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48760 (2012). The public’s interest in having access to confidential business
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`information that is only indirectly related to patentability is “minimal.” Garmin v.
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`Cuozzo, IPR2012-00001, Paper 36, 8-9 (2013) (granting a motion to seal an
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`agreement relating to the “commercializ[ation]” of the patent-at-issue). Such
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`documents should be subject to the Proposed Protective Order. See Paper 17,
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`Attachment 1 at 5-6 (“[I]nformation designated as confidential that [is] disclosed to
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`another party during discovery or other proceedings before the Board shall be
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`
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`1
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`
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`clearly marked as ‘PROTECTIVE ORDER MATERIAL’ and shall be produced in
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`a manner that maintains its confidentiality.”).
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`Patent Owner’s Opposition to Petitioner’s Motion to Exclude
`B.
`Portions of Patent Owner’s Opposition to Petitioner’s Motion to Exclude
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`describe confidential and proprietary information in Exhibits 2003-2009, 2013-
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`2015, 2017, and 2019. See Paper 17 at 2-4. This confidential and proprietary
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`research and development information of Patent Owner, if publicly disclosed,
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`would substantially harm Patent Owner’s competitive position in the surgical
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`instrument industry and ongoing work directed to, inter alia, surgical staplers.
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`Accordingly, the references to confidential and proprietary information in Exhibits
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`2003-2009, 2013-2015, 2017, and 2019 in Patent Owner’s Opposition to
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`Petitioner’s Motion to Exclude warrant sealing for the reasons set forth above and
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`in Patent Owner’s Motion to Seal on January 14, 2020. See Paper 17.
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`III. CERTIFICATION OF NON-PUBLICATION
`On Patent Owner’s behalf, the undersigned counsel certifies that, to the best
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`of his knowledge, the sealed portions of Patent Owner’s Opposition to Petitioner’s
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`Motion to Exclude have not been published or otherwise made public.
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`IV. CONCLUSION
`Patent Owner respectfully requests that the Board grant its motion to seal
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`portions of Patent Owner’s Opposition to Petitioner’s Motion to Exclude. If the
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`Board is not inclined to grant the motion to seal due to some deficiency in this
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`2
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`motion, Patent Owner respectfully requests leave to file another motion to seal to
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`correct that deficiency, or in the alternative, a motion to expunge Ethicon’s
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`confidential documents and information form the record.
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`
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`Dated: June 19, 2020
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`Respectfully submitted,
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`
`
`/Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`Counsel for Patent Owner
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`3
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`CERTIFICATE OF SERVICE
`I hereby certify that on June 19, 2020, a copy of PATENT OWNER’S
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`MOTION TO SEAL and any accompanying exhibits were served by filing the
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`documents through the PTAB’s E2E Filing System as well as delivering a copy via
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`electronic mail upon the following:
`
`
`Steven R. Katz
`Joshua A. Griswold
`Kenneth W. Darby, Jr.
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`griswold@fr.com
`kdarby@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`IPR11030-0052IP1@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`/Timothy J. Andersen/
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`202-682-7075
`timothy.andersen@weil.com
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