UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`
`v.
`
`
`ETHICON LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-00880
`U.S. Patent No. 7,490,749 B2
`
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION FROM THE RECORD
`AND FILE REDACTED VERSION OF EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`
`v.
`
`
`ETHICON LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-00880
`U.S. Patent No. 7,490,749 B2
`
`
`
`
`PATENT OWNER’S MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION FROM THE RECORD
`AND FILE REDACTED VERSION OF EXHIBITS
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`
`Introduction
`Pursuant to 37 C.F.R. § 42.56, Patent Owner (Ethicon) respectfully submits
`
`this motion to expunge from the record certain documents filed under seal that
`
`contain confidential information. Specifically, Patent Owner moves to expunge
`
`unredacted sealed versions of Exhibits 2001-2009, 2012, 2017, and 2019, as well
`
`as the unredacted sealed versions of Patent Owner’s Response (Paper No. 16),
`
`Petitioner’s Reply (Paper No. 26), Patent Owner’s Sur-Reply (Paper No. 31),
`
`Petitioner’s Motion to Exclude (Paper No. 36), Patent Owner’s Opposition to
`
`Petitioner’s Motion to Exclude (Paper No. 38), and Petitioner’s Reply in support of
`
`its Motion to Exclude (Paper No. 41).1
`
`
`
`Patent Owner further moves to filed redacted public versions of Ex. 2008,
`
`Ex. 2009, Ex. 2012, and Ex. 2017. These updated redacted versions of Ex. 2008,
`
`Ex. 2009, Ex. 2012, and Ex. 2017, along with the redacted versions of Ex. 2019,
`
`Patent Owner’s Response (Paper No. 15), Petitioner’s Reply (Paper No. 27) Patent
`
`Owner’s Sur-Reply (Paper No. 32), Petitioner’s Motion to Exclude (Paper No. 35),
`
`
`1 Patent Owner notes that its deadline to appeal the Board’s Final Written Decision
`
`has yet to pass. Accordingly, Patent Owner requests that the Board reserve
`
`judgment concerning the present motion until any such appeal has been resolved.
`
`
`
`
`
`
`Patent Owner’s Opposition to the Motion to Exclude (Paper No. 39), and
`
`Petitioner’s Reply regarding the Motion to Exclude (Paper No. 42) that were
`
`previously filed, may remain in the record if the sealed versions are expunged and
`
`leave the thrust of the Board’s final decision understandable and available to the
`
`public.
`
`II. Background
`
`In support of its Response, Patent Owner relied on the sealed declarations of
`
`Christopher Schall (Ex. 2008), Chad Boudreaux (Ex. 2009), Dean Garner (Ex.
`
`2012), Geoffrey Hueil (Ex. 2017), and Dr. Shorya Awtar (Ex. 2019). Each of
`
`these declarations describe highly confidential and proprietary research and
`
`development information of Patent Owner, including information contained in
`
`Exhibits 2001-2007, which were also filed under seal. If publicly disclosed, the
`
`information in Exhibits 2001-2009, 2012, 2017, and 2019 would substantially
`
`harm Patent Owner’s competitive position in the surgical instrument industry and
`
`ongoing work directed to, inter alia, surgical stapling instruments.
`
`
`
`Numerous filings in this proceeding also reference Patent Owner’s highly
`
`confidential information disclosed in Exhibits 2001-2009, 2012, 2017, and 2019.
`
`On January 14, 2020, Patent Owner submitted its Response to the Petition,
`
`including redacted (Paper No. 15) and sealed (Paper No. 16) versions. On April
`
`17, 2020, Petitioner filed its Reply to Patent Owner’s Response, including sealed
`
`
`
`
`2
`
`
`
`(Paper No. 26) and redacted (Paper No. 27) versions. On May 21, 2020, Patent
`
`Owner submitted its Sur-Reply to Petitioner’s Reply, including redacted (Paper
`
`No. 32) and sealed (Paper No. 31) versions. On June 12, 2020, Petitioner filed a
`
`motion to exclude, including sealed (Paper No. 36) and redactions (Paper No. 35)
`
`versions. On June 19, 2020, Patent Owner filed its opposition to Petitioner’s
`
`motion to exclude, including sealed (Paper No. 38) and redactions (Paper No. 39)
`
`versions. Finally, on June 26, 2020, Petitioner filed its Reply in support of its
`
`motion to exclude, including sealed (Paper No. 41) and redacted (Paper No. 42)
`
`versions.
`
`
`
`On October 1, 2020, the Board entered its Final Written Decision. Paper
`
`No. 45. In its Final Written Decision, the Board did not discuss or address any
`
`confidential information contained in Exhibits 2001-2007 or the sealed version of
`
`Exhibit 2019. Moreover, the Board only briefly referenced content in Ex. 2008,
`
`Ex. 2009, Ex. 2012, and Ex. 2017. See Paper 45 at 8-9. Aside from these discrete
`
`references to Exhibits 2008, 2009, 2012, and 2017, the Final Written Decision did
`
`not discuss or address confidential information disclosed in any of Patent Owner’s
`
`exhibits.
`
`III. Good Cause Exists to Expunge Exhibits Containing Patent Owner’s
`Confidential Information
`“After 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
`
`
`
`
`3
`
`
`
`C.F.R. § 42.56; see also Consolidated Office Patent Trial Practice Guide at pp 21-
`
`22 (Nov. 2019). “The Board has held [that] the expungement of confidential
`
`information is subject to the same ‘good cause’ standard for granting a motion to
`
`seal under 37 C.F.R § 42.54.” Corning Optical Commc’ns RF, LLC v. PPC
`
`Broadband, Inc., IPR2013-00346, Paper 94, p. 3 (PTAB Oct. 2, 2018) (the “good
`
`cause” standard for granting a motion to seal equally applies to a motion to
`
`expunge). 37 C.F.R. § 42.54 identifies confidential information in a manner
`
`consistent with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for
`
`protective orders for trade secret or other confidential research, development, or
`
`commercial information. Consolidated Office Patent Trial Practice Guide at p. 19;
`
`see also Gnosis, et al. v. South Alabama Med. Science Found., IPR2013-00117,
`
`Paper 39, p. 2 (PTAB Oct. 31, 2013) (stating the same).
`
`
`
`Patent Owner moves to expunge the unredacted, sealed version of Exhibits
`
`2001-2009, 2012, 2017, and 2019, as well as Paper No. 16, Paper No. 26, Paper
`
`No. 31, Paper No. 36, Paper No. 38, and Paper No. 41. These documents contain
`
`highly confidential research and development and/or non-public business
`
`information of Patent Owner. In other inter partes review proceedings, the Board
`
`has held that confidential research, development, trade secret, or business
`
`information should remain under seal. See, e.g., Vizio, Inc. v. Nichia Corp.,
`
`IPR2017-01623, Paper No. 77, pp. 3-4 (April 25, 2019); Hendrickson USA LLC, et
`
`
`
`
`4
`
`
`
`al v. Trans Techs.Co., IPR2017-01510, Paper No. 60, pp. 3-4 (Feb. 14, 2019);
`
`Celltrion, Inc. v. Genentech, Inc., IPR2016-01667, Paper No. 31, p. 4 (July 23,
`
`2018); Otter Products, LLC, Petr., IPR2014-01464, Paper No. 28, pp. 2-4 (PTAB
`
`Aug. 27, 2015); Gnosis, et al. v. South Alabama Med. Science Found., IPR2013-
`
`00117, Paper 39, p. 2 (PTAB Oct. 31, 2013). The updated redacted public versions
`
`of Ex. 2008, Ex. 2009, Ex. 2012, and Ex. 2017 that Patent Owner intends to file, in
`
`conjunction with the public versions of Ex. 2019, Paper No. 15 (Patent Owner’s
`
`Response), Paper No. 27 (Petitioner’s Reply), Paper No. 32 (Patent Owner’s Sur-
`
`Reply), Paper No. 35 (Petitioner’s Motion to Exclude), Paper No. 39 (Patent
`
`Owner’s Opposition to Motion to Exclude), and Paper No. 42 (Petitioner’s Reply
`
`Regarding Motion to Exclude) that were previously filed will provide sufficient
`
`information for the public to understand the record of this proceeding. It is
`
`appropriate to expunge these select exhibits and papers because the sealed exhibits
`
`and papers have “not been published or otherwise made available to the public,”
`
`and public disclosure “would be commercially harmful.” Otter Products,
`
`IPR2014- 01464, Paper No. 28, at 4.
`
`A. Exhibits 2001-2007
`Exhibits 2001-2007 contain highly confidential research and development
`
`
`
`information of Patent Owner’s products and services. Patent Owner submitted the
`
`
`
`
`5
`
`
`
`information in these exhibits under seal, and hereby requests that the Board
`
`expunge these exhibits.
`
`
`
`While the Rules of Practice provide that “[t]here is an expectation that
`
`information will be made public where the existence of the information is referred
`
`to in a decision to grant or deny a request to institute a review or identified in a
`
`final written decision,” (Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide November 2019 at p. 22), because the information in Exhibits 2001-2007
`
`was submitted after institution, none of this information to be expunged is relevant
`
`to the Board’s decision to institute trial. Further, the Board did not refer to any
`
`confidential evidence in these exhibits in the Final Written Decision.2 Paper No.
`
`45. Accordingly, none of the information in Exhibits 2001-2007 is necessary to
`
`understand the board’s decision concerning patentability. See Vizio, Inc. v. Nichia
`
`Corp., IPR2017-01623, Paper No. 77 at p. 3 (finding expungement appropriate
`
`when the final decision did “not substantively identify or rely on the confidential
`
`information”); Hendrickson USA LLC, IPR2017-01510, Paper No. 60 at p. 3
`
`(granting motion to expunge finding in part that portions of exhibits redacted and
`
`
`22 The Board only referred to Exhibits 2003-2007, but did not describe their
`
`contents, in explaining that Petitioner’s Motion to Exclude was dismissed as moot.
`
`Paper 45 at 26.
`
`
`
`
`6
`
`
`
`cited in the final decision were “not necessary for understanding the basis of [the]
`
`decision on patentability”).
`
`
`
`The public has little, if any, need to know the specific technical information
`
`disclosed in Exhibits 2001-2007. Maintaining the confidentiality of these exhibits
`
`is particularly important here where Petitioner and Patent Owner are competitors.
`
`The confidential information contained in Exhibits 2001-2007 includes
`
`competitively sensitive details regarding Patent Owner’s products and services.
`
`Disclosure of this information could put Patent Owner at a commercial
`
`disadvantage. Patent Owner respectfully submits that the legitimate need to
`
`protect Patent Owner’s confidential information outweighs any interest of the
`
`public, particularly where confidential information proved irrelevant to the
`
`resolution of the proceeding. Patent Owner thus requests to expunge Exhibits
`
`2001-2007.
`
`B. Exhibits 2008, 2009, 2012, and 2017
`The declarations of Mr. Schall (Ex. 2008), Mr. Boudreaux (Ex. 2009), Mr.
`
`
`
`Garner (Ex. 2012), and Mr. Hueil (Ex. 2017) contain highly confidential research
`
`and development information of Patent Owner’s products and services. Patent
`
`Owner submitted the information in these exhibits under seal, and hereby requests
`
`to file substitute redacted public versions of these exhibits. Patent Owner intends
`
`to submit public versions of these exhibits that disclose the contents referenced by
`
`
`
`
`7
`
`
`
`the Board in the Final Written Decision, including ¶1 of Ex. 2008, ¶1 of Ex. 2009,
`
`¶1 of Ex. 2012, and ¶1 of Ex. 2017. See Paper 45 at 8-9. The updated redacted
`
`public versions of Exhibits 2008, 2009, 2012, and 2017 will provide sufficient
`
`information for the public to understand the record of this proceeding and will
`
`remain in the record if the sealed versions are expunged. The redacted portions are
`
`tailored to redact only confidential information not relied upon by the Board in the
`
`Final Written Decision.
`
`
`
`The public has little, if any, need to know the specific technical information
`
`that Patent Owner seeks to expunge from Exhibits 2008, 2009, 2012, and 2017.
`
`Maintaining the confidentiality of the sealed versions of these exhibits is
`
`particularly important here where Petitioner and Patent Owner are competitors.
`
`The confidential information contained in Exhibits 2008, 2009, 2012, and 2017
`
`includes competitively sensitive details regarding Patent Owner’s products and
`
`services. Disclosure of this information could put Patent Owner at a commercial
`
`disadvantage. Patent Owner respectfully submits that the legitimate need to
`
`protect Patent Owner’s confidential information outweighs any interest of the
`
`public, particularly where confidential information proved irrelevant to the
`
`resolution of the proceeding. Patent Owner thus requests to expunge the sealed
`
`versions of Exhibits 2008, 2009, 2012, and 207, and to file redacted versions of
`
`
`
`
`8
`
`
`
`these exhibits that discloses the portions of these exhibits referenced in the Board’s
`
`Final Written Decision.
`
`C. Exhibit 2019 and Paper Nos. 16, 26, 31, 36, 38, 41
`Patent Owner also requests that the Board expunge the sealed version of
`
`
`
`Exhibit 2019, as well as the sealed versions of Patent Owner’s Response (Paper
`
`No. 16), Petitioner’s Reply (Paper No. 26), Patent Owner’s Sur-Reply (Paper No.
`
`31), Petitioner’s Motion to Exclude (Paper No. 36), Patent Owner’s Opposition to
`
`Petitioner’s Motion to Exclude (Paper No. 38), and Petitioner’s Reply in support of
`
`its Motion to Exclude (Paper No. 41). These documents also contain highly
`
`confidential research and development information of Patent Owner’s products and
`
`services. Patent Owner has already submitted redacted public versions of these
`
`documents. See Paper Nos. 15 (Patent Owner Response), 27 (Petitioner’s Reply),
`
`32 (Patent Owner’s Sur-Reply), 35 (Motion to Exclude), 39 (Opposition to Motion
`
`to Exclude), 42 (Reply regarding Motion to Exclude). The redacted public
`
`versions of Ex. 2019 and the public versions that correspond to Paper Nos. 16, 26,
`
`31, 36, 38, 41 will provide sufficient information for the public to understand the
`
`record of this proceeding and will remain in the record if the sealed version is
`
`expunged. In particular, the Board’s Final Written Decision did not describe or
`
`otherwise rely on any confidential information disclosed in Exhibit 2019 or Paper
`
`Nos. 16, 26, 31, 36, 38, 41. Accordingly, for the reasons set forth above Patent
`
`
`
`
`9
`
`
`
`Owner requests that these documents also be expunged from the record. Vizio, Inc.
`
`v. Nichia Corp., IPR2017-01623, Paper No. 77 at p. 3 (finding expungement
`
`appropriate when the final decision did “not substantively identify or rely on the
`
`confidential information”).
`
`IV. Conclusion
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant its motion to expunge the sealed versions of Exhibits 2001-2009, 2012, 2017,
`
`and 2019, and file substitute redacted versions of Exhibits 2008, 2009, 2012, and
`
`2017. Patent Owner likewise requests that the sealed versions of Patent Owner’s
`
`Response (Paper No. 16), Petitioner’s Reply (Paper No. 26), Patent Owner’s Sur-
`
`Reply (Paper No. 31), Petitioner’s Motion to Exclude (Paper No. 36), Patent
`
`Owner’s Opposition to Petitioner’s Motion to Exclude (Paper No. 38), and
`
`Petitioner’s Reply in support of its Motion to Exclude (Paper No. 41) be expunged
`
`as well.
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`Respectfully submitted,
`
`/Anish R. Desai/
`Elizabeth S. Weiswasser (Reg No. 55,721)
`Anish R. Desai (Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8000
`
`Adrian Percer (Reg. No. 46,986)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`T: 650-802-3141
`
`Christopher T. Marando (Reg. No. 67,898)
`Christopher M. Pepe (Reg. No. 73,851)
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7094
`
`Dated: November 13, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 13, 2020, a copy of PATENT
`
`
`
`OWNER’S MOTION TO EXPUNGE CONFIDENTIAL INFORMATION
`
`FROM THE RECORD AND FILE REDACTED VERSION OF EXHIBITS
`
`was served by filing the documents through the PTAB’s E2E Filing System, as
`
`well as delivering a copy via electronic mail upon the following:
`
`Steven R. Katz
`John C. Phillips
`Ryan P. O’Connor
` Grant Rice
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`rice@fr.com
`IPR11030-0049IP4@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`
`
`12
`
`
`
`
`
`
`
`
`Timothy Andersen
`Timothy Andersen
`IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`202-682-7000
`timothy.andersen@weil.com
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
