`571-272-7822
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`Paper 51
`Date: February 18, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`
`IPR2019-00991
`Patent 8,602,287 B2
`
`
`Before JOSIAH C. COCKS, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`ORDER
`Denying without Prejudice
`Patent Owner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
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`
`
`IPR2019-00991
`Patent 8,602,287 B2
`Patent Owner filed a Motion to Expunge, seeking to expunge certain
`documents filed under seal containing confidential information from the
`record. Paper 47 (“Mot.”). Patent Owner’s Motion is denied without
`prejudice.
`Previously, we granted the parties’ motions to seal in their entirety
`Exhibits 2007, 2010–2153, 2155–2163, 2165–2182, 2184–2210, 2213–2264,
`2266, 2268–2298, 2300, 2301, and 2303, and the unredacted version of
`Patent Owner’s Response (Paper 17), Petitioner’s Reply (Paper 26), Patent
`Owner’s Sur-reply (Paper 35), and Exhibits 1020, 1021, 1023, 2003–2005,
`2008, 2009, 2267 and 2299. Paper 48, 43–45; Paper 49. We also issued a
`confidential version of the Final Written Decision (Paper 43). In addition,
`Patent Owner filed an updated exhibit list under seal (Paper 45).
`In its Motion to Expunge, “Patent Owner requests that sealed versions
`of Paper Nos. 17, 26, 35, 43, and 45 and Exhibits 1020, 1021, 1023, 2003,
`2004, 2005, 2007–2153, 2155–2163, 2165–2182, 2184–2210, 2213–2264,
`2266–2301, and 2303 be expunged from the record.” Mot. 1. According to
`Patent Owner, “[t]he public has little, if any, need to know the specific
`information the Patent Owner seeks to expunge from the record.” Id. at 6.
`Confidential information that is subject to a protective order ordinarily
`becomes public 45 days after final judgment in a trial. Patent Trial and
`Appeal Board Consolidated Trial Practice Guide 21–22. A party seeking to
`maintain the confidentiality of the information may file a motion to expunge
`the information from the record prior to the information becoming public.
`37 C.F.R. § 42.56.
`In this case, however, Patent Owner has filed a Notice of Appeal,
`seeking appellate review of the Final Written Decision. Paper 50. We are of
`the view that the record must be preserved in its entirety, including any
`
`2
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`
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`IPR2019-00991
`Patent 8,602,287 B2
`sealed portions, for the Federal Circuit Court of Appeals to fully consider the
`issues discussed in the Final Written Decision. We hereby authorize Patent
`Owner to renew its Motion to Expunge within 45 days of the conclusion of
`all appeals.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to Expunge is denied without
`prejudice;
`FURTHER ORDERED that the record in this proceeding will be
`preserved and the documents filed under seal will not be expunged or made
`public until after the completion of all appeals; and
`FURTHERED ORDERED that Patent Owner may renew its Motion
`to Expunge within 45 days after the conclusion of all appeals; and
`FURTHERED ORDERED that in the event that Patent Owner does
`not timely renew its Motion to Expunge, the documents filed under seal in
`this proceeding will be unsealed 45 days after the conclusion of all appeals.
`
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`3
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`IPR2019-00991
`Patent 8,602,287 B2
`FOR PETITIONER:
`
`Steven Katz
`John Phillips
`Ryan O’Connor
`FISH & RICHARDSON P.C.
`katz@fr.com
`phillips@fr.com
`oconnor@fr.com
`
`
`FOR PATENT OWNER:
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher Pepe
`Brian Ferguson
`WEIL, GOTSHAL, & MANGES LLP
`anish.desai@weil.com
`Elizabeth.weiswasser@weil.com
`Adrian.percer@weil.com
`Christopher.marando@weil.com
`Christopher.pepe@weil.com
`brian.ferguson@weil.com
`
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`4
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