UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
`
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`GARDNER DENVER, INC.
`Petitioner,
`
`v.
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`UTEX INDUSTRIES, INC.
`Patent Owner
`____________________________________________
`
`Case IPR2020-00333
`Patent No. 10,428,949
`____________________________________________
`
`JOINT MOTION TO SEAL PURSUANT TO PROTECTIVE ORDER
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`
`Active 51848945.1
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`
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`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`GARDNER DENVER, INC.
`Petitioner,
`
`v.
`
`UTEX INDUSTRIES, INC.
`Patent Owner
`____________________________________________
`
`Case IPR2020-00333
`Patent No. 10,428,949
`____________________________________________
`
`JOINT MOTION TO SEAL PURSUANT TO PROTECTIVE ORDER
`
`
`Active 51848945.1
`
`
`
`
`
`
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54 and the Protective Order
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`concurrently filed in this proceeding on July 9, 2020 (“Protective Order”) (Paper 8,
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`Ex. A), Patent Owner, Utex Industries, Inc. (“Utex”), and Petitioner, Gardner
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`Denver, Inc. (“Gardner Denver”) respectfully submit this Motion to Seal.
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`I.
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`DOCUMENTS TO BE SEALED
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`
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`
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`A.
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`Preliminary Response
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`Patent Owner’s Preliminary Response contains confidential information of
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`Petitioner related to Ex. 2001, which has been designated as “Protective Order
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`Material” pursuant to the Protective Order. Specifically, Patent Owner’s Preliminary
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`Response discusses at page 58 material from paragraph 194 of Vinod Sharma’s
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`Declaration (Ex. 2001 to the Patent Owner’s Preliminary Response) which is
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`confidential information of Gardner Denver, as explained below. Paper No. 7 at 58.
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`B.
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`Ex. 2001
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`Mr. Sharma’s Declaration contains discussions of the confidential material
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`regarding Gardner Denver’s research and development efforts which has been
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`designated as Protective Order Material by Petitioner. Specifically, in paragraph
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`194 of his declaration, Mr. Sharma indicates that he has reviewed certain documents
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`from Gardner Denver and summarizes information that he asserts the documents
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`show. Ex. 2001 ¶ 194. This information relates to Gardner Denver’s research and
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`development efforts prior to the issuance of a Utex patent to which the patent at issue
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`1
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`in this proceeding claims priority. See id. That patent is also asserted against
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`Gardner Denver in a co-pending litigation between Utex and Gardner Denver. The
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`documents and information regarding Gardner Denver’s research and development
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`efforts have been designated as “Highly Confidential-Attorneys’ Eyes Only”
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`pursuant to the Protective Order in that litigation because they comprise details
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`regarding Petitioner’s confidential research and development for its packing
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`products that Petitioner deems especially sensitive. As such, Ex. 2001 contains
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`designated Protective Order Material that should be sealed pursuant to the Protective
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`Order. Pursuant to Section 5(A)(ii) of the Protective Order, Utex and Gardner
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`Denver will confer regarding the scope of redactions necessary to seal this Protective
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`Order information, and will file public redacted non-confidential versions of the
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`Preliminary Response and Ex. 2001.
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`II. GOOD CAUSE FOR SEALING THE IDENTIFIED DOCUMENTS
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`
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`When enacting inter partes reviews (“IPRs”), Congress directed the Patent
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`Trial and Appeal Board (“the Board”) to “provid[e] for protective orders governing
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`the exchange and submission of confidential information.” 35 U.S.C. § 316(a)(7).
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`Thus, “[t]he Board may, for good cause, issue an order to protect a party or person
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`from disclosing confidential information . . .” 37 C.F.R. § 42.54(a). In Argentum
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`Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (Jan. 19,
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`2018), the Board set forth the standard for sealing confidential information:
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`2
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`
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`[A] movant to seal must demonstrate adequately that (1) the
`information sought to be sealed is truly confidential, (2) a concrete
`harm would result upon public disclosure, (3) there exists a genuine
`need to rely in the trial on the specific information sought to be sealed,
`and (4) on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
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`Id. at 3. While there is a presumption in favor of public disclosure, and the burden
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`is on the movant to seal, application of the foregoing factors should be tempered by
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`reasonableness, which is the touchstone of good cause. Overly harsh or stringent
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`application of the “good cause” requirement would be contrary to Congress’ intent
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`that IPRs be conducted in a “timely, fair, and efficient manner” as an alternative to
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`expensive court litigation of patent validity. Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,756 (Aug. 12, 2012).
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`
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`As explained below, the Argentum factors confirm that the information the
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`Parties seek to protect from public disclosure should indeed be sealed in this
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`proceeding.
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`
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`
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`A. Confidential
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`The information regarding Gardner Denver’s confidential research and
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`development efforts that appears in Exhibit 2001 and the Preliminary Response is
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`truly confidential. That information is not publicly available. More specifically,
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`Gardner Denver asserts that Exhibit 2001 has discussion of Gardner Denver’s
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`3
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`
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`confidential research and development efforts prior to the issuance of the patent-in-
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`suit in the co-pending litigation between Gardner Denver and Utex. Gardner Denver
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`further asserts that, if published, this information could adversely affect Gardner
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`Denver. For example, Gardner Denver asserts that Mr. Sharma’s description of its
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`confidential research and development efforts both discloses sensitive information
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`about those efforts and is incomplete. Gardner Denver asserts that in order for
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`Gardner Denver to provide the full context, it would have to disclose additional
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`confidential research and development information. Gardner Denver further asserts
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`that disclosure of the sensitive information that is already in Mr. Sharma’s
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`declaration would harm its ability to compete in the marketplace. While Utex does
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`not agree that Mr. Sharma’s description of such information is incomplete or that
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`Gardner Denver would have to disclose additional confidential research and
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`development information in response to Mr. Sharma, Utex consents to the
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`information being treated as confidential information for the purposes of this
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`proceeding.
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`
`
`
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`B. Concrete Harm from Public Disclosure
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`Gardner Denver believes that public disclosure of the information in Exhibit
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`2001 and relied upon in the Preliminary Response would cause concrete harm to the
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`Gardner Denver. As discussed above, Gardner Denver asserts that Mr. Sharma’s
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`discussion of its confidential research and development efforts is incomplete, and
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`4
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`public disclosure of the information without additional context could harm Gardner
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`Denver’s reputation in the marketplace. However, Gardner Denver asserts that in
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`order to provide full context, Gardner Denver would need to publicly disclose
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`additional confidential research and development information. Gardner Denver
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`further asserts that a competitor or others could use such information to gain an
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`unfair advantage in the packing market. Again, as discussed above, while Utex does
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`not agree that Mr. Sharma’s description of the information is incomplete or that
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`Gardner Denver would have to disclose additional confidential research and
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`development information in response to Mr. Sharma, Utex consents to the
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`information being treated as confidential information for the purposes of this
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`proceeding.
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`
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`C. Genuine Need to Rely Upon
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`Utex relies on Ex. 2001, among other evidence, to support its Preliminary
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`Response. The information relied upon is not available from any non-confidential
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`sources and Utex asserts it is highly relevant to its arguments that the challenged
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`claims are patentable. As a result, Utex has a genuine need to rely on this Protective
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`Order Material information in the above-listed exhibit.
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`
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`
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`D.
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`Balancing
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`The parties’ need for confidentiality outweighs the public’s interest in having
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`a fully open record. Utex relies on the sensitive research and development
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`
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`5
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`information, in addition to other evidence, to support its Preliminary Response in
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`order to fully defend itself in this proceeding. Further, Utex and Petitioner will
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`submit redactions tailored to remove the confidential information while revealing to
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`the public as much as possible, striking an appropriate balance of the public’s
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`qualified interest in having an open record, on the one hand, and the interest in
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`maintaining the confidential information in accordance with the Protective Order on
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`the other.
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`III. CERTIFICATION OF CONFERENCE WITH OPPOSING PARTY
`PURSUANT TO 37 C.F.R. § 42.54(a)
`As set forth in the Joint Motion to Enter Jointly Proposed Protective Order
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`
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`(Paper 8), Counsel for Utex and Petitioner conferred regarding the proposed
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`Protective Order submitted to the Board and agree that the proposed Protective Order
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`(Paper 8, Ex. A) calls for and authorizes this sealing request. Since the documents
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`referenced herein were designated Protective Order Material, the information that is
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`the subject of this motion should be sealed.
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`IV. NON-CONFIDENTIAL
`DOCUMENTS
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`VERSIONS
`
`OF
`
`CONFIDENTIAL
`
`
`
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`Pursuant to Section 5(A)(ii) of the Protective Order, Utex will file public
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`record versions of the documents filed under seal that exclude or redact any
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`confidential information. The redactions will be tailored to protect only that
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`confidential information as outlined in the Protective Order.
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`
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`6
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`V. CONCLUSION
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`The Parties jointly respectfully request that the Board grant this Motion to
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`Seal.
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`Date: July 9, 2020
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`
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`Respectfully submitted,
`
`/Helena D. Kiepura/
`Helena D. Kiepura (Reg. No. 64,441)
`helena.kiepura@kirkland.com
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`(202) 389-5000
`
`Benjamin J. Behrendt (Reg. No.
`71,417)
`benjamin.behrendt@kirkland.com
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`(202) 389-5000
`
`Attorneys for Gardner Denver, Inc.
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`
`/Paul Morico/
`Paul Morico
`Reg. No. 35,960
`Paul.morico@bakerbotts.com
`Baker Botts LLP
`910 Louisiana Street
`Houston, Texas 77002
`Telephone: 713.229.1732
`
`Natalie Alfaro Gonzales
`Reg. No. 68, 554
`Natalie.gonzales@bakerbotts.com
`Baker Botts LLP
`7
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`
`
`910 Louisiana Street
`Houston, Texas 77002
`Telephone: 713.229.1318
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`Attorneys for Utex Industries, Inc.
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`8
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