Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 16
`
`Entered: March 31, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SIEMENS GAMESA RENEWABLE ENERGY, INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`____________________
`
`IPR2022-01279
`Patent 7,629,705 B1
`____________________
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion to Seal and Entry of Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 16
`
`Entered: March 31, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SIEMENS GAMESA RENEWABLE ENERGY, INC.,
`Petitioner,
`v.
`GENERAL ELECTRIC COMPANY,
`Patent Owner.
`____________________
`
`IPR2022-01279
`Patent 7,629,705 B1
`____________________
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Motion to Seal and Entry of Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`
`
`
`
`
`IPR2022-01279
`Patent 7,629,705 B1
`
`
`INTRODUCTION
`I.
`Siemens Gamesa Renewable Energy Inc. (“Petitioner”), filed a motion
`seeking entry of a protective order and sealing Exhibits 1052 through 1058.
`Paper 3 (“Motion to Seal” or “Mot.). General Electric Company (“Patent
`Owner) did not file an opposition.
`For the reasons we discuss below, we grant the Petitioner’s Motion to
`Seal and enter a protective order in this proceeding.
`
`II. STANDARD OF REVIEW
`There is a strong public policy for making all information filed in a
`quasi-judicial administrative proceeding open to the public, especially in an
`inter partes review that determines the patentability of claims in an issued
`patent and, therefore, impacts the rights of the public. Under 35 U.S.C.
`§ 316(a)(1), the default rule is that all papers and exhibits filed in an inter
`partes review are open and available for access by the public. A party may,
`however, file papers or exhibits under seal together with a motion to seal,
`whereupon the papers or exhibits will be treated as sealed pending the
`outcome of the motion. Id.
`Only “confidential information” may be protected from disclosure.
`35 U.S.C. § 316(a)(7) (2018) (“The Director shall prescribe regulations . . .
`providing for protective orders governing the exchange and submission of
`confidential information.”). In that regard, the Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice
`Guide”), 1 provides the following:
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`IPR2022-01279
`Patent 7,629,705 B1
`
`
`The rules aim to strike a balance between the public’s
`interest in maintaining a complete and understandable file
`history and the parties’ interest in protecting truly sensitive
`information.
`. . . .
`2. Confidential Information: The rules identify
`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. 37 C.F.R. § 42.54.
`Trial Practice Guide at 19.
`As the party seeking to protect its confidential information, the
`movant has the burden of proof to show that it is entitled to the requested
`relief. See 37 C.F.R. § 42.20(c) (2022). The standard for granting a motion
`to seal is “for good cause.” 37 C.F.R. § 42.54. A motion to seal must
`include a proposed protective order and a certification that the movant has in
`good faith conferred or attempted to confer with the other party in an effort
`to come to an agreement as to the scope of the proposed protective order.
`See id.
`In Argentum Pharmaceuticals LLC v. Alcon Research, Ltd.,
`IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018) (informative), the Board set
`forth the following four factors it will consider when determining whether
`the moving party has shown good cause to seal confidential information:
`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
`
`3
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`IPR2022-01279
`Patent 7,629,705 B1
`
`
`in maintaining confidentiality outweighs the strong public
`interest in having an open record.
`Argentum at 4.
`
`III. ANALYSIS
`In the Motion to Seal, Petitioner requests that the Board enter the
`default protective order as set forth in Appendix A of the Trial Practice
`Guide. Mot. 3; see also Paper 14 (Submission of Proposed Protective
`Order); Ex. 1059 (Proposed Protective Order)
`Petitioner argues that the good cause standard for granting the Motion
`to Seal is satisfied. See Mot. 3–5. Specifically, Petitioner argues that it has
`maintained Exhibits 1053 through 1058 since they were created in 2006 and
`that Exhibit 1052 is testimony discussing those Exhibits. Mot. 1–2, 3.
`Petitioner further argues that because the products discussed in the email are
`still in operation, Petitioner “would suffer a concrete harm if the exhibits
`were disclosed publicly.” Mot. 4. Petitioner further argues that “there exists
`a need to rely on the information sought to be sealed” when considering
`secondary considerations and the documents should be sealed in their
`entirety because they “all refer to trade secret materials that, to Petitioner’s
`knowledge, have not become public through other means.” Mot. 5
`After reviewing Exhibit 1053 through 1058, we agree that the exhibits
`describe Petitioner’s confidential trade secrets. We also are mindful of the
`parties’ representations that there is a genuine need to rely on the exhibits in
`the Petition. Based on these particular circumstances, we find good cause to
`grant the Joint Motions to Seal Exhibit 1052 through 1058.
`With regard to Exhibit 1052, we agree with Petitioner that it describes
`the confidential materials of Exhibits 1053 through 1058 and that those
`
`4
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`IPR2022-01279
`Patent 7,629,705 B1
`
`portions can be sealed. However, Exhibit 1052 also contains information
`that Petitioner has not shown to be confidential. For example, it does not
`appear that Mr. Brogan’s work history, the background information, or
`discussion of prior testimony is confidential. Accordingly, Petitioner shall
`file a redacted version of Exhibit 1052. The redactions shall be limited to
`discussions of the information contained in Exhibits 1053 through 1058.
`In addition, because Patent Owner does not object, we enter the
`proposed Protective Order set forth in Exhibit 1059.
`
`IV. CONCLUSION
`For the foregoing reasons, we grant the currently pending motion to
`seal and for entry of a protective order.
`We also remind the parties of the public’s interest in maintaining a
`complete and understandable file history, and of the general expectation that
`information will be made public where the existence of the information is
`identified in a final written decision following a trial. See Trial Practice
`Guide, 21–22. We also note that confidential information subject to a
`protective order ordinarily becomes public 45 days after denial of an
`institution decision or entry of a final judgment in a trial. See id. After the
`denial of institution or entry of final judgment, a party may file a motion to
`expunge confidential information from the record prior to the information
`becoming public. See id.; 37 C.F.R. § 42.56.
`
`V. ORDER
`Accordingly, it is hereby:
`ORDERED that the Motion to Seal (Paper 3) is granted;
`
`5
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`IPR2022-01279
`Patent 7,629,705 B1
`
`
`FURTHER ORDERED that the proposed protective order set forth as
`Exhibit 1059 is entered into this case;
`FURTHER ORDERED that Exhibits 1052 through 1058 will continue
`to be maintained under seal; and
`FURTHER ORDERED that within 10 business days, Petitioner shall
`file a redacted version of Exhibit 1052 consistent with this Order.
`
`6
`
`
`
`IPR2022-01279
`Patent 7,629,705 B1
`
`For PETITIONER:
`Robert Hails
`T Cy Walker
`Theresa Weisenberger
`BAKER HOSTETLER LLP
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
`tweisenberger@bakerlaw.com
`
`
`For PATENT OWNER:
`
`Monica Grewal
`Scott Bertulli
`Trishan Esram
`WILMER CUTLER PICKERING HALE AND DORR, LLP
`monica.grewal@wilmerhale.com
`scott.bertulli@wilmerhale.com
`trishan.esram@wilmerhale.com
`
`
`
`
`
`
`
`
`7
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