Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 23
`Entered: April 21, 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 B2
`
`
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 23
`Entered: April 21, 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 B2
`
`
`
`
`Before BARBARA A. PARVIS, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`
`IPR2022-01279
`Patent 7,629,705 B2
`
`
`INTRODUCTION
`I.
`On April 12, 2023, with our authorization, Petitioner filed an
`Unopposed Motion to Expunge Confidential Exhibits 1052–10581 pursuant
`to 37 C.F.R. § 42.56. Paper 20 (“Motion to Expunge” or “Mot.”). Petitioner
`moves to expunge the following documents which are all under seal:
`Ex. 1052 Declaration of Paul Brogan (Unredacted Version);
`Ex. 1053 “Simulation of 2.3MW OPTION 3: Grid Fault
`Ridethrough,” Alstom Engineering Report dated February 27, 2006;
`Ex. 1054 “Grid Fault Ridethrough. Option 3. 0% - Model Validation,”
`Alstom Engineering Report dated March 8, 2006;
`Ex. 1055 “ALSPA MV3000e Application Note 440,056: US Wind
`Generator Control Functions,” Alstom Application Note 440,056, Rev. 4
`dated March 2006;
`Ex. 1056 “ALSPA MV3000e Application Note 440,056: US Wind
`Generator Control Functions,” Alstom Application Note 440,056, Rev. 7
`dated May 2007;
`Ex. 1057 DRI file for Network-Side MV3000 unit in Horse Hollow
`wind turbine S109, dated July 5, 2006; and
`Ex. 1058 “ALSPA MV3000e Application Note 440,054 Network
`Fault Ridethrough and Voltage Support Facility,” Alstom Application Note
`440,054, dated March 2005.
`
`
`1 The title of the motion and first sentence indicate that it is seeking to
`expunge Exhibits 1052–1059. However, the substance of the motion and
`conclusion only refer to exhibits 1052–1058. As exhibit 1059 is a public
`document—the proposed protective order—we treat the references to exhibit
`1059 as a typographical error.
`
`
`
`2
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`IPR2022-01279
`Patent 7,629,705 B2
`
`Mot. 1. Petitioner represents that “the motion is unopposed” that the
`aforementioned documents be expunged from the record. Id.
`“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.” See 37 C.F.R. § 42.56 (2022). On April 10, 2022, we issued a
`Termination Decision granting the parties’ Joint Motion to Terminate
`Proceeding due to settlement between the parties prior to institution of trial.
`Paper 19. In that Decision, we ordered the Petition to be dismissed and the
`proceeding to be terminated. Id.
`For the reasons below, Petitioner’s Motion to Expunge is granted.
`
`PRINCIPLES OF LAW
`II.
`Under 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default rule is
`that all papers filed in an inter partes review are open and available for
`access by the public; a party, however, may file a concurrent motion to seal
`and the information at issue is sealed pending the outcome of the motion. It
`is, however, only “confidential information” that is protected from
`disclosure. 35 U.S.C. § 316(a)(7) (2018). The Consolidated Trial Practice
`Guide states that
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`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 is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`3
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`IPR2022-01279
`Patent 7,629,705 B2
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`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`See Consolidated Trial Practice Guide (“CTPG”) 21–22 (Nov. 2019). 2 “The
`rule[] aim[s] 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.” Id. at 19. Accordingly, a party
`seeking expungement of material from the record must show good cause by
`demonstrating that any information sought to be expunged constitutes
`confidential information, and that the party’s interest in expunging it
`outweighs the public’s interest in maintaining a complete and
`understandable history of this proceeding. Atlanta Gas Light Co. v. Bennett
`Regulator Guards, Inc., IPR2013-00453, Paper 97 at 2 (PTAB Apr. 15,
`2015).
`
`III. ANALYSIS
`We are persuaded by Petitioner’s unopposed contentions that
`Exhibits 1052, 1053, 1054, 1055, 1056, 1057, and 1058 each contain
`confidential information and that expunging these documents would protect
`that confidential information without harming the public’s interest in
`maintaining a complete and understandable file history. Mot. 1–5. We have
`examined Petitioner’s contentions with respect to each document and agree
`that good cause exists to maintain information in each document as
`confidential. Id.
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4
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`IPR2022-01279
`Patent 7,629,705 B2
`
`
`Each of these exhibits was subject to a prior motion to seal (Paper 3),
`and we agreed that each exhibit contains confidential information (Paper 16,
`4–5). For example, Exhibits 1053, 1054, 1055, 1056, and 1058 each contain
`confidential technical design and business information which, if disclosed
`publicly, would likely cause competitive harm to Petitioner. See Mot. 3–4;
`Paper 16, 4. Exhibit 1057 contains confidential software configuration
`information which, if disclosed publicly, would likely cause competitive
`harm to Petitioner. See Mot. 4; Paper 16, 4. And Exhibit 1052, an
`unredacted version of the Declaration of Paul Brogan, contains statements
`about the contents of the above-mentioned confidential exhibits. 3 See Mot.
`4–5; Paper 16, 4–5.
`Petitioner argues good cause exists to expunge these documents for at
`least the following reasons. See, e.g., Mot. 3–5. For example, Petitioner
`argues that it “will suffer concrete harm if these exhibits are released
`publicly” because “they reflect technical details of the MV-3000 power
`converter, a component of Petitioner’s wind turbines, and they show how to
`program the MV-3000 to achieve not only zero voltage ride through (the
`feature that is relevant to the Petition) but also to perform other operations.”
`Id. at 3–4; see also id. at 4 (describing particular technical details of each
`confidential exhibit and stating that “exposure of these confidential exhibits
`will harm it in the market for repair and maintenance services of legacy wind
`turbines”). Petitioner also argues that “[e]xpunging these confidential
`exhibits 1052-1058 will not interfere with the goals of maintaining a
`
`
`3 Pursuant to the Board’s order (Paper 16, 5–6), Petitioner filed a redacted
`copy of the Brogan Declaration as Exhibit 1060. See Paper 21; Ex. 1060;
`see also Mot. 5.
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`5
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`IPR2022-01279
`Patent 7,629,705 B2
`
`complete and understandable file history for public notice purposes” because
`(1) “the Board made no merits decisions in this inter partes review, and it
`did not reference the exhibits 1052-1058 in any such evaluation, (2) “the
`bases of Petitioner’s simultaneous invention arguments will remain public
`because they are discussed in the Petition § IX, which was filed publicly and
`will remain public even after the exhibits 1052-1058 are expunged,” and
`(3) “[w]hile the technical details presented in exhibits 1052-1058
`corroborate the Petition’s factual assertions, they are not needed to
`understand the arguments presented in the Petition.” Mot. 4–5 (citations and
`internal quotation marks omitted).
`We agree with Petitioner that public disclosure of these exhibits could
`result in business harm to the Petitioner as a result of a competitor analyzing
`and using to its advantage the non-public details concerning the technical
`design and operation of Petitioner’s wind turbines, including its MV-3000
`power convertor. A competitor could also use this information to identify
`and interfere with Petitioner’s strategies for joint development projects or to
`acquire intellectual property in an effort to counteract Petitioner’s strategies.
`Moreover, we did not rely, directly or indirectly, on Exhibits 1052, 1053,
`1054, 1055, 1056, 1057, or 1058, or cite the confidential portions of these
`exhibits. Motion 2; Paper 19. Thus, we determine that the confidential
`information present in these documents is not necessary to present a
`complete and understandable file history.
`Accordingly, we grant Petitioner’s Motion to expunge.
`
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`6
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`IPR2022-01279
`Patent 7,629,705 B2
`
`
`ORDER
`For the foregoing reasons, it is hereby:
`ORDERED that Petitioner’s Unopposed Motion to Expunge
`Confidential Exhibits 1052–1058 is granted; and
`FURTHER ORDERED that Exhibits 1052, 1053, 1054, 1055, 1056,
`1057, and 1058 shall be expunged from the record.
`
`
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`7
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`IPR2022-01279
`Patent 7,629,705 B2
`
`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
`
`
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`8
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