throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: June 11, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NJOY, LLC, and NJOY HOLDINGS, INC.,
`Petitioner,
`v.
`JUUL LABS, INC.,
`Patent Owner.
`
`IPR2024-00231
`Patent 10,130,123 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, KIMBERLY McGRAW, and
`AVELYN ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`
`
`ORDER
`
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. § 42.14
`Granting Petitioner’s Motion to Seal
`37 C.F.R. § 42.14
`Granting Patent Owner’s Request for
`Entry of Proposed Stipulated Protective Order
`37 C.F.R. § 42.54
`
`
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`
`
`Patent Owner filed (1) a motion to seal its Patent Owner Preliminary
`Response and Exhibits 2001, 2003, 2025, 2026, and 2041 and (2) a motion
`requesting entry of a proposed stipulated Protective Order. Paper 9, 1 (“PO
`Motion”). Petitioner filed a motion to seal its Reply to Patent Owner’s
`Preliminary Response. Paper 10, 1 (“Pet. Motion”). For the reasons that
`follow, Patent Owner’s motions and Petitioner’s motion are granted.
`I.
`PATENT OWNER’S MOTION TO SEAL
`Patent Owner filed a motion to seal the unredacted version of Patent
`Owner’s Preliminary Response (Paper 7), the unredacted version of the
`Declaration filed in support thereof (Exhibit 2001), as well as Exhibits 2003,
`2025, 2026, and 2041, which are cited and discussed in the Preliminary
`Response and Declaration. PO Motion 1–2.
`Patent Owner states that Exhibit 2003 is a document produced by
`Patent Owner, and that Exhibits 2025, 2026, and 2041 are deposition
`transcripts of Patent Owner’s own witness from the parallel ITC
`investigation involving the challenged patent. See PO Motion 1. Patent
`Owner further asserts that the exhibits “were designated [] as ‘Confidential
`Business Information Subject to Protective Order,’ are subject to the
`applicable Protective Order from the parallel litigation,” and contain “highly
`confidential and non-public information concerning business, financial,
`and/or strategy information of Patent Owner.” PO Motion 1–2. Patent
`Owner also asserts that it “guards such information closely and has not
`made, and does not intend to make, this information publicly available.” Id.
`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`§ 42.54. The party moving to seal bears the burden of proof of showing
`entitlement to the requested relief, and establishing that information sought
`
`
`
`2
`
`

`

`
`
`IPR2024-00231
`Patent 10,130,123 B2
`
`to be sealed is confidential information. 37 C.F.R. § 42.20(c). Confidential
`information includes, but is not limited to, trade secret or other confidential
`research, development, or commercial information. 37 C.F.R. § 42.54(7).
`Upon considering the contents of the confidential Exhibits 2001,
`2003, 2025, 2026, and 2041, the Preliminary Response, and the Declaration,
`along with Patent Owner’s representation as to confidentiality of the
`information contained in these papers, we determine that Patent Owner has
`sufficiently shown good cause for sealing these documents.
`II.
`PETITIONER’S MOTION TO SEAL
`Petitioner filed a motion to seal the unredacted version of Petitioner’s
`Reply to Patent Owner’s Preliminary Response (Paper 11) as well as
`Exhibits 1034–1037, which are cited and discussed in the Reply. Pet.
`Motion 1–2.
`Petitioner states that its “Reply cites, describes, and/or quotes
`EX1034–EX1035, which are documents produced by Patent Owner in the
`parallel ITC investigation; EX1036–EX1037, which are deposition
`transcripts from the parallel ITC investigation involving the Challenged
`Patent; and EX2003, which Patent Owner has moved to seal.” Id. Petitioner
`explains that Exhibits 1034–1037 “contain Patent Owner’s confidential
`business information, were designated in the parallel ITC Investigation as
`‘Confidential Business Information Subject to Protective Order,’ are subject
`to the applicable Protective Order from the parallel ITC Investigation” and
`that “Petitioners understand that Patent Owner has not made, and does not
`intend to make, information in the Confidential Exhibits publicly available.”
`Id. at 1–2. Petitioners cite these exhibits to address secondary consideration
`arguments in Patent Owner’s Preliminary Response. Id. at 2.
`
`
`
`3
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`
`
`Upon considering the contents of confidential Exhibits 1034–1037
`and the Reply, along with Petitioner’s representation as to the confidentiality
`of the information contained in these papers, we determine that Petitioner
`has sufficiently shown good cause for sealing these documents. 37 C.F.R.
`§ 42.54
`
`III. PROPOSED PROTECTIVE ORDER
`Patent Owner states, and Petitioner agrees (Pet. Motion 3), that both
`parties request entry of a proposed stipulated Protective Order
`(Exhibit 2101). PO Motion 3. Patent Owner states that modifications to the
`default protective order set forth in the Board’s Trial Practice Guide are
`shown in redline in Exhibit 2100. PO Motion 2–3. The modifications to the
`default protective order include a definition of what constitutes confidential
`information and restrict who has access to the confidential information,
`excluding the named parties, patent owner, and in house counsel. See
`Ex. 2100. The proposed stipulated Protective Order does allow outside
`counsel of record for the parties to have access to the confidential
`information. Id. Patent Owner asserts that the revisions are intended to
`make the proposed stipulated Protective Order consistent with the protective
`order from the parallel ITC investigation, under which the protected
`information was originally produced. PO Motion 2–3.
`Patent Owner has shown sufficiently good cause for the proposed
`modifications from the Board’s default protective order and that entry of the
`proposed stipulated Protective Order is warranted.
`
`
`
`
`
`4
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion to Seal is granted;
`FURTHER ORDERED that Petitioner’s Motion to Seal is granted;
`FURTHER ORDERED that the request for entry of the proposed
`stipulated Protective Order (Exhibit 2101) is granted; and
`FURTHER ORDERED that the Protective Order (Exhibit 2101) shall
`govern the proceeding unless otherwise modified by the Board.
`
`
`
`
`
`5
`
`

`

`
`
`IPR2024-00231
`Patent 10,130,123 B2
`
`FOR PETITIONER:
`Anish R. Desai
`Elizabeth S. Weiswasser
`Adrian C. Percer
`Anne M. Cappella
`Sutton W. Ansley
`Christopher M. Pepe
`Matthew D. Sieger
`Taylor J. Lawrence
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`anne.cappella@weil.com
`sutton.ansley@weil.com
`christopher.pepe@weil.com
`matthew.sieger@weil.com
`taylor.lawrence@weil.com
`
`
`FOR PATENT OWNER:
`James M. Glass
`John T. McKee
`Quincy Lu
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`quincylu@quinnemanuel.com
`
`
`
`6
`
`

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