UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JENNEWEIN BIOTECHNOLOGIE GmbH,
`Petitioner,
`
`v.
`
`GLYCOSYN LLC,
`Patent Owner.
`
`Case PGR2019-00023
`U.S. Patent No. 9,970,018
`
`PATENT OWNER’S MOTION TO SEAL AND TO ENTER STIPULATED
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Glycosyn LLC
`
`(“Glycosyn” or “Patent Owner”) respectfully submits this motion to seal portions of
`
`its Patent Owner Preliminary Response (“Preliminary Response”) and the entirety
`
`of Exhibit 2002 (Excerpts of the December 14, 2018 Deposition Transcript of Dr.
`
`Gregory Stephanopoulos) (“Stephanopoulos Transcript”) which is being filed
`
`concurrently with this Motion. Sealing the material set forth below is required to
`
`maintain confidentiality designations made by Petitioner Jennewein Biotechnologie
`
`GmbH (“Jennewein” or “Petitioner”) during the related ITC proceeding, Certain
`
`Human Milk Oligosaccharides and Methods of Producing the Same, Inv. No. 337-
`
`TA-1120 (U.S.I.T.C.) (the “ITC Investigation”).
`
`Glycosyn further requests entry of the Stipulated Protective Order attached as
`
`Appendix 1, which is based on the Board’s Default Protective Order with minor edits
`
`added to conform the Default Protective Order with the protective order in place at
`
`the ITC. The Stipulated Protective Order with these changes highlighted in blue is
`
`attached as Appendix 2.
`
`The parties have not met and conferred on this Motion. On Friday, April 5,
`
`2019, counsel for Glycosyn contacted Petitioner’s counsel by email and identified
`
`the portions of the Stephanopoulos Transcript that Glycosyn planned to submit with
`
`its Preliminary Response. Glycosyn’s counsel requested that Jennewein de-
`
`1
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`designate the portions of the deposition transcript included in Exhibit 2002 or
`
`identify any Jennewein confidential information that required protection. On
`
`Tuesday, April 9, 2019, counsel for Jennewein replied to state that he was busy with
`
`a trial but that a response would be coming “as soon as possible.” As of the time of
`
`this filing, Glycosyn has not received a response regarding the confidentiality of
`
`Exhibit 2002 but Patent Owner has agreed to the entry of the Stipulated Protective
`
`Order.
`
`II.
`
`LEGAL STANDARD FOR SEALING THE IDENTIFIED
`INFORMATION
`Documents filed in an IPR are generally available to the public. 37 C.F.R. §
`
`42.14. However, the Board may, for good cause, protect confidential information
`
`from public disclosure. 37 C.F.R. § 42.14; see also Garmin Int’l v. Cuozzo Speed
`
`Tech., LLC, IPR2012-00001, Paper 36 at 3-4 (PTAB Apr. 5, 2013). Where possible,
`
`parties should redact sensitive information from their filings, rather than seek to seal
`
`entire documents. Office Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (2012).
`
`When determining good cause, the Board must balance the public’s interest
`
`in a complete and understandable file history with the party’s interest in protecting
`
`sensitive information. See Garmin, IPR2012-00001, Paper 36, 3-4 (citing Office
`
`Trial Practice Guide, 77 Fed. Reg. at 48760). However, the public’s interest in
`
`having access to a party’s confidential business that is only indirectly related to
`
`2
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`patent validity is “minimal.” Id. at 8-9 (granting the patent owner’s motion to seal
`
`an agreement relating to the “commercializ[ation]” of the patent-at- issue).
`
`Glycosyn is submitting excerpts of the Stephanopoulos Transcript (Exhibit
`
`2002) with its Preliminary Response. Glycosyn’s Preliminary Response also
`
`references and includes content from this same deposition transcript. The
`
`Stephanopoulos Deposition excerpts to be sealed were designated as confidential by
`
`the Petitioner during the ITC Investigation pursuant to a protective order, and
`
`Glycosyn’s request is based on the need to respect that designation and maintain the
`
`non-disclosure of information, at least until such time as Petitioner responds to
`
`Glycosyn’s request for de-designation.1 The Preliminary Response also includes
`
`and quotes information from that same exhibit (Exhibit 2002). See e.g., Paper No.
`
`5 at pp. 10-11.
`
`In addition, pursuant to paragraph 5(A)(ii) of the Stipulated Protective Order,
`
`Patent Owner has filed a redacted version of the Preliminary Response (see Paper
`
`1 It is Glycosyn’s position that there is no basis to designate any of the cited
`
`portions of the Stephanopoulos Transcript as confidential under any protective
`
`order, but Glycosyn is filing this motion out of respect for the ITC protective order
`
`and in light of the fact that Glycosyn has not yet received a response from counsel
`
`for Patent Owner to Glycosyn’s April 5 request for de-designation.
`
`3
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`No. 6) in an attempt to minimize the impact on the public’s interest in maintaining a
`
`complete and understandable record.
`
`III. CERTIFICATION OF CONFERENCE PURSUANT TO 37 C.F.R. §
`42.54
`Glycosyn has attempted to confer in good faith with Petitioner regarding the
`
`confidentiality designation attached to Exhibit 2002 to determine if this motion to
`
`seal was necessary. As of the date of this filing, Glycosyn has not received a
`
`substantive response from Petitioner regarding that exhibit. However, the parties
`
`have reached an agreement on the Stipulated Protective Order and Glycosyn
`
`respectfully requests that the Board enter that order in this proceeding.
`
`4
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant this Motion to Seal and to Enter the Stipulated Protective Order.
`
`Dated: April 10, 2019
`
`/Peter J. Cuomo/
`Peter J. Cuomo (Reg. No. 58,481)
`Daniel B. Weinger (Reg. No. 68,836)
`Michael C. Newman
`(pro hac vice to be filed)
`Thomas H. Wintner
`(pro hac vice to be filed)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1854
`Facsimile: 617-542-2241
`E-mail: pjcuomo@mintz.com
`
`5
`
`

`

`Case No. PGR2019-00023
`Patent No. 9,970,018
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of PATENT OWNER’S MOTION TO SEAL AND TO
`
`ENTER PROPOSED PROTECTIVE ORDER is being served by electronic mail
`
`on the following counsel of record:
`
`Lead Counsel
`Bryan Nese (Reg. No. 66,023)
`MAYER BROWN LLP
`1999 K Street, N.W.
`Washington, DC 20006-1101
`Telephone: (202) 263-3266
`Fax: (202) 263-3300
`bnese@mayerbrown.com
`US-CLIENT-
`JenneweinITC@mayerbrown.com
`
`Backup Counsel
`Gary M. Hnath
`MAYER BROWN LLP
`1999 K Street, N.W.
`Washington, DC 20006-1101
`Telephone: (202) 263-3040
`Fax: (202) 263-3300
`ghnath@mayerbrown.com
`
`Scott A. McMurry (Reg. No. 61,152)
`Ying-Zi Yang (Reg. No. 52,381)
`Lana Khoury
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Telephone: (212) 506-2500
`Fax: (212) 849-5656
`smcmurry@mayerbrown.com
`yyang@mayerbrown.com
`lkhoury@mayerbrown.com
`
`Dated: April 10, 2019
`
`/Peter J. Cuomo/
`Peter J. Cuomo (Reg. No. 58,481)
`
`6
`
`

`

`Appendix 1
`Appendix 1
`
`

`

`Stipulated Protective Order
`This stipulated protective order governs the treatment and filing of confidential
`information, including documents and testimony.
`
`Confidential information shall be clearly marked “PROTECTIVE ORDER
`1.
`MATERIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL.”
`
`Access to confidential information marked as “PROTECTIVE ORDER
`2.
`MATERIAL” is limited to the following individuals who have executed the Acknowledgement
`appended to this order:
`
`Parties. Persons who are owners of a patent involved in the proceeding
`(A)
`and other persons who are named parties to the proceeding.
`
`Outside Counsel. Outside Counsel of record for a party in the proceeding
`(B)
`(and they shall have such access without the requirement to sign the Acknowledgement).
`
`Experts. Retained experts of a party in the proceeding who further certify
`(C)
`in the Acknowledgement that they are not a competitor to any party, or a consultant for, or
`employed by, such a competitor with respect to the subject matter of the proceeding.
`
`(D)
`
`In-house counsel. In-house counsel of a party.
`
`Other Employees of a Party. Employees, consultants or other persons
`(E)
`performing work for a party, other than in-house counsel and support staff, who sign the
`Acknowledgement, shall be extended access to confidential information only upon agreement of
`the parties or by order of the Board upon a motion brought by the party seeking to disclose
`confidential information to that person. The party opposing disclosure to that person shall have
`the burden of proving that such person shall be restricted from access to confidential
`information.
`
`The Office. Employees and representatives of the Office who have a need
`(F)
`for access to the confidential information shall have such access without the requirement to sign
`an Acknowledgement. Such employees and representatives shall include the Director, members
`of the Board and their clerical staff, other support personnel, court reporters, and other persons
`acting on behalf of the Office.
`
`Support Personnel. Administrative assistants, clerical staff, court
`(G)
`reporters and other support personnel of the foregoing persons who are reasonably necessary to
`assist those persons in the proceeding shall not be required to sign an Acknowledgement, but
`shall be informed of the terms and requirements of the Protective Order by the person they are
`supporting who receives confidential information.
`
`A party or non-party may designate certain confidential material as “HIGHLY
`3.
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL,” by marking it as such,
`provded that the party or non-party has a good faith basis to believe that such information is
`particularly sensitive and a substantial competitive harm might result if it were made public.
`Access to any material marked as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`MATERIAL” is limited to the following individuals who have executed the Acknowledgement
`appended to this order: outside counsel of record for a party in this IPR Proceeding, and only the
`
`

`

`individuals identified abouve in 2(C), 2(F), and 2(G). Nothing in this Order, or the parties’
`consent thereto, should be construed to supersede or replace any other confidentiality obligations
`held by a disclosing party under a protective order entered by another tribunal including the
`International Trade Commission or any U.S. district court.
`
`Persons receiving confidential information shall use reasonable efforts to maintain
`4.
`the confidentiality of the information, including:
`
`(A) Maintaining such information in a secure location to which persons not
`authorized to receive the information shall not have access;
`
`Otherwise using reasonable efforts to maintain the confidentiality of the
`(B)
`information, which efforts shall be no less rigorous than those the recipient uses to maintain the
`confidentiality of information not received from the disclosing party;
`
`Ensuring that support personnel of the recipient who have access to the
`(C)
`confidential information understand and abide by the obligation to maintain the confidentiality of
`information received that is designated as confidential; and
`
`Limiting the copying of confidential information to a reasonable number
`(D)
`of copies needed for conduct of the proceeding and maintaining a record of the locations of such
`copies.
`
`Persons receiving confidential information shall use the following procedures to
`5.
`maintain the confidentiality of the information:
`
`(A)
`
`Documents and Information Filed With the Board
`
`A party may file documents or information with the Board under
`(i)
`seal, together with a non-confidential description of the nature of the confidential information
`that is under seal and the reasons why the information is confidential and should not be made
`available to the public. The submission shall be treated as confidential and remain under seal,
`unless, upon motion of a party and after a hearing on the issue, or sua sponte, the Board
`determines that the documents or information do not qualify for confidential treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the
`information submitted to the Board, the submitting party shall file confidential and non-
`confidential versions of its submission, together with a Motion to Seal the confidential version
`setting forth the reasons why the information redacted from the non-confidential version is
`confidential and should not be made available to the public. The non-confidential version of the
`submission shall clearly indicate the locations of information that has been redacted. The
`confidential version of the submission shall be filed under seal. The redacted information shall
`remain under seal unless, upon motion of a party and after a hearing on the issue, or sua sponte,
`the Board determines that some or all of the redacted information does not qualify for
`confidential treatment.
`
`Documents and Information Exchanged Among the Parties. Information
`(B)
`designated as confidential that is disclosed to another party during discovery or other
`proceedings before the Board shall be clearly marked as “PROTECTIVE ORDER MATERIAL”
`or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL” and shall be
`produced in a manner that maintains its confidentiality.
`2
`
`

`

`Standard Acknowledgement of Protective Order. The Standard
`(i)
`Acknowledgement of Protective Order form submitted herewith may be used to acknowledge a
`protective order and gain access to information covered by the protective order.
`
`3
`
`

`

`Standard Acknowledgement of Protective Order
`
`I, __________________________ , affirm that I have read the Protective Order; that I will abide
`
`by its terms; that I will use the confidential information only in connection with this proceeding
`
`and for no other purpose; that I will only allow access to support staff who are reasonably
`
`necessary to assist me in this proceeding; that prior to any disclosure to such support staff I
`
`informed or will inform them of the requirements of the Protective Order; that I am personally
`
`responsible for the requirements of the terms of the Protective Order and I agree to submit to the
`
`jurisdiction of the Office and the United States District Court for the Eastern District of Virginia
`
`for purposes of enforcing the terms of the Protective Order and providing remedies for its breach.
`
`Signed by:
`
`Title:
`
`Company:
`
`Date:
`
`4
`
`

`

`Appendix 2
`Appendix 2
`
`

`

`Default Stipulated Protective Order
`This standing stipulated protective order governs the treatment and filing of confidential
`information, including documents and testimony.
`
`Confidential information shall be clearly marked “PROTECTIVE ORDER
`1.
`MATERIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL.”.”
`
`Access to confidential information marked as “PROTECTIVE ORDER
`2.
`MATERIAL” is limited to the following individuals who have executed the Acknowledgement
`appended to this order:
`
`Parties. Persons who are owners of a patent involved in the proceeding
`(A)
`and other persons who are named parties to the proceeding.
`
`Outside Counsel. Outside Counsel Party Representatives.
`(B)
`Representatives of record for a party in the proceeding (and they shall have such access without
`the requirement to sign the Acknowledgement).
`
`Experts. Retained experts of a party in the proceeding who further certify
`(C)
`in the Acknowledgement that they are not a competitor to any party, or a consultant for, or
`employed by, such a competitor with respect to the subject matter of the proceeding.
`
`(D)
`
`In-house counsel. In-house counsel of a party.
`
`Other Employees of a Party. Employees, consultants or other persons
`(E)
`performing work for a party, other than in-house counsel and support staff, who sign the
`Acknowledgement, shall be extended access to confidential information only upon agreement of
`the parties or by order of the Board upon a motion brought by the party seeking to disclose
`confidential information to that person. The party opposing disclosure to that person shall have
`the burden of proving that such person shall be restricted from access to confidential
`information.
`
`The Office. Employees and representatives of the Office who have a need
`(F)
`for access to the confidential information shall have such access without the requirement to sign
`an Acknowledgement. Such employees and representatives shall include the Director, members
`of the Board and their clerical staff, other support personnel, court reporters, and other persons
`acting on behalf of the Office.
`
`Support Personnel. Administrative assistants, clerical staff, court
`(G)
`reporters and other support personnel of the foregoing persons who are reasonably necessary to
`assist those persons in the proceeding shall not be required to sign an Acknowledgement, but
`shall be informed of the terms and requirements of the Protective Order by the person they are
`supporting who receives confidential information.
`
`A party or non-party may designate certain confidential material as “HIGHLY
`3.
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL,” by marking it as such,
`provded that the party or non-party has a good faith basis to believe that such information is
`particularly sensitive and a substantial competitive harm might result if it were made public.
`Access to any material marked as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`MATERIAL” is limited to the following individuals who have executed the Acknowledgement
`
`

`

`appended to this order: outside counsel of record for a party in this IPR Proceeding, and only the
`individuals identified abouve in 2(C), 2(F), and 2(G). Nothing in this Order, or the parties’
`consent thereto, should be construed to supersede or replace any other confidentiality obligations
`held by a disclosing party under a protective order entered by another tribunal including the
`International Trade Commission or any U.S. district court.
`
`Persons receiving confidential information shall use reasonable efforts to maintain
`3.4.
`the confidentiality of the information, including:
`
`(A) Maintaining such information in a secure location to which persons not
`authorized to receive the information shall not have access;
`
`Otherwise using reasonable efforts to maintain the confidentiality of the
`(B)
`information, which efforts shall be no less rigorous than those the recipient uses to maintain the
`confidentiality of information not received from the disclosing party;
`
`Ensuring that support personnel of the recipient who have access to the
`(C)
`confidential information understand and abide by the obligation to maintain the confidentiality of
`information received that is designated as confidential; and
`
`Limiting the copying of confidential information to a reasonable number
`(D)
`of copies needed for conduct of the proceeding and maintaining a record of the locations of such
`copies.
`
`Persons receiving confidential information shall use the following procedures to
`4.5.
`maintain the confidentiality of the information:
`
`(A)
`
`Documents and Information Filed With the Board
`
`A party may file documents or information with the Board under
`(i)
`seal, together with a non-confidential description of the nature of the confidential information
`that is under seal and the reasons why the information is confidential and should not be made
`available to the public. The submission shall be treated as confidential and remain under seal,
`unless, upon motion of a party and after a hearing on the issue, or sua sponte, the Board
`determines that the documents or information do not qualify for confidential treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the
`information submitted to the Board, the submitting party shall file confidential and non-
`confidential versions of its submission, together with a Motion to Seal the confidential version
`setting forth the reasons why the information redacted from the non-confidential version is
`confidential and should not be made available to the public. The non-confidential version of the
`submission shall clearly indicate the locations of information that has been redacted. The
`confidential version of the submission shall be filed under seal. The redacted information shall
`remain under seal unless, upon motion of a party and after a hearing on the issue, or sua sponte,
`the Board determines that some or all of the redacted information does not qualify for
`confidential treatment.
`
`Documents and Information Exchanged Among the Parties. Information
`(B)
`designated as confidential that is disclosed to another party during discovery or other
`proceedings before the Board shall be clearly marked as “PROTECTIVE ORDER MATERIAL”
`
`2
`
`

`

`or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY MATERIAL” and shall be
`produced in a manner that maintains its confidentiality.
`
`Standard Acknowledgement of Protective Order. The Standard
`(i)
`Acknowledgement of Protective Order form submitted herewith may be used to acknowledge a
`protective order and gain access to information covered by the protective order.
`
`3
`
`

`

`Standard Acknowledgement of Protective Order
`
`I, __________________________ , affirm that I have read the Protective Order; that I will abide
`
`by its terms; that I will use the confidential information only in connection with this proceeding
`
`and for no other purpose; that I will only allow access to support staff who are reasonably
`
`necessary to assist me in this proceeding; that prior to any disclosure to such support staff I
`
`informed or will inform them of the requirements of the Protective Order; that I am personally
`
`responsible for the requirements of the terms of the Protective Order and I agree to submit to the
`
`jurisdiction of the Office and the United States District Court for the Eastern District of Virginia
`
`for purposes of enforcing the terms of the Protective Order and providing remedies for its breach.
`
`Signed by:
`
`Title:
`
`Company:
`
`Date:
`
`4
`
`