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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SWM International, LLC and
`
`NexTier Completion Solutions LLC,
`
`Petitioners,
`
`v.
`
`DynaEnergetics Europe GmbH,
`
`Patent Owner.
`
`
`
`Case No. PGR2021-00097
`
`Patent 10,844,697
`
`
`PETITIONER’S MOTION TO SEAL
`FILED WITH PETITION PURSUANT TO 37 C.F.R. § 42.55
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`Case PGR2021-00097
`Patent No. 10,844,697
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`I.
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`Introduction
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`Petitioner SWM International, LLC and Petitioner NexTier Completion
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`Solutions LLC (collectively “Petitioner”) request that Exhibit 1032 be sealed
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`under 37 C.F.R. § 42.55. This document was provided by a third-party to this
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`proceeding—Schlumberger Technology Corporation (“Schlumberger”)—in
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`response to a subpoena in a related district-court matter. As explained below,
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`good cause exists to seal because Schlumberger has designated this document as
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`“Highly Confidential” in the litigation in which it was produced.
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`II. Governing Rules and PTAB Guidance
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`Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
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`inter partes review are open and available for access by the public, but a party may
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`file a concurrent motion to seal and the information at issue is sealed pending the
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`outcome of the motion.
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`In particular, 37 C.F.R. § 42.14 provides:
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`
`
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`The record of a proceeding, including documents and
`things, shall be made available to the public, except as
`otherwise ordered. A party intending a document or thing
`to be sealed shall file a motion to seal concurrent with the
`filing of the document or thing to be sealed. The
`document or thing shall be provisionally sealed on
`receipt of the motion and remain so pending the outcome
`of the decision on the motion.
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`It is, however, only “confidential information” that is protected from
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`disclosure. 35 U.S.C. § 316(a)(7) (“The Director shall prescribe regulations -- . . .
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`providing for protective orders governing the exchange and submission of
`2
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`Case PGR2021-00097
`Patent No. 10,844,697
`confidential information”). In that regard, the Office Trial Practice Guide, 77 Fed.
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`Reg. 48756, 48760 (Aug. 14, 2012) provides:
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`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.
`
`* * *
`
`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.
`§ 42.54.
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`Under 37 C.F.R. § 42.55, a “petitioner filing confidential information with a
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`petition may, concurrent with the filing of the petition, file a motion to seal with a
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`proposed protective order as to the confidential information.”
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`III.
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`Identification of Confidential Information
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`The confidential information identified by third-party Schlumberger consists
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`of information that Schlumberger has indicated is confidential corporate
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`information and documents. This confidential information is contained in Exhibit
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`1032. Petitioner certifies that, to the best of Petitioner’s knowledge, this exact
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`information has not been published or otherwise been made public.
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`IV. Good Cause Exists for Sealing the Confidential Information
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`The Board routinely seals confidential sales information. See, e.g., Prong,
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`Inc. v. Yeoshua Sorias, IPR2015-01317, Paper 32; Cisco Systems, Inc. v.
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`3
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`Case PGR2021-00097
`Patent No. 10,844,697
`Crossroads Systems, Inc., IPR2014-01463, Paper 49. Here, Exhibit 1032
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`includes sales information that Schlumberger has indicated is confidential. In
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`particular, Schlumberger has indicated by email to Petitioner’s counsel that the
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`material in Exhibit 1032 is “confidential and proprietary invoice and
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`communications with a client that is not publicly available and contains
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`competitively sensitive information,” and has also explained that the “redacted
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`information in [Exhibit 1032] includes the identity of the customer and well
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`(which could be used to identify the customer), personal contact information, as
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`well as the pricing information related to the product, all of which is
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`Schlumberger’s Confidential and Proprietary Information and is also not relevant
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`to any issue to be decided in the post grant proceedings.”
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`In view of the above, and as in the Prong and Cisco cases, the Board
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`should seal and keep this information confidential.
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`V.
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`Proposed Protective Order
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`Petitioner requests entry of the Default Protective Order, which is attached
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`to this motion as Appendix A. Because a proposed protective order is included
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`with this motion, this motion also complies with 37 C.F.R. § 42.54(a). Further,
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`pursuant to 37 C.F.R. § 42.54(a), Petitioner certifies that it has conferred in good
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`faith with Schlumberger in an effort to resolve any disputes concerning the
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`documents in question. Schlumberger has thus far declined to change the
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`confidentiality designations for these documents.
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`4
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`VI. Conclusion
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`For the reasons set forth above, Petitioner respectfully requests that the
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`Board enter the Default Protective Order and grant this motion to seal.
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`Case PGR2021-00097
`Patent No. 10,844,697
`
`Date: July 20, 2021
`
`
`
`Respectfully Submitted,
`
`By: /C. Erik Hawes/
`C. Erik Hawes, Reg. No.
`63,328
`
`
`
`5
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`APPENDIX A
`APPENDIX A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SWM International, LLC and
`
`NexTier Completion Solutions LLC,
`
`Petitioners,
`
`v.
`
`DynaEnergetics Europe GmbH,
`
`Patent Owner.
`
`
`
`Case No. PGR2021-00097
`
`Patent 10,844,697
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`DEFAULT PROTECTIVE ORDER
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`Case IPR2021-00097
`Patent No. 10,844,697
`DEFAULT PROTECTIVE ORDER
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`This protective order governs the treatment and filing of confidential information,
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`including documents and testimony.
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`1.
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`Confidential information shall be clearly marked “PROTECTIVE
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`ORDER MATERIAL.”
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`2.
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`Access to confidential information is limited to the following
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`individuals who have executed the acknowledgment appended to this order:
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`(A) Parties. Persons who are owners of a patent involved in the proceeding
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`and other persons who are named parties to the proceeding.
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`(B) Party Representatives. Representatives of record for a party in the
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`proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject matter
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`of the proceeding.
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`(D) In-house counsel. In-house counsel of a party.
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`(E) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to sign an
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`Acknowledgement, but shall be informed of the terms and requirements of the
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`1
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`Case IPR2021-00097
`Patent No. 10,844,697
`Protective Order by the person they are supporting who receives confidential
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`information.
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`(F) The Office. Employees and representatives of the United States Patent
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`and Trademark Office who have a need for access to the confidential information
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`shall have such access without the requirement to sign an Acknowledgement. Such
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`employees and representatives shall include the Director, members of the Board
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`and their clerical staff, other support personnel, court reporters, and other persons
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`acting on behalf of the Office.
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`3.
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`Employees (e.g., corporate officers), consultants, or other persons
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`performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to
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`confidential information only upon agreement of the parties or by order of the
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`Board upon a motion brought by the party seeking to disclose confidential
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`information to that person. The party opposing disclosure to that person shall have
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`the burden of proving that such person should be restricted from access to
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`confidential information.
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`4.
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`Persons receiving confidential information shall use reasonable efforts
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`to maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons not
`
`authorized to receive the information shall not have access;
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`2
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`Case IPR2021-00097
`Patent No. 10,844,697
`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
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`information, which efforts shall be no less rigorous than those the recipient uses to
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`maintain the confidentiality of information not received from the disclosing party;
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`(C) Ensuring that support personnel of the recipient who have access to the
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`confidential information understand and abide by the obligation to maintain the
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`confidentiality of information received that is designated as confidential; and
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`(D) Limiting the copying of confidential information to a reasonable number
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`of copies needed for conduct of the proceeding and maintaining a record of the
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`locations of such copies.
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`5.
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`Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along
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`with a Motion to Seal. The Motion to Seal should provide a non-confidential
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`description of the nature of the confidential information that is under seal, and set
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`forth the reasons why the information is confidential and should not be made
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`available to the public. A party may challenge the confidentiality of the
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`information by opposing the Motion to Seal. The submission shall be treated as
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`confidential and remain under seal, unless the Board determines that the
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`documents or information do not to qualify for confidential treatment. The
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`3
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`Case IPR2021-00097
`Patent No. 10,844,697
`information shall remain under seal unless the Board determines that some or all of
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`the information does not qualify for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file confidential and
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`non-confidential versions of its submission, together with a Motion to Seal the
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`confidential version setting forth the reasons why the information redacted from
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`the non-confidential version is confidential and should not be made available to the
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`public. A party may challenge the confidentiality of the information by opposing
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`the Motion to Seal. The non-confidential version of the submission shall clearly
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`indicate the locations of information that has been redacted. The confidential
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`version of the submission shall be filed under seal. The redacted information shall
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`remain under seal unless the Board determines that some or all of the redacted
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`information does not qualify for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as confidential
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`that are disclosed to another party during discovery or other proceedings before the
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`Board shall be clearly marked as “PROTECTIVE ORDER MATERIAL” and shall
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`be produced in a manner that maintains its confidentiality.
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`6. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential
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`Case IPR2021-00097
`Patent No. 10,844,697
`information must return, or certify the destruction of, all copies of the confidential
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`information to the producing party.
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`5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SWM International, LLC and
`
`NexTier Completion Solutions LLC,
`
`Petitioners,
`
`v.
`
`DynaEnergetics Europe GmbH,
`
`Patent Owner.
`
`
`
`Case No. PGR2021-00097
`
`Patent 10,844,697
`
`Standard Acknowledgment for Access to Protective Order Material
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`I
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`, affirm that I have read the Protective
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`Order; that I will abide by its terms; that I will use the confidential information
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`only in connection with this proceeding and for no other purpose; that I will only
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`allow access to support staff who are reasonably necessary to assist me in this
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`proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree
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`to submit to the jurisdiction of the Office and the United States District Court for
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`the Eastern District of Virginia for purposes of enforcing the terms of the
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`Protective Order and providing remedies for its breach.
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