Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 27
`Entered: September 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`GREENE’S ENERGY GROUP, LLC, INC.
`Petitioner
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`v.
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`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner
`_______________
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`_______________
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`
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`SCOTT E. KAMHOLZ, Administrative Patent Judge.
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`
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`DECISION
`On Patent Owner’s Motion to Seal
`37 C.F.R. § 42.5
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`Tel: 571-272-7822
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`Paper 27
`Entered: September 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`GREENE’S ENERGY GROUP, LLC, INC.
`Petitioner
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner
`_______________
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`_______________
`
`
`
`SCOTT E. KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`DECISION
`On Patent Owner’s Motion to Seal
`37 C.F.R. § 42.5
`
`
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`
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`
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`Patent Owner filed a motion to seal certain evidence. Paper 22
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`(“Mot.”). Patent Owner offers the evidence sought to be sealed in support of
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`its Motion to Amend. Id. at 2. In its motion, Patent Owner also proposes
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`the entry of a protective order (Exhibit 2032) that differs from the default
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`protective order in that it seeks to create a special class of confidential
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`information marked “PROTECTIVE ORDER MATERIAL—
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`ATTORNEY’S EYES ONLY.”1 Id. With regard to the opposing party,
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`the “Attorney’s Eyes Only” information would be made available only to the
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`opposing party’s outside counsel and experts, not to the opposing party
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`itself, party representatives other than outside counsel, in-house counsel, or
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`other employees or consultants of the opposing party. Ex. 2033, 3-5. The
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`“Attorney’s Eyes Only” information would also be made available to certain
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`employees and representatives of the U.S. Patent and Trademark Office, and
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`to certain support personnel. Id. at 4-5. Petitioner does not contest Patent
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`Owner’s designation of information as confidential information, but argues
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`that any such information should be subject to the standard protections of the
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`default protective order only, not to the heightened protections Patent Owner
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`proposes for the “Attorney’s Eyes Only” information. Paper 26 (“Opp.”), 1.
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`Patent Owner has designated as “confidential information” subject to
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`standard protections portions of its Motion to Amend (Paper 23) and
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`portions of the declaration of Thomas W. Britven with attachments (Exhibit
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`2018), Mot. 7-8. Patent Owner has submitted a redacted version of
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`Exhibit 2018 (also numbered 2018), as well as a redacted version of the
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`1 A mark-up comparison between the proposed protective order and the
`default protective order was filed as Exhibit 2033.
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` 2
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`Motion to Amend (as Paper 21). Patent Owner argues that good cause exists
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`to seal the material redacted, because it contains “confidential financial
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`information.” Mot. 7-8. Petitioner does not contest Patent Owner’s request
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`to maintain the material redacted from Exhibit 2018, and its attachments, as
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`confidential information. Paper 26 (“Opp.”) 1.
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`Patent Owner also has submitted four exhibits with the “Attorney’s
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`Eyes Only” designation: Exhibits 2024 and 2025, which are described as
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`containing Patent Owner’s sales data for certain products, Exhibit 2026,
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`which is described as containing Patent Owner’s tool count data, and Exhibit
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`2027, which is described as containing yearly financial data. Paper 25, 3
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`(Patent Owner’s list of exhibits as of Aug. 28, 2014). Patent Owner
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`contends that these exhibits contain “highly confidential financial
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`information” (Mot. 10), disclosure of which to Petitioner’s in-house counsel
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`and employees would cause “significant harm” to Patent Owner. Mot. 5.
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`Patent Owner represents that the “highly confidential” information presented
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`in Exhibits 2024-2027 has been presented in “aggregate” and “summarized”
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`form in certain attachments to Exhibit 2018. Id. at 8-9. The relevant
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`attachments to Exhibit 2018 have been submitted as “confidential
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`information” but not with the “Attorney’s Eyes Only” designation. Id. at
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`7-8. Patent Owner represents that the information in Exhibits 2024-2027 is
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`of a type that has been made available to Petitioner only under similar
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`“Attorney’s Eyes Only” conditions in related district court litigation.
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`Mot. 5.
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`Petitioner does not contest Patent Owner’s designation of the contents
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`of Exhibits 2024-2027 as confidential information, but it argues that this
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`material should be subject to the standard protections only, not to the
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`heightened protections Patent Owner proposes for the “Attorney’s Eyes
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`Only” information. Opp. 1. Petitioner represents that its in-house counsel is
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`not involved in competitive decision-making and is not in a position to harm
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`Patent Owner by having access to the information in question. Opp. 3.
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`Petitioner argues that its in-house counsel must have access to the
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`“Attorney’s Eyes Only” information in order to formulate its opposition to
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`Patent Owner’s Motion to Amend. Id. at 3-4.
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`The record for an inter partes review shall be made available to the
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`public, except as otherwise ordered, and a document filed with a motion to
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`seal shall be treated as sealed until the motion is decided. 35 U.S.C. §
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`316(a)(1); 37 C.F.R. § 42.14. The standard for granting a motion to seal is
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`“good cause.” 37 C.F.R. § 42.54. There is a strong public policy that favors
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`making information filed in inter partes review proceedings open to the
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`public. See Garmin International v. Cuozzo Speed Technologies, LLC, Case
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`IPR2012-00001, slip op. at 1-2 (PTAB March 14, 2013) (Paper 34)
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`(discussing the standards of the Board applied to motions to seal). Id. at 1-2.
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`The moving party bears the burden of showing that the relief requested
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`should be granted. 37 C.F.R. § 42.20(c). That includes showing that the
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`information is truly confidential, and that such confidentiality outweighs the
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`strong public interest in having an open record. In addition, a motion to seal
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`is required to include a certification that the moving party has, in good faith,
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`conferred, or attempted to confer, with the opposing party in an effort to
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`come to an agreement on the scope of the protection sought. See Garmin,
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` 4
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`Paper 34 at 3.
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`Upon consideration of the parties’ arguments, the proposed protective
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`order, and the information sought to be redacted, Patent Owner’s motion is
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`granted.
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`Petitioner does not contest Patent Owner’s request to treat portions of
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`Exhibit 2018 and its attachments as confidential information subject to the
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`standard protections of the default protective order. Patent Owner has
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`shown that the material sought to be redacted is, or at least appears on its
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`face to be, confidential financial information. Patent Owner’s proposed
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`redactions are reasonable and are limited strictly to isolated passages
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`consisting entirely of confidential information, such that the thrust of the
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`underlying argument or evidence is clearly discernable from the redacted
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`versions.
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`As to Exhibits 2024-2027, Patent Owner bears the burden of
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`establishing its entitlement to the relief it requests, i.e., heightened
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`restrictions on access. See 37 C.F.R. § 42.20(c).
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`The purpose of a protective order is to prevent inadvertent
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`compromise of confidential information. In re Deutsche Bank Trust Co.
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`Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). Access to confidential
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`information by in-house counsel cannot be denied simply on the basis of
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`counsel’s in-house status. U.S. Steel Corp. v. United States, 730 F.2d 1465,
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`1469 (Fed. Cir. 1984). A party’s legitimate interest in ensuring that its
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`information be protected should be weighed against the opposing party’s
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`interest in obtaining access to the information by its in-house counsel.
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`Autotech Technologies Ltd. P’ship v. Automationdirect.com, Inc., 237
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`F.R.D. 405, 408 (N.D. Ill. 2006). This balancing requires a “careful and
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`comprehensive inquiry” into the actual role in-house counsel plays in the
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`company’s business. Id.
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`The parties have provided little evidence to illuminate the role that
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`Petitioner’s in-house counsel plays in Petitioner’s business. Patent Owner
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`offers no credible evidence as to which particular lawyers or other
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`employees of Petitioner are to be excluded from access to the information in
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`Exhibits 2024-2027. In response, Petitioner offers nothing but an
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`unsubstantiated representation that in-house counsel is not involved in
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`competitive decision-making. Thus other factors must be considered in
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`reaching a determination.
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`No reason has been raised to doubt either Patent Owner’s assertion
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`that the information in Exhibits 2024-2027 is of a particularly sensitive
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`nature, or Petitioner’s assertion that its in-house counsel is not engaged in
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`“competitive decision-making” for Petitioner.2 Patent Owner acknowledges
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`the risk it runs that the information in Exhibits 2024-2027 will be made
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`public if relied upon in the final written decision for this proceeding. See
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`Mot. 11. Also, the information in question is relied upon by Patent Owner
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`only to the extent it provides the factual basis for some of the conclusions
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`reached by Mr. Britven. Under the proposed protective order, Petitioner
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`would be able to conduct cross-examination of Mr. Britven with outside
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`counsel, and it also would be able to retain an expert who would also have
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`2 “Competitive decision-making” has been defined as “[S]horthand for a
`counsel's activities, association, and relationship with a client that are such
`as to involve counsel's advice and participation in any or all of the client's
`decisions (pricing, product design, etc.) made in light of similar or
`corresponding information about a competitor. Deutsche Bank, 605 F.3d at
`1378 (citing U.S. Steel, 730 F.2d at 1468 n.3.)
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` 6
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`access to the information in Exhibits 2024-2027 in order to address Mr.
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`Britven’s declaration.
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`Under the particular circumstances of the case, identified above,
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`Patent Owner’s interest in avoiding inadvertent disclosure of the information
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`outweighs Petitioner’s need to have its in-house counsel review it. Patent
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`Owner has put this information into hazard and accepts the risk of its
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`publication if relied upon in the final written decision. Petitioner will have a
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`full opportunity to make use of the information in the same manner as has
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`Patent Owner during this proceeding: as factual basis for an expert
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`declaration. Especially in view of the particular sensitivity of the
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`information and its limited role in this proceeding, Patent Owner has
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`demonstrated its entitlement to the proposed protective order.
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`The designation of Exhibits 2024-2027 as “Attorney’s Eyes Only” is
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`approved. The parties must obtain authorization from the Board before
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`designating any other papers or exhibits “Attorney’s Eyes Only” during this
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`proceeding.
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`Accordingly, it is hereby
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`ORDERED that Patent Owner’s Motion to Seal is granted ;
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`FURTHER ORDERED that the proposed protective order, submitted
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`as Exhibit 2032, is entered, and governs the treatment and filing of
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`confidential information in this proceeding;
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`FURTHER ORDERED that Patent Owner’s designation of Exhibits
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`2024-2027 as “Attorney’s Eyes Only” is approved; and
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`FURTHER ORDERED that the parties must obtain authorization
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`from the Board before designating any other papers or exhibits “Attorney’s
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`Eyes Only” during this proceeding.
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` 7
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`For PETITIONERS:
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`John Feldhaus
`Andrew Cheslock
`FOLEY & LARDNER LLP
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`For PATENT OWNER:
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`C. Erik Hawes
`Archis V. Ozarkar
`MORGAN, LEWIS & BOCKIUS LLP
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` 8
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