Filed on behalf of: Gold Standard Instruments, LLC Paper ____
`
`
`
`
` Date filed: January 27, 2016
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`C. Nichole Gifford, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
` ebrenner@rothwellfigg.com
` slieberman@rothwellfigg.com
` jnolan@rothwellfigg.com
` ddahlgren@rothwellfigg.com
` ngifford@rothwellfigg.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`
`
`
`
` Date filed: January 27, 2016
`
`By:
`Joseph A. Hynds, Lead Counsel
`R. Elizabeth Brenner-Leifer, Back-up Counsel
`Steven Lieberman, Back-up Counsel
`Jason M. Nolan, Back-up Counsel
`Derek F. Dahlgren, Back-up Counsel
`C. Nichole Gifford, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: jhynds@rothwellfigg.com
` ebrenner@rothwellfigg.com
` slieberman@rothwellfigg.com
` jnolan@rothwellfigg.com
` ddahlgren@rothwellfigg.com
` ngifford@rothwellfigg.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Gold Standard
`
`Instruments, LLC (“Patent Owner”) respectfully submits this Motion to Seal the
`
`confidential, unredacted Deposition Transcript of Neill H. Luebke, D.D.S., M.S.
`
`(“Luebke transcript”), which is being filed concurrently with this Motion as
`
`Exhibit 2046. Patent Owner is also filing a non-confidential, redacted version of
`
`the same transcript as Exhibit 2045. Finally, Patent Owner moves for the entrance
`
`of the Board’s Default Standing Protective Order in this proceeding. Petitioner
`
`does not oppose the motion to seal and agrees to the use of the Board’s Default
`
`Standing Protective Order.
`
`I.
`
`Background
`
`Dr. Neill H. Luebke is the named inventor of U.S. Patent No. 8,727,773 and
`
`President of Gold Standard Instruments, LLC, the Patent Owner and licensor to
`
`Patent Owner’s exclusive licensees and real parties in interest, Dentsply
`
`International Inc. and Tulsa Dental Products d/b/a Tulsa Dental Specialties
`
`(collectively “Dentsply”). On November 4, 2015, Patent Owner submitted a
`
`Declaration of Neill H. Luebke, D.D.S., M.S. (Ex. 2027) in support of its Patent
`
`Owner Response (Paper 44). Petitioner cross-examined Dr. Luebke in a deposition
`
`2
`
`
`
`on December 9, 2015. During the cross-examination deposition, counsel for
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Petitioner asked questions pertaining to specific amounts actually paid under the
`
`license between Patent Owner and Dentsply, implicating both specific dollar
`
`amounts paid to Patent Owner, as well as the identity of products falling under that
`
`license and the sales volume of those various products. At that time, Patent Owner
`
`designated the transcript confidential. Patent Owner subsequently provided a
`
`redacted version of the Luebke transcript to Petitioner, who does not oppose this
`
`Motion.
`
`II. Patent Owner Asserts That Good Cause Exists For Sealing
`Certain Confidential Information
`
`
`Patent Owner submits that Exhibit 2046 contains Protective Order Material.
`
`Specifically, Patent Owner asserts that the document contains sales, financial and
`
`licensing information that is confidential to Patent Owner and its exclusive
`
`licensees. Such confidential information should not be made available to the
`
`public, including competitors of Dentsply. Accordingly, Patent Owner asks that
`
`Exhibit 2046 be sealed and that only the redacted version, Exhibit 2045, be made
`
`publicly available. Patent Owner certifies that it is not aware of the subject matter
`
`that it seeks to keep confidential having ever been made public and that efforts
`
`have been undertaken by the appropriate parties to maintain the confidentiality of
`
`3
`
`
`
`the subject matter. The narrowly redacted testimony is on only a small number of
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`lines located on pages 18-22 of the transcript (Exhibit 2045).
`
`III. Certification of Conference
`
`Pursuant to 37 C.F.R. § 42.54(a), Patent Owner hereby certifies that it has
`
`conferred in good faith with Petitioner as to the scope of the protection sought.
`
`Petitioner does not oppose Patent Owner’s filing of this Motion to Seal. Further,
`
`Patent Owner certifies that the parties have agreed to be bound by the terms of the
`
`Default Standing Protective Order attached herewith as Appendix A.
`
`IV. Default Standing Protection Order
`
`The parties agree to the terms of the Default Standing Protective Order
`
`attached herewith as Appendix A. Accordingly, Patent Owner respectfully
`
`requests entry of the Default Standing Protective Order.
`
`V. Conclusion
`
`For the above reasons, Patent Owner respectfully requests that Exhibit 2046
`
`be placed under seal and that only the redacted version, Exhibit 2045, be made
`
`publicly available. Patent Owner further requests that this proceeding be governed
`
`by the terms of the Default Standing Protective Order.
`
`4
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Joseph A. Hynds /
`By:
`
`Date: January 27, 2016
`Joseph A. Hynds, Reg. No. 34,627
`
`
`
`
`
`ROTHWELL, FIGG, ERNST &
`
`
`
`
`
`
` MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Counsel for Patent Owner
`Gold Standard Instruments, LLC
`
`5
`
`
`
`APPENDIX A
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`
`
`PROTECTIVE ORDER
`
`This Protective Order governs the treatment and filing of confidential
`
`information, including documents and testimony.
`
`1. Confidential information shall be clearly marked “PROTECTIVE
`
`ORDER MATERIAL.”
`
`2. Access to confidential information is limited to the following individuals
`
`who have executed the Acknowledgment appended to this order:
`
`(A) Parties. Persons who are owners of a patent involved in the proceeding
`
`and other persons who are named parties to the proceeding.
`
`
`
`(B) Party Representatives. Representatives of record for a party in the
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`proceeding.
`
`(C) Experts. Retained experts of a party in the proceeding who further
`
`certify 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.
`
`(E) Other Employees of a Party. Employees, consultants or other persons
`
`performing work for a party, other than in-house counsel and in-house counsel’s
`
`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 should be restricted from access to
`
`confidential information.
`
`(F) The Office. Employees and representatives of the Office who have a need
`
`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.
`
`2
`
`
`
`(G) Support Personnel. Administrative assistants, clerical staff, court
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`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.
`
`3. Persons receiving confidential information shall use reasonable efforts to
`
`maintain 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;
`
`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
`
`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;
`
`(C) Ensuring that support personnel of the recipient who have access to the
`
`confidential information understand and abide by the obligation to maintain the
`
`confidentiality of information received that is designated as confidential; and
`
`(D) Limiting the copying of confidential information to a reasonable number
`
`of copies needed for conduct of the proceeding and maintaining a record of the
`
`locations of such copies.
`
`3
`
`
`
`4. Persons receiving confidential information shall use the following
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`procedures to maintain the confidentiality of the information:
`
`(A) Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board under 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 to 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,
`
`4
`
`
`
`the Board determines that some or all of the redacted information does not qualify
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`for confidential treatment.
`
`(B) Documents and Information Exchanged Among the Parties. Information
`
`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” and shall be produced in a manner that maintains its
`
`confidentiality.
`
`(C) Standard Acknowledgement of Protective Order. The following form
`
`may be used to acknowledge this Protective Order and gain access to information
`
`covered by the Protective Order:
`
`
`
`
`
`5
`
`
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`_______________
`
`
`
`Standard Acknowledgment for Access to Protective Order Material
`
` ___________________, affirm that I have read the Protective Order; that I
`
` 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
`
`6
`
`
`
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`Order and providing remedies for its breach.
`
`
`
`Signed ____________________________
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 27th day of January 2016, a true and correct
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`
`
`copy of the foregoing PATENT OWNER’S MOTION TO SEAL was served, via
`
`electronic mail upon the following counsel for Petitioner US Endodontics, LLC:
`
`
`
`Jeffrey S. Ginsberg, Esq.
`Abhishek Bapna, Esq.
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Phone: 212-336-2630
`Facsimile: 212-336-1270
`Emails: jginsberg@pbwt.com
`abapna@pbwt.com
`
`
`
`/ Erik van Leeuwen /
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
