Trials@uspto.gov
`571-272-7822
`
`Paper 56
`Entered: October 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00917
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Motions to Seal
`37 C.F.R. §§ 42.1 and 42.54
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 56
`Entered: October 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00917
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Motions to Seal
`37 C.F.R. §§ 42.1 and 42.54
`
`
`
`
`
`
`
`
`IPR2015-00917
`Patent 8,710,282 B2
`
`
`Honeywell International, Inc. (“Patent Owner”) filed a motion to seal,
`along with a request for entry of a protective order. Paper 20. Arkema
`France (“Petitioner”) filed four motions to seal. Papers 23, 27, 36, 40. Each
`motion is discussed in detail in turn.
`Discussion
`The Board’s standards for granting motions to seal are discussed in
`Garmin International v. Cuozzo Speed Technologies, LLC, IPR2012-00001
`(PTAB Mar. 14, 2013) (Paper 34). In summary, there is a strong public
`policy for making all information filed in inter partes review proceedings
`open to the public. Id. The standard for granting a motion to seal is “good
`cause.” 35 U.S.C. §§ 316(a)(1), 316(a)(7); 37 C.F.R. §§ 42.14, 42.54. The
`party asserting confidentiality bears the burden of showing that the relief
`requested should be granted. 37 C.F.R. § 42.20(c). This includes showing
`that the information is truly confidential, and thus such confidentiality
`outweighs the strong public interest in having an open record.
`We remind the parties of the expectation that confidential information
`relied upon or identified in a final written decision will be made public. See
`Office Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
`Confidential information that is subject to a protective order ordinarily
`becomes public 45 days after final judgment in a trial. A party seeking to
`maintain the confidentiality of the information may file a motion to expunge
`the information from the record prior to the information becoming public.
`37 C.F.R. § 42.56.
`1.
`Patent Owner’s January 22, 2016 Motion to Seal (Paper 20)
`Patent Owner filed a motion to seal Exhibits 2007–2035, 2039, and
`2042. Paper 20, 1. The motion includes a request to enter the proposed
`
`
`
`2
`
`
`
`IPR2015-00917
`Patent 8,710,282 B2
`
`modified protective order found in Exhibit 2044. Id. Petitioner did not file
`an opposition to Patent Owner’s motion to seal or request to enter the
`modified protective order. See 37 C.F.R. § 42.25(a)(1).
`a.
`Entry of Proposed Protective Order
`
`Patent Owner represents that “[t]he parties have conferred and agree
`to the entry of a protective order in this proceeding.” Paper 20, 1. With its
`motion, Patent Owner submitted a red-lined version of the modified
`protective order showing the changes made to the Board’s default protective
`order. Ex. 2045. The changes include the addition of a “highly
`confidential” designation for “information that is current or future business
`or technical trade secrets, the disclosure of which is likely to significantly
`harm that party’s competitive position, or the disclosure of which would
`contravene an obligation of confidentiality to a third person.” Id. ¶ 2. Patent
`Owner contends that the “proposed order limit[s] distribution of ‘highly
`confidential’ information to recipient’s outside counsel (¶ 5(A)), experts
`(¶ 5(B)), the office (¶ 5(C), and support personnel (¶ 5(D)).” Paper 20, 2.
`According to Patent Owner, this “higher standard is necessary to reflect the
`agreement between the parties relating to persons who can view certain
`confidential information,” such that “[o]ther in-house attorneys and other
`employees of Petitioner, as would be allowed under the more general
`provisions [of] the Board’s default protective order, are not permitted access
`to ‘highly confidential’ information.” Id.
`We grant Patent Owner’s request to enter the modified protective
`order in Exhibit 2044 because the parties agreed on the modification and the
`modification will not inhibit either party from fully prosecuting its case.
`
`
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`3
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`IPR2015-00917
`Patent 8,710,282 B2
`
`
`b. Motion to Seal
`
`Patent Owner moves to seal Exhibits 2007–2035, 2039, and 2042
`(“the Proposed Sealed Documents”). Paper 20, 1. Patent Owner states that
`“[t]he Proposed Sealed Documents contain information that Patent Owner
`maintains is privileged, proprietary, sensitive, and confidential business,
`technical, financial, and/or strategy information.” Id. at 3. The Proposed
`Sealed Documents include information relating to Patent Owner’s testing
`data, internal project permits, monthly research activities, and patent
`drafting, among other things. See id. at 3–4. Patent Owner states that the
`Proposed Sealed Documents “are necessary to demonstrate Patent Owner’s
`ability to antedate the references and the Patent Owner would be prejudiced
`if they were released publically or provided to Petitioner, a competitor in the
`field.” Id. at 5.
`We have considered Patent Owner’s arguments to seal the Proposed
`Sealed Documents, and the information sought to be sealed by Patent
`Owner. We determine that Patent Owner has demonstrated good cause for
`sealing Exhibits 2007–2035, 2039, and 2042 pursuant to the protective order
`entered in this proceeding. See 37 C.F.R. § 42.54.
`The motion to seal will be conditionally granted for the duration of the
`proceeding. If the final written decision in this proceeding substantively
`relies on information in a sealed document, the document will be unsealed
`by an Order of the Board. If any sealed document contains information that
`is not substantively relied on in the final written decision, the sponsoring
`party may file a motion to expunge that document from the official record.
`See 37 C.F.R. § 42.56.
`
`
`
`4
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`IPR2015-00917
`Patent 8,710,282 B2
`
`
`Petitioner’s February 25, 2016 Motion to Seal (Paper 23)
`2.
`Petitioner filed a motion to seal Exhibit 1020, “the unredacted court
`reporter transcript of the conference call held February 24, 2016 between the
`parties and the Board.” Paper 23, 1. Patent Owner did not file an opposition
`to Petitioner’s motion.
`Petitioner states that “[d]uring this conference call, the parties
`discussed the substance of some exhibits Patent Owner previously moved to
`seal (see Paper 20) marked ‘Highly Confidential—Protective Order
`Material’ pursuant to the parties’ agreed Protective Order (Exs. 2044 and
`2045).” Paper 23, 2. Petitioner filed a non-confidential, redacted version of
`the conference call transcript as Exhibit 1019. Id. at 1 n. 1.
`The information Petitioner seeks to seal is related to Patent Owner’s
`confidential information. Petitioner, therefore, is not in the position to
`explain sufficiently why Patent Owner’s information is confidential. That
`Patent Owner’s designated certain information confidential is not enough to
`establish good cause for sealing Exhibit 1020.
`As set forth above, however, we determined that Patent Owner
`demonstrated good cause for sealing Exhibits 2007–2035, 2039, and 2042,
`which includes the exhibits discussed in Exhibit 1020. For the same
`reasons, we determine that good cause also exists to seal Exhibit 1020.
`The motion to seal will be conditionally granted for the duration of the
`proceeding. If the final written decision in this proceeding substantively
`relies on information in a sealed document, the document will be unsealed
`by an Order of the Board. If any sealed document contains information that
`is not substantively relied on in the final written decision, the sponsoring
`
`
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`5
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`IPR2015-00917
`Patent 8,710,282 B2
`
`party may file a motion to expunge that document from the official record.
`See 37 C.F.R. § 42.56.
`3.
`Petitioner’s March 3, 2016 Motion to Seal (Paper 27)
`Petitioner filed a motion to seal portions of its Motion for Additional
`Discovery (Paper 29). Paper 27, 1. Patent Owner did not file an opposition
`to Petitioner’s motion.
`Petitioner states that “[t]he Motion for Additional Discovery discusses
`the substance of some exhibits Patent Owner previously moved to seal (see
`Paper 20) and marked ‘Highly Confidential—Protective Order Material’
`pursuant to the parties’ agreed Protective Order (Exs. 2044 and 2045).”
`Paper 27, 1. Petitioner submitted a non-confidential, redacted version of the
`Motion for Additional Discovery as Paper 28.
`It is Petitioner’s burden to establish why the information sought to be
`placed under seal constitutes confidential information. Petitioner only states
`that the information was designated highly confidential pursuant to the
`protective order and are the subject of a motion to seal filed by Patent
`Owner. Paper 27, 1. This does not satisfy Petitioner’s burden, because
`Petitioner has not presented any explanation as to why portions of the
`Motion for Additional Discovery are confidential and why there is good
`cause for granting the motion.
`However, because we determined that Patent Owner has established
`good cause for sealing Exhibits 2007–2035, 2039, and 2042, which
`encompasses the exhibits discussed in the Motion for Additional Discovery,
`we also determine that good cause exists to seal Paper 29 pursuant to the
`protective order entered in this proceeding.
`
`
`
`6
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`IPR2015-00917
`Patent 8,710,282 B2
`
`
`The motion to seal will be conditionally granted for the duration of the
`proceeding. If the final written decision in this proceeding substantively
`relies on information in a sealed document, the document will be unsealed
`by an Order of the Board. If any sealed document contains information that
`is not substantively relied on in the final written decision, the sponsoring
`party may file a motion to expunge that document from the official record.
`See 37 C.F.R. § 42.56.
`4.
`Petitioner’s April 21, 2016 Motion to Seal (Paper 36)
`Petitioner filed a motion to seal “Exhibit 1023 containing the
`unredacted court reporter transcript of the conference call held April 12,
`2016 between the parties and the Board.” Paper 36, 1. Patent Owner did not
`file an opposition to Petitioner’s motion.
`Petitioner states that the April 12, 2016 conference call was held to
`discuss Petitioner’s request to compel production of an unredacted copy of a
`whitepaper produced by Patent Owner. Paper 36, 2. Petitioner further states
`that the redacted copy of the whitepaper produced by Patent Owner was
`marked “Highly Confidential—Protective Order Material,” and that
`“[d]uring the conference call, Patent Owner discussed the substance of the
`redacted portions of the whitepaper.” Id. Petitioner filed a non-confidential,
`redacted version of the conference call transcript as Exhibit 1022. Id. at 1
`n.1.
`
`It is Petitioner’s burden to establish why the information sought to be
`placed under seal constitutes confidential information. Petitioner only states
`that the information was designated highly confidential pursuant to the
`protective order. Paper 36, 1. This does not satisfy Petitioner’s burden,
`because Petitioner has not presented sufficient explanation as to why
`
`
`
`7
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`IPR2015-00917
`Patent 8,710,282 B2
`
`portions of Exhibit 1023 are confidential and why there is good cause for
`granting the motion. Moreover, the information Petitioner seeks to seal is
`related to Patent Owner’s confidential information. Petitioner, therefore, is
`not in the position to explain sufficiently why Patent Owner’s information is
`confidential.
`We therefore determine that Petitioner has not demonstrated good
`cause to seal Exhibit 1023, and deny Petitioner’s motion to seal that exhibit.
`A party may file a renewed motion to seal within 14 days of this Decision
`explaining why the information truly is confidential. Exhibit 1023 will
`remain under provisional seal until consideration of any such motion.
`5.
`Petitioner’s May 6, 2016 Motion to Seal (Paper 40)
`Petitioner filed a motion to seal its Reply (Paper 38) and Exhibits
`1024, 1025, 1032, 1033, 1036, and 1037. Paper 40, 1. Patent Owner did not
`file an opposition to Petitioner’s motion.
`Petitioner states that Exhibits 1024 and 1025, the unredacted
`transcripts of the deposition of Dr. Robert D. Lousenberg, include questions
`“regarding the substance of exhibits Patent Owner previously moved to seal
`(see Paper 20) and marked as ‘Highly Confidential—Protective Order
`Material’ pursuant to the parties’ agreed Protective Order (Ex. 2044 and
`2045).” Paper 40, 2. Petitioner filed non-confidential, redacted versions of
`the Lousenberg deposition transcript as Exhibits 1026 and 1027. Id. at 2 n.2.
`Petitioner states that “to the extent that the Board grants Patent Owner’s
`motion to seal, the Board should also grant Petitioner’s motion to seal
`portions of the transcript that discuss the substance of those sealed exhibit.”
`Id. at 2.
`
`
`
`8
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`IPR2015-00917
`Patent 8,710,282 B2
`
`
`With respect to Exhibits 1032, 1033, and 1037, Petitioner states that
`“Patent Owner previously filed as Exhibit 2042 a document similar to
`Exhibits 1037 entitled ‘Meeting Minutes from PC Meeting held July 12,
`2010,’ which Patent Owner marked as ‘Highly Confidential—Protective
`Order Material’ and moved to seal.” Paper 40, 3. Because Exhibits 1032,
`1033, and 1037 are PC meeting minutes similar to those in Exhibit 2042,
`Petitioner states that “[t]o the extent that the Board grants Patent Owner’s
`motion to seal Exhibit 2042, Exhibits 1032, 1033, and 1037 should also be
`sealed.” Id.
`Petitioner states that “Exhibit 1036 is a copy of provisional
`application no. 61/392,242 with highlighting added to designate whether the
`contend originally appeared in various other documents,” including “the
`invention disclosure filed by Patent Owner as Exhibit 2029, the detailed
`disclosure filed by Patent Owner as Exhibit 2030, and the priority patent
`application no. 13/195,429 (Ex. 1014).” Paper 40, 3–4. Petitioner states that
`Patent Owner marked Exhibits 2029 and 2030 as highly confidential
`pursuant to the protective order, and also moved to seal Exhibits 2029 and
`2030. Id. at 4. Thus, Petitioner requests that, should the Board grant Patent
`Owner’s motion to seal Exhibits 2029 and 2030, “Exhibit 1036 should also
`be sealed.” Id.
`With respect to its Reply (Paper 38), Petitioner states that it discusses
`the substance of Exhibits 1024, 1025, 1032, 1033, 1036, and 1037, “as well
`as the substance of other exhibits Patent Owner has previously moved to
`seal.” Paper 40, 4. Petitioner filed a non-confidential, redacted version of
`its Reply as Paper 39.
`
`
`
`9
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`
`
`IPR2015-00917
`Patent 8,710,282 B2
`
`
`The information Petitioner seeks to seal is related to Patent Owner’s
`confidential information. However, because we determined that Patent
`Owner has established good cause for sealing Exhibits 2007–2035, 2039,
`and 2042, we also determine that good cause exists to seal Exhibits 1024,
`1025, 1032, 1033, 1036, and 1037 and Petitioner’s Reply (Paper 38)
`pursuant to the protective order entered in this proceeding.
`The motion to seal will be conditionally granted for the duration of the
`proceeding. If the final written decision in this proceeding substantively
`relies on information in a sealed document, the document will be unsealed
`by an Order of the Board. If any sealed document contains information that
`is not substantively relied on in the final written decision, the sponsoring
`party may file a motion to expunge that document from the official record.
`See 37 C.F.R. § 42.56.
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that the Proposed Modified Protective Order (Ex. 2044) is
`hereby entered and shall govern the conduct of this proceeding unless
`otherwise modified;
`FURTHER ORDERED that Patent Owner’s January 22, 2016 Motion
`to Seal (Paper 20) is conditionally granted;
`FURTHER ORDERED that Petitioner’s February 25, 2015 Motion to
`Seal (Paper 23) is conditionally granted;
`FURTHER ORDERED that Petitioner’s March 3, 2016 Motion to
`Seal (Paper 27) is conditionally granted;
`FURTHER ORDERED that Petitioner’s April 21, 2015 Motion to
`Seal (Paper 36) is denied without prejudice;
`
`
`
`10
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`IPR2015-00917
`Patent 8,710,282 B2
`
`
`FURTHER ORDERED that either or both parties are authorized to
`file a renewed motion to seal for Exhibit 1022 within 14 days of the entry of
`this Order;
`FURTHER ORDERED that Petitioner’s May 6, 2016 Motion to Seal
`(Paper 40) is conditionally granted; and
`FURTHER ORDERED that the following documents shall be sealed
`as “Board and Parties Only,” and will be kept under seal unless and until we
`refer to material in the papers or exhibits in a final written decision:
`Exhibits 1020, 1024, 1025, 1032, 1033, 1036, 1037, 2007–2035, 2039, and
`2042, and Papers 29 and 38.
`
`PETITIONER:
`
`Jon Beaupré
`Allen R. Baum
`Allyn B. Elliott
`Joshua E. Ney
`Richard K. DeMille
`BRINKS GILSON & LIONE
`jbeaupre@brinksgilson.com
`Arkema_HoneywellIPRs@brinksgilson.com
`
`
`
`PATENT OWNER:
`
`Bruce J. Rose
`Christopher TL Douglas
`S. Benjamin Pleune
`ALSTON & BIRD LLP
`bruce.rose@alston.com
`chris.douglas@alston.com
`ben.pleune@alston.com
`
`
`
`
`
`11
`
`
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