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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`I.M.L. SLU,
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`Petitioner,
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`v.
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`WAG ACQUISITION, LLC,
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`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`_________________________
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`PETITIONER’S UNOPPOSED MOTION FOR ENTRY OF PROTECTIVE
`ORDER
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the Patent Review Processing System
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`Pursuant to 37 C.F.R. § 42.54, Petitioner I.M.L. SLU respectfully moves for
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`entry of a protective order in the above-captioned case in the form attached as
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`Appendix A. Counsel for Petitioner has conferred with counsel for Patent Owners,
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`and the parties have agreed to entry of this modified version of the Board’s Default
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`Protective Order.
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`I.
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`Good cause exists for entry of a Protective Order
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`The Office Patent Trial Practice Guide provides that “the rules aim to strike a
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`balance between the public’s interest in maintaining a complete and understandable
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`file history and the parties’ interest in protecting truly sensitive information.” 77
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`Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). Under the Board’s Rules, “confidential
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`information [is identified] in a manner consistent with Federal Rule of Civil
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`Procedure 26(c)(1)(G), which provides for protective orders for trade secret or other
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`confidential research, development, or commercial information.” Id. (citing 37
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`C.F.R. § 42.54).
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`The documents covered by the protective order will contain confidential and
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`business-sensitive details of the Petitioner’s organizational structure, business
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`processes, financing, and corporate and legal operations. I.M.L. SLU, a non-public,
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`foreign company, has a strong interest in maintaining the confidentiality of this
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`information. Petitioner will be prejudiced unduly if it were compelled to produce its
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`private, internal documents without protection in order to pursue this petition.
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`Conversely, there is no countervailing interest that would counsel against granting
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`the present motion. Patent Owners do not oppose entry of the modified version of
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`the default protective order. Granting the present motion will have no effect on the
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`public’s interest in “maintaining a complete and understandable file history,” 77 Fed.
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`Reg. at 48,760, since the documents to be protected are not related to questions of
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`the validity of the challenged patent claims, but instead to whether Petitioner may
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`bring the petition.
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`II. Certification of conference with Patent Owners
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`Pursuant to 37 C.F.R. § 42.54, counsel for Petitioner has conferred in good
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`faith with counsel for Patent Owners, and the parties have agreed to entry of the
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`modified version of the Board’s Default Protective Order, attached as Appendix A.
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`III. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`enter the modified version of the Board’s Default Protective Order, attached as
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`Appendix A.
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`Respectfully submitted,
`/s/David R. Yohannan
`David R. Yohannan
`Reg. No. 37,480
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`
`
`Lead Counsel for Petitioner
`KELLEY DRYE & WARREN LLP
`3050 K Street, N.W.
`Washington, DC 20007
`Email: dyohannan@kelleydrye.com
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`Beth D. Jacob (pro hac vice pending)
`KELLEY DRYE & WARREN LLP
`101 Park Avenue
`New York, NY 10178
`Email: bjacob@kelleydrye.com
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`Dated: May 5, 2017
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`APPENDIX A
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`PROPOSED PROTECTIVE ORDER
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`77 Fed. Reg. 48,756, 48,771 (Aug. 14, 2012)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`I.M.L. SLU,
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`Petitioner,
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`v.
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`WAG ACQUISITION, LLC,
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`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`_________________________
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`PROTECTIVE ORDER
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`This standing protective order governs the treatment and filing of confidential
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`information, including documents and testimony.
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`1. Confidential information shall be clearly marked “PROTECTIVE ORDER
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`MATERIAL.”
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` 2. Access to confidential information is limited to the following individuals
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`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 and attorneys or patent agents working for the law firm(s) of those Party
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`Representatives to assist in the proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who further certify
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`in the Acknowledgement that they are not a competitor to any party, or a consultant
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`for, or employed by, such a competitor with respect to the subject matter of the
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`proceeding.
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`(D) In-house counsel. In-house counsel of a party.
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`(E) Other Employees of a Party. Employees, 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 Board
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`upon a motion brought by the party seeking to disclose confidential information to
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`that person. The party opposing disclosure to that person shall have the burden of
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`proving that such person should be restricted from access to confidential
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`information.
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`(F) The Office. Employees and representatives of the Office who have a need
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`for access to the confidential information shall have such access without the
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`requirement to sign an Acknowledgement. Such employees and representatives shall
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`include the Director, members of the Board and their clerical staff, other support
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`personnel, court reporters, and other persons acting on behalf of the Office.
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`(G) 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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`Protective Order by the person they are supporting who receives confidential
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`information.
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`3. Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons not
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`authorized to receive the information shall not have access;
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`(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
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`uses to maintain the confidentiality of information not received from the
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`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
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`the confidentiality of information received that is designated as confidential;
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`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
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`the locations of such copies.
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`4. 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 under seal,
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`together with a non-confidential description of the nature of the confidential
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`information that is under seal and the reasons why the information is confidential
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`and should not be made available to the public. The submission shall be treated as
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`confidential and remain under seal, unless, upon motion of a party and after a hearing
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`on the issue, or sua sponte, the Board determines that the documents or information
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`do not to qualify for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the information
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`submitted to the Board, the submitting party shall file confidential and non-
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`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 the
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`non-confidential version is confidential and should not be made available to the
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`public. The nonconfidential version of the submission shall clearly indicate the
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`locations of information that has been redacted. The confidential version of the
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`submission shall be filed under seal. The redacted information shall remain under
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`seal unless, upon motion of a party and after a hearing on the issue, or sua sponte,
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`the Board determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Information
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`designated as confidential that is disclosed to another party during discovery or other
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`proceedings before the Board shall be clearly marked as “PROTECTIVE ORDER
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`MATERIAL” and shall be produced in a manner that maintains its confidentiality.
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`(j) Standard Acknowledgement of Protective Order. The following form may be
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`used to acknowledge a protective order and gain access to information covered by
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`the protective order:
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`[ACKNOWLEDGMENT FORM ON NEXT PAGE]
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`I.M.L. SLU,
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`
`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`_________________________
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`Acknowledgment for Access to Protective Order Material
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`, 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
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`Order and providing remedies for its breach.
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`Date: ______________________ Signature: __________________________
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`Name: _____________________________
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on May 5, 2017, I
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`caused to be served true and correct copies of the foregoing “PETITIONER’S
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`UNOPPOSED MOTION FOR PROTECTIVE ORDER” by mail and electronic
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`Ronald Abramson
`David G. Liston
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
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`/David R. Yohannan/
`David R. Yohannan
`Reg. No. 37,480
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`Lead Counsel for Petitioner
`KELLEY DRYE & WARREN LLP
`3050 K Street, N.W.
`Washington, DC 20007
`Email: dyohannan@kelleydrye.com
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`mail on the following attorneys:
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`Ernest D. Buff
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
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`Dated: May 5, 2017
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