UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
`
`PATENT OWNER’S MOTION TO SEAL
`
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
`
`PATENT OWNER’S MOTION TO SEAL
`
`
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`TABLE OF CONTENTS
`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`REASONS FOR THE REQUESTED RELIEF AND STATEMENT
`OF FACTS ....................................................................................................... 2
`A. Good Cause Exists for Sealing Confidential Information .................... 2
`B.
`Ex. 2026: Deposition Transcript from Co-Pending Litigation ............. 2
`C.
`Sur-Reply ............................................................................................... 3
`III. CERTIFICATION OF NON-PUBLICATION ............................................... 3
`IV. CONCLUSION ................................................................................................ 3
`
`
`i
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`I.
`
`INTRODUCTION
`At Petitioner’s (Intuitive) request, Patent Owner (Ethicon) moves to seal
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`portions of Exhibit 2026 pursuant to 37 C.F.R. §§ 42.14 and 42.54. Petitioner has
`
`also requested that certain portions of Patent Owner’s Sur-Reply that rely on Ex.
`
`2026 be sealed. Patent Owner is not in a position to provide a basis for sealing Ex.
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`2026 or Patent Owner’s Sur-Reply.1 See 37 C.F.R. § 42.14 (providing for
`
`provisional sealing).
`
`By agreement of the parties, Patent Owner also requests entry of the
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`Proposed Protective Order (Attachment 1).2 Patent Owner has conferred with
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`Petitioner, and the parties have stipulated to the Proposed Protective Order.
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`
`
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`1 Petitioner is in the best position to explain why it believes the documents are and
`
`should remain confidential. RPX Corp. v. Applications in Internet Time, LLC,
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`IPR2015-01750, Paper 42 at 2 (P.T.A.B. January 26, 2016) (clarifying who should
`
`move to seal).
`
`2 Attachment 2 is a redline showing the differences between the proposed
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`protective order and the PTAB default protective order.
`
`
`
`1
`
`
`
`
`
`II. REASONS FOR THE REQUESTED RELIEF AND STATEMENT OF
`FACTS
`A. Good Cause Exists for Sealing Confidential Information
`The Board will seal documents for good cause. See 37 C.F.R. § 42.54(a);
`
`see also Argentum Pharms. LLC v. Alcon Research, Ltd., Paper 27, 2 (2013). “The
`
`rules aim to strike a balance between the public’s interest in maintaining a
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`complete and understandable file history and the parties’ interest in protecting truly
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`sensitive information.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48760 (2012). The public’s interest in having access to confidential business
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`information that is only indirectly related to patentability is “minimal.” Garmin v.
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`Cuozzo, IPR2012-00001, Paper 36, 8-9 (2013) (granting a motion to seal an
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`agreement relating to the “commercializ[ation]” of the patent-at-issue). Such
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`documents should be subject to the Proposed Protective Order. See Attachment at
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`5 (“Information designated as confidential that is disclosed to another party during
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`discovery or other proceedings before the Board shall be clearly marked as
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`“PROTECTIVE ORDER MATERIAL” and shall be produced in a manner that
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`maintains its confidentiality.”).
`
`B.
`Ex. 2026: Deposition Transcript from Co-Pending Litigation
`Exhibit 2026 includes excerpts of deposition testimony from the co-pending
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`litigation between Patent Owner and Petitioner. As noted above, Patent Owner is
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`not in a position to make the necessary representations about why Ex. 2026 may
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`2
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`
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`warrant sealing. At Petitioner’s request, however, Patent Owner has filed Ex. 2026
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`under seal.
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`Sur-Reply
`C.
`Patent Owner’s sur-reply refers to Ex. 2026. Again, Patent Owner is not in a
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`position to make the necessary representations about why discussion of Ex. 2026
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`might warrant sealing portions of Patent Owner’s sur-reply. At Petitioner’s
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`request, however, Patent Owner has filed these documents under seal. Public,
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`redacted versions of these documents have also been filed by Patent Owner.
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`III. CERTIFICATION OF NON-PUBLICATION
`As noted above, Patent Owner is not in a position to make the necessary
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`representations about Ex. 2026 or the portions of Patent Owner’s sur-reply that
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`refer to it. Any certification regarding Ex. 2026 and the sur-reply references to Ex.
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`2026 will need to be provided by Petitioner in any supplemental motion to seal that
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`Petitioner may file.
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`IV. CONCLUSION
`Patent Owner respectfully requests that the Board grants its motion to seal
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`Ex. 2026 and Patent Owner’s sur-reply, which references Ex. 2026, with the
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`understanding that Petitioner may file a supplemental motion demonstrating that
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`this information warrants sealing. If the Board is not inclined to grant the motion
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`to seal due to some deficiency in this motion, Patent Owner respectfully requests
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`leave to file another motion to seal to correct that deficiency.
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`3
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`Dated: August 19, 2019
`
`Respectfully submitted,
`
`
`
`/Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`E: anish.desai@weil.com
`
`Counsel for Patent Owner
`
`
`
`
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`4
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`
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`CERTIFICATE OF SERVICE
`I hereby certify that on August 19, 2019, a copy of PATENT OWNER’S
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`MOTION TO SEAL and any accompanying exhibits were served by filing the
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`documents through the PTAB’s E2E Filing System as well as delivering a copy via
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`electronic mail upon the following:
`
`
`
`John C. Phillips
`Ryan P. O’Connor
`Steven R. Katz
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`phillips@fr.com
`oconnor@fr.com
`katz@fr.com
`
`IPR11030-0049IPA@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`/Emily P. Davis/
`Emily P. Davis
`Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7000
`E: emily.davis@weil.com
`
`
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`ATTACHMENT 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
`
`
`STIPULATED PROTECTIVE ORDER
`
`
`
`
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`
`
`IPR2018-01254
`Patent 8,479,969
`
`
`
`The parties have reached an agreement regarding the terms of a Protective
`
`Order that shall govern the treatment of confidential information submitted during
`
`the above captioned matter. The terms of the stipulated Protective Order are set
`
`forth below:
`
`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) Party Representatives. Attorneys of record for a party in the
`
`proceeding.
`
`(B) 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. The subject matter of
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`this proceeding is surgical staplers.
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`(C) In-house counsel. One in-house counsel of each party who has
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`been approved to access confidential material in Ethicon LLC v.
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`Intuitive Surgical Inc., Case No. 17-871 (LPS) (CJB) (D. Delaware).
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`(D) The Office. Employees and representatives of the Office who have
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`a need for access to the confidential information shall have such
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`IPR2018-01254
`Patent 8,479,969
`
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`access without the requirement to sign an Acknowledgement. Such
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`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.
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`(E) Support Personnel. Administrative assistants, clerical staff, court
`
`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
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`person they are supporting who receives confidential 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:
`
`(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;
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`
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`3
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`IPR2018-01254
`Patent 8,479,969
`
`
`(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.
`
`4. Persons receiving confidential information shall use the following
`
`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
`
`along with a Motion to Seal. The Motion to Seal should provide
`
`a non-confidential description of the nature of the confidential
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`information that is under seal, and set forth the reasons why the
`
`information is confidential and should not be made 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
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`shall be treated as confidential and remain under seal, unless the
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`Board determines that the documents or information do not to
`
`qualify for confidential treatment. The information shall remain
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`
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`4
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`
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`IPR2018-01254
`Patent 8,479,969
`
`
`under seal unless the Board determines that some or all of the
`
`information does not 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. A party may challenge the
`
`confidentiality of the information by opposing the Motion to
`
`Seal. The non-confidential version of the submission shall
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`clearly indicate the locations of information that has been
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`redacted. The confidential version of the submission shall be
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`filed under seal. The redacted information shall remain under
`
`seal unless the Board determines that some or all of the
`
`redacted information does not qualify for confidential
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`treatment.
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`(B) Documents and Information Exchanged Among the Parties.
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`Documents (including deposition transcripts) and other information
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`designated as confidential that are disclosed to another party during
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`
`
`5
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`
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`IPR2018-01254
`Patent 8,479,969
`
`
`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.
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`5. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential
`
`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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`6
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`IPR2018-01254
`Patent 8,479,969
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
`
`
`Acknowledgment for Access to Protective Order Material
`
`
`I, _____________________, affirm that I have read the Protective Order; that 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
`
`
`
`7
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`IPR2018-01254
`Patent 8,479,969
`
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`
`Order and providing remedies for its breach.
`
`
`
`_______________________________
`[Signature]
`
`
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`
`
`
`8
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`
`
`ATTACHMENT 2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`
`______________________
`
`DEFAULTSTIPULATED PROTECTIVE ORDER
`
`
`
`
`
`
`
`The parties have reached an agreement regarding the terms of a Protective
`
`Order that shall govern the treatment of confidential information submitted during
`
`the above captioned matter. The terms of the stipulated Protective Order are set
`
`forth below:
`
`This standing 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 oOrder:
`
`(A) Parties. Persons who are owners of a patent involved in the
`
`proceeding and other persons who are named parties to the
`
`proceeding.
`
` (BA) Party Representatives. RepresentativesAttorneys of record for a
`
`party in the proceeding.
`
`(CB) 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. The subject
`
`matter of this proceeding is surgical staplers.
`
`
`
`
`
`
`
`
`
`
`
`
`(DC) In-house counsel. One Iin-house counsel of aeach party. who
`
`has been approved to access confidential material in Ethicon LLC v.
`
`Intuitive Surgical Inc., Case No. 17-871 (LPS) (CJB) (D. Delaware).
`
`(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.
`
`(FD) 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.
`
`(GE) Support Personnel. Administrative assistants, clerical staff, court
`
`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.
`
`
`
`
`
`
`
`
`
`4. Persons receiving confidential information shall use the following
`
`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 withalong with a Motion to Seal. The
`
`Motion to Seal should provide a non-confidential description of
`
`the nature of the confidential information that is under seal, and
`
`set forth the reasons why the information is confidential and
`
`should not be made available to the public. A party may
`
`challenge the confidentiality of the information by opposing the
`
`Motion to Seal. 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. The information shall remain under seal unless the
`
`Board determines that some or all of the information does not
`
`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. A party may challenge the
`
`confidentiality of the information by opposing the Motion to
`
`Seal. 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, the Board determines that some or all of
`
`the redacted information does not qualify for confidential
`
`treatment.
`
`(B) Documents and Information Exchanged Among the Parties.
`
`Documents (including deposition transcripts) and other Iinformation
`
`designated as confidential that isare 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.
`
`
`
`
`
`
`
`
`
`
`
`
`5. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential
`
`information must return, or certify the destruction of, all copies of the confidential
`
`information to the producing party.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`______________________
`
`IPR2018-01254
`U.S. Patent No. 8,479,969
`______________________
`
`Standard Acknowledgment for Access to Protective Order Material
`
`I, _____________________, affirm that I have read the Protective Order; that 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.
`
`
`
`_______________________________
`[Signature]
`
`
`
`
`
`
`
`
`
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