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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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`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`
`
`
`Case IPR2020-01341
`Patent 8,142,413
`
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`PATENT OWNER’S UNOPPOSED MOTION TO FILE UNDER SEAL
`PURSUANT TO 37 C.F.R. §§ 42.14 AND 42.54
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner respectfully
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`submits this Patent Owner’s Unopposed Motion to File Under Seal, requesting that
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`the following information remain under seal: portions of Patent Owner’s Response,
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`portions of Patent Owner’s Request for Preliminary Guidance on Contingent
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`Motion to Amend U.S. Patent No. 8,142,413 Under 37 C.F.R. § 42.121, and
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`Exhibits 2254, 2017, 2018, 2036, 2037, 2038, 2041, 2058, 2139, 2140, 2141, 2153,
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`and 2154 filed therewith. The under-seal version of the Patent Owner Response
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`and Patent Owner’s Request for Preliminary Guidance on Contingent Motion to
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`Amend U.S. Patent No. 8,142,413 Under 37 C.F.R. § 42.121, along with the
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`identified under-seal exhibits, are being filed concurrently with this motion.
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`Patent Owner has conferred with the Petitioner, and the Petitioner does not
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`oppose this motion to seal.
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`The Patent Owner and Petitioner have agreed to a stipulated Joint Protective
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`Order attached hereto as Appendix A. Patent Owner respectfully requests that the
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`Board enter that stipulated Joint Protective Order in the above captioned case to
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`govern treatment of the documents and information identified herein.
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`I.
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`Good Cause
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`For good cause, the Board may “issue an order to protect a party or person
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`from disclosing confidential information.” 37 C.F.R. § 42.54. The rules “identify
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`confidential information in a manner consistent with Federal Rule of Civil
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`2
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`Procedure 26(c)(1)(G), which provides for protective orders for trade secret or
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`other confidential research, development, or commercial information.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
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`Each of the sets of information below meets this standard, and for the
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`reasons explained there is good cause for why those documents should remain
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`under seal.
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`A. Under-Seal Versions of Patent Owner’s Response and Request for
`Preliminary Guidance on Contingent Motion to Amend
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`Patent Owner has filed under-seal its Patent Owner Response and Patent
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`Owner’s Request for Preliminary Guidance on Contingent Motion to Amend U.S.
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`Patent No. 8,142,413 Under 37 C.F.R. § 42.121, as well as public, redacted
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`versions of both Papers. The redacted portions on pages 60, 62, and 64 of the
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`Patent Owner Response and page 22 of Patent Owner’s Request for Preliminary
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`Guidance on Contingent Motion to Amend U.S. Patent No. 8,142,413 Under 37
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`C.F.R. § 42.121 contain confidential Patent Owner sales data regarding GuideLiner
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`revenue and units sold, as well as reflect licensing strategy. The remaining
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`redacted portions reflect information that Petitioner Medtronic has designated as
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`confidential under the district court protective order governing the parties in
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`parallel litigation in the District of Minnesota.
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`All of this information fits squarely within the kinds of information that the
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`Trial Practice guide considers to be “confidential information,” such as
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`3
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`“confidential research, development, or commercial information.” 77 Fed. Reg.
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`48756, 48760.
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`There is good cause for keeping the redacted information contained in Patent
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`Owner’s Response and Patent Owner’s Request for Preliminary Guidance on
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`Contingent Motion to Amend under seal. Publicly revealing the sensitive,
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`competitive information could put the parties at a disadvantage in the marketplace.
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`B.
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`Exhibits 2254, 2017, 2018, 2036, 2037, 2038, 2041: Development-
`Related Documents
`Exhibits 2254, 2017, 2018, 2036, 2037, 2038, and 2041, filed under seal, are
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`development documents related to the development of Patent Owner’s GuideLiner
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`products. These development documents include laboratory notebook pages,
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`market feasibility documents, technical design drawings, internal regulatory
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`documents, an interrogatory response describing the development of the
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`GuildeLiner products and invoices and purchasing documents, which among other
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`things show confidential sourcing and pricing information. All of this information
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`fits squarely within the kinds of information that the Trial Practice guide considers
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`to be “confidential information,” such as “confidential research, development, or
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`commercial information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for keeping Exhibits 2254, 2017, 2018, 2036, 2037,
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`2038, and 2041 under seal. Publicly revealing the development information related
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`to the GuideLiner products described above could put Patent Owner at a
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`4
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`competitive disadvantage in the marketplace. Additionally, Petitioners do not
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`oppose this information remaining under seal.
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`C. Exhibit 2058: Confidential Presentation
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`Exhibit 2058, filed under seal, is a Vascular Solutions PowerPoint. This
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`presentation reflects commercially sensitive discussions with a competitor, and
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`includes commercially sensitive financial information regarding Patent Owner’s
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`business. This information fits squarely within the kinds of information that the
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`Trial Practice guide considers to be “confidential information,” such as
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`“confidential . . . commercial information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for keeping Exhibit 2058 under seal. Publicly revealing
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`the commercially sensitive discussions and Patent Owner’s commercially sensitive
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`financial information could put Patent Owner (and possibly a competitor) at a
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`competitive disadvantage in the marketplace. Additionally, Petitioners do not
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`oppose this information remaining under seal.
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`
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`D. Exhibits 2139-2141: Engineering Drawings
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`Exhibits 2139, 2140, and 2141, filed as protective order material, are
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`documents that were designated confidential in the case of QXMédical, LLC v.
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`Vascular Solutions, LLC, et al., 0:17-cv-01969-PJS-TNL (D. Minn.). These
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`documents contain confidential information about Patent Owner’s product design
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`and manufacture specifications. This information fits squarely within the kinds of
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`5
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`information that the Trial Practice guide considers to be “confidential
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`information,” such as “confidential research, development, or commercial
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`information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for Patent Owner’s confidential product design and
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`manufacture specifications under seal. Publicly revealing the sensitive,
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`competitive information would put Patent Owner at a disadvantage in the
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`marketplace.
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`E.
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`Exhibit 2153: Under Seal Declaration of Steve Jagodzinski
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`Exhibit 2153 is the under seal, unredacted version of the Declaration of
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`Steve Jagodzinski. Patent Owner has also filed a public, redacted version of this
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`exhibit at Exhibit 2152. The under seal, redacted portions of Mr. Jagodzinski’s
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`declaration summarize and discuss confidential, internal, proprietary data
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`regarding GuideLiner revenue, units sold, and licensing strategy. This information
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`fits squarely within the kinds of information that the Trial Practice guide considers
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`to be “confidential information,” such as “confidential research, development, or
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`commercial information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for keeping the redacted information contained in
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`Exhibit 2153 under seal. Publicly revealing the commercially sensitive
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`information noted above would put Patent Owner at a competitive disadvantage in
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`the marketplace.
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`6
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`F.
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`Exhibit 2154: Confidential GuideLiner Revenue/Units Sold Data
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`Exhibit 2154, filed under seal, is consists of internal, confidential,
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`proprietary data showing GuideLiner revenue and units sold. This information fits
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`squarely within the kinds of information that the Trial Practice guide considers to
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`be “confidential information,” such as “confidential research, development, or
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`commercial information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for keeping Exhibit 2154 under seal. Publicly revealing
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`the commercially sensitive information noted above would put Patent Owner at a
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`competitive disadvantage in the marketplace.
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`II. Certification of Conference
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`Pursuant to 37 C.F.R. §§ 42.54(a), Patent Owner certifies that it has in good
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`faith conferred with Petitioners’ counsel. Petitioners’ counsel does not oppose this
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`motion to seal.
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`Both Petitioners and Patent Owner agree to abide by the parties’ stipulated
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`Protective Order pending a decision by the Board on the motion for entry thereof.
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`Request for Conference Call with the Board
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`Should the Board not be inclined to grant the present Unopposed Motion to
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`File Under Seal, Patent Owner hereby requests a conference call with the Board to
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`discuss any concerns prior to the Board issuing a decision on the Motion.
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`7
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`III. Conclusion
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`Patent Owner respectfully requests that the Board grant this Unopposed
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`Motion to File Under Seal, and keep the following documents under seal: the
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`under-seal, unredacted version of the Patent Owner Response, Patent Owner’s
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`Request for Preliminary Guidance on Contingent Motion to Amend U.S. Patent
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`No. 8,142,413 Under 37 C.F.R. § 42.121, and Exhibits 2254, 2017, 2018, 2036,
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`2037, 2038, 2041, 2058, 2139, 2140, 2141, 2153, and 2154.
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`Patent Owner also requests that the Board enter the stipulated Joint
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`Protective Order attached as Appendix A.
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`Dated: May 14, 2021.
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`Respectfully submitted,
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`
`
`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email:
`DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`8
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on May 14, 2021, a true and correct copy of the
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`foregoing PATENT OWNER’S UNOPPOSED MOTION TO FILE UNDER SEAL
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`PURSUANT TO 37 C.F.R. §§ 42.14 AND 42.54 was served via electronic mail
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`upon the following:
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`Cyrus A. Morton (Reg. No. 44,954)
`Sharon Roberg-Perez (Reg. No. 69,600)
`Christopher A. Pinahs (Reg. No. 76,375)
`Robins Kaplan LLP
`800 LaSalle Avenue, Suite 2800
`Minneapolis, MN 55401
`Phone: 349-8500
`Fax: 612-339-4181
`Email: Cmorton@robinskaplan.com
`Email: Sroberg-perez@robinskaplan.com
`Email: Cpinahs@robinskaplan.com
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`/J. Derek Vandenburgh/
`J. Derek Vandenburgh (Lead Counsel)
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`9
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`Appendix A
`Appendix A
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`
`
`
`Case IPR2020-01341
`U.S. Patent No. 8,142,413
`
`
`
`
`
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`JOINT PROTECTIVE ORDER
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`This Protective order governs the treatment and filing of confidential information,
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`including documents and testimony.
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`1. Confidential information shall be clearly marked “PROTECTIVE
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`ORDER 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) Party Representatives. Outside counsel for a party in the above-
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`captioned proceeding.
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`(B) Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party,
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`or a consultant for, or employed by, such a competitor with respect to the
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`subject matter of the proceeding.
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`(C) In-house counsel. Each party may designate up to 2 in-house counsel
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`who are involved in this inter partes review, provided such in-house counsel
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`has signed the Acknowledgement attached hereto as Exhibit A, their duties
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`require them to assist outside counsel in this inter partes review, they do not
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`have competitive decision making responsibilities or opportunity, and they
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`are not involved in the prosecution or the supervision of the prosecution of
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`any patents for any party. Petitioners designate: Chad Hanson and Matt
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`Anderson. Patent Owner designates: Howard Cyr.
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`
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`(D) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are
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`reasonably necessary to assist those persons in the proceeding shall not be
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`required to sign an Acknowledgement, but shall be informed of the terms
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`and requirements of the Protective Order by the person they are supporting
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`who receives confidential information.
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`(E) The Office. Employees and representatives of the United States Patent
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`and Trademark Office who have a need for access to the confidential
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`information shall have such access without the requirement to sign an
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`Acknowledgement. Such employees and representatives shall include the
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`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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`
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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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`
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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 along with a
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`Motion to Seal. The Motion to Seal should provide a non-confidential
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`description of the nature of the confidential information that is under seal,
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`and set forth the reasons why the information is confidential and should not
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`be made available to the public. A party may challenge the confidentiality of
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`the information by opposing the Motion to Seal. The submission shall be
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`treated as confidential and remain under seal, unless the Board determines
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`that the documents or information do not to qualify for confidential
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`treatment. The information shall remain under seal unless, upon motion of a
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`party and after a hearing on the issue, or sua sponte, the Board determines
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`that some or all of the information does not qualify for confidential
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`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
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`non-confidential versions of its submission, together with a Motion to Seal
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`the confidential version setting forth the reasons why the information
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`redacted from the non-confidential version is confidential and should not be
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`made available to the public. A party may challenge the confidentiality of
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`the information by opposing the Motion to Seal. The non-confidential
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`version of the submission shall clearly indicate the locations of information
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`that has been redacted. The confidential version of the submission shall be
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`filed under seal. The redacted information shall remain under seal unless,
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`upon motion of a party and after a hearing on the issue, or sua sponte, the
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`Board determines that some or all of the redacted information does not
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`qualify for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as
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`confidential that are disclosed to another party during discovery or other
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`proceedings before the Board shall be clearly marked as “PROTECTIVE
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`ORDER MATERIAL” and shall be produced in a manner that maintains its
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`confidentiality.
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`5. Confidential Testimony. Any person providing testimony in the
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`proceeding may, on the record during the testimony, preliminarily designate the
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`entirety of the person’s testimony and all transcriptions thereof as confidential,
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`pending further review. Within ten days of the receipt of the transcript of the
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`testimony, that person, or that person’s representative, shall advise the opposing
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`party of those portions of the testimony to which a claim of confidentiality is to be
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`maintained, and the reasons in support of that claim. Such portions shall be treated
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`as confidential and maintained under seal in any filings to the Board unless, upon
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`motion of a party and after a hearing on the issue, or sua sponte, the Board
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`determines that some or all of the redacted information does not qualify for
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`confidential treatment.
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`6. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential
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`information must certify the destruction of, all copies of the confidential
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`information to the producing party.
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`7. Each party will produce all materials produced or filed during the course
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`of the above-captioned proceeding in the litigation captioned as Vascular Solutions
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`LLC et al. v. Medtronic Inc. et al., No. 19-cv-01760-PJS-TNL with litigation Bates
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`stamps within 14 days after filing or serving such information in the above-
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`captioned proceeding.
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`8. The Parties agree to abide by this Protective Order pending a decision by
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`the Board on the Parties’ motion for entry thereof.
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`9. Standard Acknowledgement of Protective Order. The following form will
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`be used to acknowledge a protective order and gain access to information covered
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`by the protective order:
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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
`
`
`
`
`
`
`MEDTRONIC, INC., AND MEDTRONIC VASCULAR, INC.
`Petitioners,
`
`v.
`
`TELEFLEX INNOVATIONS S.A.R.L.
`Patent Owner.
`
`
`
`
`Case Nos. IPR2020-01341, -01342, -01343,
`-01344
`
`
`Standard Acknowledgment for Access to Protective Order Material
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`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.
`
`
`_______________________________________ Date: ______________
`[Signature]
`
`
`
`
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