Case No. IPR2022-01264
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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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`Caterpillar Inc.
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`Petitioner
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`v.
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`Wirtgen America, Inc.
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`Patent Owner
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`Case IPR2022-01264
`U.S. Patent 9,879,390
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`PETITIONER’S MOTION TO SEAL
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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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`Caterpillar Inc.
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`Petitioner
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`v.
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`Wirtgen America, Inc.
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`Patent Owner
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`
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`Case IPR2022-01264
`U.S. Patent 9,879,390
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`PETITIONER’S MOTION TO SEAL
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`I.
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`Case No. IPR2022-01264
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`Introduction
`Petitioner Caterpillar Inc. requests that the confidential versions of the
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`Petition, declaration Exhibit 1006, declaration Exhibits 1020 and 1049 and
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`documentary Exhibits 1025-1030, 1032-1034, 1036, 1038-1048, and 1054-1056 be
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`sealed under 37 C.F.R. § 42.55. Good cause to seal these documents exists because
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`public versions of the Petition, Exhibits 1006, 1020, and 1049 have also been filed,
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`and the redacted information in these exhibits, along with the entirety of the
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`information in Exhibits 1025-1030, 1032-1034, 1036, 1038-1048, and 1054-1056
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`is sensitive, non-public corporate procedures, customer, dealer, and shipping
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`information that a business would not make public, and/or confidential information
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`of third-party Roadtec, Inc.
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`II. Governing Rules and PTAB Guidance
`Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
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`inter partes review are open and available for access by the public, but a party may
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`file a concurrent motion to seal and the information at issue is sealed pending the
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`outcome of the motion.
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`Similarly, 37 C.F.R. § 42.14 provides:
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`The record of a proceeding, including documents and things,
`shall be made available to the public, except as otherwise
`ordered. A party intending a document or thing to be sealed
`shall file a motion to seal concurrent with the filing of the
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`Case No. IPR2022-01264
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`document or thing to be sealed. The document or thing shall
`be provisionally sealed on receipt of the motion and remain so
`pending the outcome of the decision on the motion.
`It is, however, only “confidential information” that is protected from disclosure. 35
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`U.S.C. § 316(a)(7) (“The Director shall prescribe regulations -- . . . providing for
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`protective orders governing the exchange and submission of confidential
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`information”). In that regard, the Office Trial Practice Guide, 77 Fed. Reg. 48756,
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`48760 (Aug. 14, 2012) provides:
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`The rules aim to strike a balance between the public’s interest
`in maintaining a complete and understandable file history and
`the parties’ interest in protecting truly sensitive information.
`* * *
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders
`for trade secret or other confidential research, development, or
`commercial information. § 42.54.
`Under 37 C.F.R. § 42.55, a “petitioner filing confidential information with a
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`petition may, concurrent with the filing of the petition, file a motion to seal with a
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`proposed protective order as to the confidential information.”
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`III.
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`Identification of Confidential Information
`The confidential information falls into three categories. The first category
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`consists of descriptions of Caterpillar’s sensitive customer, shipping, and dealer
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`information. This information is contained in paragraph 20 of Exhibit 1020,
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`Case No. IPR2022-01264
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`paragraphs 3-6, and 8-10 of Exhibit 1049, and Exhibits 1025-1030, 1032-1034,
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`1038-1048. The second category consists of Caterpillar internal corporate
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`procedures. This information is contained in paragraphs 13, 40, 42, 44, 46, and 48-
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`49 of Exhibit 1020, and Exhibit 1036. Petitioner certifies that this information has
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`not been published or otherwise been made public. The third category consists of
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`confidential materials provided by third-party Roadtec, Inc. in an ITC case
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`between Wirtgen and Caterpillar. This information is contained in Exhibits 1054-
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`1056, pages 31, 58, 61 of the Petition, and paragraphs 94, 95, 99, 134, 139 of
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`declaration Exhibit 1006.
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`IV. Good Cause Exists for Sealing the Confidential Information
`The Board routinely seals confidential sales, customer, purchaser,
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`distributor, and pricing information. See, e.g., Prong, Inc. v. Yeoshua Sorias,
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`IPR2015-01317, Paper 32; Cisco Systems, Inc. v. Crossroads Systems, Inc.,
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`IPR2014-01463, Paper 49. Here, the declarations (Ex. 1020, ¶20; Ex. 1049, ¶¶3-6,
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`8-10), the invoices (Exs. 1038-1048) and the Factory Notification Lists (“FNLs”)
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`(Exs. 1025-1030 and 1032-1034) contain this same type of information, namely
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`customer, shipping, and dealer information. For example, these contain specific
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`customer locations, dates of sales, dates of manufacturing, and shipments. Good
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`cause exists to seal and keep this information confidential because it includes
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`details about Caterpillar customers and dealers, which would be valuable to
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`Case No. IPR2022-01264
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`Caterpillar’s competitors and harmful to Caterpillar if made public. Moreover, the
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`Board has previously sealed corresponding exhibits when they were at issue in a
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`prior inter partes review proceeding, holding “that Petitioner has established good
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`cause for sealing the exhibits in question” because “the exhibits—mainly invoices
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`and FNLs—do not appear to include large amounts of information that should be
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`made public.” Caterpillar Inc. v. Wirtgen Am., Inc., IPR2018-01091, Paper 49, at
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`76-77. The Board also noted that public disclosure of sensitive and confidential
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`information in the exhibits is disfavored given “that Petitioner and Patent Owner
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`are competitors . . . .” Id. Accordingly, as in the earlier IPR between Caterpillar
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`and Wirtgen, and as in Prong and Cisco, the Board should seal and keep the
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`information confidential.
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`The Board also seals confidential, internal and sensitive business
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`information. See, e.g. Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00333,
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`Paper 60. Here, the company procedures contained in the declaration (Ex. 1020
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`¶¶13, 40, 42, 44, 46, and 48-49), and Exhibit 1036 are internal documents that
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`would be harmful if made public. Good cause exists to seal and keep this
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`information confidential because it includes details about Caterpillar’s corporate
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`procedures which are essential to the running of the business and would be
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`valuable to Caterpillar’s competitors and harmful to Caterpillar if made public.
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`Accordingly, as in Tandus, the Board should seal and keep this information
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`Case No. IPR2022-01264
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`confidential.
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`Lastly, Roadtec is a competitor to both Caterpillar and Wirtgen in the
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`milling machine industry. Exhibit 1054 is a confidential deposition transcript
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`containing testimony from Mr. Timothy Lewis, the Vice President of Operations
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`for Roadtec. Mr. Lewis was deposed in the ITC case between Wirtgen and
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`Caterpillar, and counsel for both parties was present and asked questions.
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`Specifically, Mr. Lewis testified in detail about the features of Roadtec’s machines
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`and sales of those machines to specific customers. Pages 31, 58, 61 of the Petition
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`and paragraphs 94, 95, 99, 134, 139 of declaration Exhibit 1006 cite to and quote
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`Mr. Lewis’s testimony. Exhibits 1055 and 1056 are also confidential documents
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`from Roadtec. These exhibits contain confidential information about the date, sale
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`price, customer, and maintenance records for the sale of a prior-art Roadtec
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`machine. Making the information in Exhibits 1055 and 1056 to public could
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`significantly harm Roadtec’s competitive and strategic position in the marketplace.
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`Each of these three documents were also marked as confidential business
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`information in the ITC case. Accordingly, the Board should seal and keep this
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`information confidential.
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`V.
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`Case No. IPR2022-01264
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`Proposed Protective Order
`Caterpillar requests entry of the Default Standing Protective Order, which is
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`attached to this motion as Appendix A.
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`VI. Conclusion
`For the reasons set forth above, Petitioner respectfully requests that the
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`Board grant this motion to seal.
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`Date: July 20, 2022
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`Respectfully Submitted,
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`By: / Joshua L. Goldberg /
`Joshua L. Goldberg, Reg. No. 59,369
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`Case No. IPR2022-01264
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing Petitioner’s Motion to Seal
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`was served on July 20, 2022, by FedEx Priority Overnight at the following address
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`of record for the subject patent.
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`Lucian Beavers
`PATTERSON Intellectual Property Law, P.C.
`1600 Division Street, Suite 500
`Nashville, TN 37203
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`A courtesy copy has also been mailed to litigation counsel for Patent Owner
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`at:
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`Date: July 20, 2022
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`Jonathan Tuminaro
`Sterne Kessler Goldstein Fox
`1100 New York Ave., NW
`Suite 600
`Washington, DC 20005
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` / Daniel E. Doku /
`Daniel E. Doku
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`Appendix A
`Appendix A
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`1
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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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`Caterpillar Inc.
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`Petitioner
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`v.
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`Wirtgen America, Inc.
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`Patent Owner
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`Case No. IPR2022-01264
`U.S. Patent 9,879,390
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`DEFAULT 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) 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.
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`(C) 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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`(D) In-house counsel. In-house counsel of a party.
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`(E) 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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`(F) 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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`3. Employees (e.g., corporate officers), consultants, or other persons
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`performing work for a party, other than those persons identified above in
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`(d)(2)(A)–(E), shall be extended access to confidential information only upon
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`agreement of the parties or by order of the Board upon a motion brought by the
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`party seeking to disclose confidential information to that person and after signing
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`the Acknowledgment. The party opposing disclosure to that person shall have the
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`burden of proving that such person should be restricted from access to confidential
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`information.
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`4. 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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`5. 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 description
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`of the nature of the confidential information that is under seal, and set forth the
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`reasons why the information is confidential and should not be made available to
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`the public. A party may challenge the confidentiality of the information by
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`opposing the Motion to Seal. The documents or information shall remain under
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`seal unless the Board determines that some or all of it does not qualify for
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`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
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`the non-confidential version is confidential and should not be made available to the
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`public. A party may challenge the confidentiality of the information by opposing
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`the Motion to Seal. The non-confidential version of the submission shall clearly
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`indicate the locations of information that has been redacted. The confidential
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`version of the submission shall be filed under seal. The redacted information shall
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`remain under seal unless the Board determines that some or all of the redacted
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`information does not 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 confidential
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`that are disclosed to another party during discovery or other proceedings before the
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`Board shall be clearly marked as “PROTECTIVE ORDER MATERIAL” and shall
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`be produced in a manner that maintains its confidentiality.
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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 return, or certify the destruction of, all copies of the confidential
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`information to the producing party.
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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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`Caterpillar Inc.
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`Petitioner
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`v.
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`Wirtgen America, Inc.
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`Patent Owner
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`Case No. IPR2022-01264
`U.S. Patent 9,879,390
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`ACKNOWLEDGEMENT FOR ACCESS
`TO PROTECTIVE ORDER MATERIAL
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`I
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`, affirm that I have read the Protective Order; that I will abide by its terms;
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`that I will use the confidential information only in connection with this proceeding
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`and for no other purpose; that I will only allow access to support staff who are
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`reasonably necessary to assist me in this proceeding; that prior to any disclosure to
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`such support staff I informed or will inform them of the requirements of the
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`Protective Order; that I am personally responsible for the requirements of the terms
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`of the Protective Order and I agree to submit to the jurisdiction of the Office and
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`the United States District Court for the Eastern District of Virginia for purposes of
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`enforcing the terms of the Protective Order and providing remedies for its breach.
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`Dated:
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`By: ________________________
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`9
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