Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 42
` Entered: January 13, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`____________
`
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
` IPR2021-00186 (Patent 8,524,365 B2)1
`____________
`
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Expunge and Replace Exhibit 2032 and to
`Withdraw Motions to Seal and for a Protective Order
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`
`
`
`
`571.272.7822
`
`
` Paper No. 42
` Entered: January 13, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`____________
`
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
` IPR2021-00186 (Patent 8,524,365 B2)1
`____________
`
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Expunge and Replace Exhibit 2032 and to
`Withdraw Motions to Seal and for a Protective Order
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`
`
`
`
`
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`In each of the above-captioned proceedings, Patent Owner filed a
`
`Motion to Seal and to Enter Default Protective Order (collectively,
`“Motions”). Paper 27.2 In the Motions, Patent Owner requested to have
`portions of the Patent Owner Response and Exhibit 2030 (Declaration of
`Brandi Cossairt, Ph.D.) sealed, and to have Exhibits 2032 (Excerpts of the
`June 10, 2021 Rebuttal Expert Report of Moungi Bawendi, Ph.D.) and 2034
`(Excerpts of the June 16, 2021 Deposition Transcript of Moungi G.
`Bawendi, Ph.D.) sealed in their entirety. Id. at 1.
`In each proceeding, Petitioner filed a Response to Patent Owner’s
`Motion explaining that the parties have agreed that the Patent Owner’s
`Response and Exhibits 2030 and 2034 do not contain confidential
`information and therefore do not need to be sealed. Paper 30, 2–3.
`Additionally, Petitioner explains that the parties agreed to jointly request that
`the Board replace Exhibit 2032 with an agreed-upon redacted version that
`can be filed publicly. Id. at 3.
`
`With our authorization, the parties filed, in each proceeding, a Joint
`Motion to Expunge and Replace Exhibit 2032 and to Withdraw Patent
`Owner’s Motion to Seal and to Enter Default Protective Order (collectively
`“Joint Motions”). Paper 31. In the Joint Motions, the parties confirm that
`the Patent Owner’s Response and Exhibits 2030 and 2034 do not contain
`confidential information and therefore do not need to be sealed.
`
`
`2 All citations in this Order refer to papers or the exhibit filed in IPR2021-
`00183. Similar papers and the same exhibit have been filed in IPR2021-
`00184, IPR2021-00185, and IPR2021-00186.
`
`2
`
`
`
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`Based on the parties’ assertions and agreement that the Patent
`Owner’s Response and Exhibits 2030 and 2034 do not contain confidential
`information, we agree that a motion to seal is not needed for those items.
`We note that Exhibit 2030 has been filed with a header stating
`“PROTECTIVE ORDER MATERIAL.” As that header is inaccurate, Patent
`Owner shall replace Exhibit 2030 with a corrected version of the exhibit,
`modified only to remove that header.
`In their Joint Motion, the parties assert also that good cause exists to
`expunge the originally filed Exhibit 2032 with a new version of that exhibit
`with the confidential information redacted. In particular, they assert that the
`confidential information is limited to a third party’s trade secrets and neither
`Petitioner nor Patent Owner relies on that confidential information in these
`proceedings. Id. 2–3. Therefore, according to the parties, the public’s
`interest in maintaining a complete and understandable record in these
`proceedings would not be harmed by replacing the originally-filed
`Exhibit 2032 with a redacted version. Id. at 3. We agree.
`
`
`Accordingly, it is
`ORDERED that the Joint Motions are granted and Patent Owner’s
`Motion to Seal and to Enter Default Protective Order shall be withdrawn in
`each of the above-captioned proceedings;
`FURTHER ORDERED that, in each of the above-captioned
`proceedings, the originally-filed Exhibit 2030 shall be expunged and
`replaced with a new version of the exhibit modified only to remove the
`“PROTECTIVE ORDER MATERIAL” header; and
`
`3
`
`
`
`IPR2021-00183 (Patent 7,588,828 B2)
`IPR2021-00184 (Patent 7,803,423 B2)
`IPR2021-00185 (Patent 7,867,557 B2)
`IPR2021-00186 (Patent 8,524,365 B2)
`
`FURTHER ORDERED that, in each of the above-captioned
`proceedings, the originally-filed Exhibit 2032 shall be expunged and
`replaced with a new version of the exhibit modified only to redact
`confidential information.
`
`
`PETITIONER:
`
`F. Christopher Mizzo
`Gregory Arovas
`Stefan Miller
`Todd Baker
`KIRKLAND & ELLIS LLP
`chris.mizzo@kirkland.com
`greg.arovas@kirkland.com
`stefan.miller@kirkland.com
`todd.baker@kirkland.com
`
`
`PATENT OWNER:
`William Meunier
`Peter Cuomo
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
`pjcuomo@mintz.com
`
`4
`
`
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