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.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,083,423
`
`PATENT OWNER’S MOTION TO SEAL AND TO ENTER DEFAULT
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,083,423
`
`PATENT OWNER’S MOTION TO SEAL AND TO ENTER DEFAULT
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
`
`
`
`Case No. IPR2021-00184
`Patent No. 7,083,423
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner Nanoco
`
`Technologies Ltd. (“Nanoco” or “Patent Owner”) respectfully submits this motion
`
`to seal portions of its Patent Owner Response (“Response”) and Exhibit 2030
`
`(Declaration of Brandi Cossairt Ph.D. Aug. 12, 2021) (“Expert Declaration”), as well
`
`as the entirety of Exhibit 2032 (Excerpts of the June 10, 2021 Rebuttal Expert Report
`
`of Moungi Bawendi, Ph.D.) (“Bawendi Rebuttal Expert Report”) and Exhibit 2034
`
`(Excerpts of the June 16, 2021 Deposition Transcript of Moungi G. Bawendi, Ph.D.)
`
`(“Bawendi Transcript”), which are being filed concurrently with this Motion.
`
`Sealing the material set forth below is required to maintain confidentiality
`
`designations made by Petitioner Samsung Electronics Co., Ltd. and Samsung
`
`Electronics America, Inc. (“Samsung” or “Petitioner”) during the related district
`
`court proceeding, Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., and
`
`Samsung Electronics America, Inc., C.A. No. 2:20-cv-00038-JRG (E.D. Tex.) (the
`
`“District Court Proceeding”).
`
`Nanoco further requests entry of the Board’s Default Protective Order
`
`attached as Appendix 1.
`
`The parties have not met and conferred on this Motion. On August 10, 2021,
`
`counsel for Nanoco contacted counsel for Petitioner by email and requested de-
`
`designation of certain portions of Exhibit 2032 and Exhibit 2034 that Nanoco
`
`1
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`
`
`Case No. IPR2021-00184
`Patent No. 7,083,423
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`planned to submit with its Patent Owner Response and Expert Declaration. As of the
`
`time of this filing, Nanoco has not yet received a response from counsel for Petitioner
`
`to Nanoco’s August 10, 2021 request for de-designation.
`
`II.
`
`LEGAL STANDARD FOR SEALING THE IDENTIFIED
`INFORMATION
`Documents filed in an IPR are generally available to the public. 37 C.F.R. §
`
`42.14. However, the Board may, for good cause, protect confidential information
`
`from public disclosure. 37 C.F.R. § 42.14; see also Garmin Int’l v. Cuozzo Speed
`
`Tech., LLC, IPR2012-00001, Paper 36 at 3-4 (PTAB Apr. 5, 2013). Where possible,
`
`parties should redact sensitive information from their filings, rather than seek to seal
`
`entire documents. Office Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (2012).
`
`When determining good cause, the Board must balance the public’s interest
`
`in a complete and understandable file history with the party’s interest in protecting
`
`sensitive information. See Garmin, IPR2012-00001, Paper 36, 3-4 (citing Office
`
`Trial Practice Guide, 77 Fed. Reg. at 48760). However, the public’s interest in
`
`having access to a party’s confidential business that is only indirectly related to
`
`patent validity is “minimal.” Id. at 8-9 (granting the patent owner’s motion to seal
`
`an agreement relating to the “commercializ[ation]” of the patent-at- issue).
`
`Nanoco is submitting excerpts of the Bawendi Rebuttal Expert Report
`
`(Exhibit 2032) and the Bawendi Transcript (Exhibit 2034) with its Response and
`
`2
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`
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`Case No. IPR2021-00184
`Patent No. 7,083,423
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`Expert Declaration. Nanoco’s Response and Expert Declaration also reference and
`
`include content from these same documents. The Bawendi Rebuttal Expert Report
`
`excerpts and the Bawendi Transcript excerpts to be sealed were designated as
`
`confidential by the Petitioner during the District Court Proceeding pursuant to a
`
`protective order, and Nanoco’s request is based on the need to respect that
`
`designation and maintain the non-disclosure of information, at least until such time
`
`as Petitioner responds to Nanoco’s request for de-designation.1 The Response and
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`Expert Declaration also include and quote information from those same exhibits
`
`(Exhibits 2032 and 2034). See, e.g., Paper No. 25 at pp. 3, 38-40; Exhibit 2030 ¶107.
`
`In addition, pursuant to paragraph 5(A)(ii) of the Default Protective Order,
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`Patent Owner has filed a redacted version of the Response (see Paper No. 26) and
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`Expert Declaration in an attempt to minimize the impact on the public’s interest in
`
`maintaining a complete and understandable record.
`
`1 It is Nanoco’s position that there is no basis to designate any of the cited portions
`
`of the Bawendi Rebuttal Expert Report and the Bawendi Transcript as confidential
`
`under any protective order, but Nanoco is filing this motion out of respect for the
`
`District Court protective order and in light of the fact that Nanoco has not yet
`
`received a response from counsel for Petitioner to Nanoco’s August 10, 2021
`
`request for de-designation.
`
`3
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`Case No. IPR2021-00184
`Patent No. 7,083,423
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`III. CERTIFICATION OF CONFERENCE PURSUANT TO 37 C.F.R. §
`42.54
`Nanoco has attempted to confer in good faith with Petitioner regarding the
`
`confidentiality designation attached to Exhibit 2032 and Exhibit 2034 to determine
`
`if this motion to seal was necessary. As of the date of this filing, Nanoco has not
`
`received a substantive response from Petitioner regarding those exhibits. As such,
`
`Nanoco respectfully requests that the Board enter Default Protective Order in this
`
`proceeding.
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`4
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`Case No. IPR2021-00184
`Patent No. 7,083,423
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant this Motion to Seal and to Enter the Default Protective Order.
`
`Dated: August 12, 2021
`
`Respectfully submitted,
`
`Nanoco Technologies Ltd.,
`By its attorneys,
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Peter J. Cuomo (Reg. No. 58,481)
`Michael C. Newman (pro hac vice)
`Thomas A. Wintner (pro hac vice)
`Matthew S. Galica (pro hac vice)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1845
`Facsimile: 617-542-2241
`E-mails: WAMeunier@mintz.com
` PJCuomo@mintz.com
` MCNewman@mintz.com
` TWintner@mintz.com
` MSGalica@mintz.com
` NanocoIPRs@mintz.com
`
`5
`
`
`
`Case No. IPR2021-00184
`Patent No. 7,083,423
`
`CERTIFICATE OF SERVICE
`
`I certify that copies of the foregoing document and the exhibits thereto are
`
`being served by electronic mail on the following counsel of record:
`
`Lead Counsel
`F. Christopher Mizzo, P.C.
`Reg. No. 73,156
`chris.mizzo@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`Dated: August 12, 2021
`
`Back-Up Counsel
`Gregory S. Arovas, P.C.
`Reg. No. 38,818
`greg.arovas@kirkland.com
`Stefan Miller
`Reg. No. 57,623
`stefan.miller@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, N.Y. 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`W. Todd Baker
`Reg. No. 45,265
`todd.baker@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W. Washington,
`D.C. 20004 Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY
`& POPEO, P.C.
`
`6
`
`
`
`APPENDIX 1
`APPENDIX 1
`
`
`
`DEFAULT PROTECTIVE ORDER
`
`The following Default Protective Order will govern the filing and treatment of
`
`confidential information in the proceeding:
`
`Default Protective Order
`
`This 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 order:
`
`(A) Parties. Persons who are owners of a patent involved in the proceeding and other
`
`persons who are named parties to the proceeding.
`
`(B) Party Representatives. Representatives of record for a party in the
`
`proceeding.
`
`(C) 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.
`
`(D) In-house counsel. In-house counsel of a party.
`
`(E) Support Personnel. Administrative assistants, clerical staff, court reporters and
`
`1
`
`
`
`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.
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`(F) The Office. Employees and representatives of the United States Patent and Trademark
`
`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.
`
`3. Employees (e.g., corporate officers), consultants, or other persons performing work
`
`for a party, other than those persons identified above in (d)(2)(A)–(E), 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 and after
`
`signing the Acknowledgment. The party opposing disclosure to that person shall have the
`
`burden of proving that such person should be restricted from access to confidential information.
`
`4. 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;
`
`2
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`
`
`(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.
`
`5. Persons receiving confidential information shall use the following procedures to
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`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 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 documents or
`
`information shall remain under seal unless the Board determines that some or all of it
`
`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,
`
`3
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`
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`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 the Board determines
`
`that some or all of the redacted information does not qualify for confidential treatment. (B)
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`Documents and Information Exchanged Among the Parties. Documents (including deposition
`
`transcripts) and other information designated as confidential that are disclosed to another party
`
`during 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 maintains its
`
`confidentiality.
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`6. 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.
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`(k) Standard Acknowledgement of Protective Order. The following form may be used to
`
`acknowledge a protective order and gain access to information covered by the protective order:
`
`[CAPTION]
`
`4
`
`
`
`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
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`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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`[Signature]
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`5
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