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 LIMITED,
`Patent Owner.
`
`____________________________________________
`
`Case No. IPR2021-00184
`Patent No. 7,803,423
`____________________________________________
`
`
`
`JOINT MOTION TO EXPUNGE AND REPLACE EXHIBIT 2032 AND
`WITHDRAW MOTION TO SEAL AND FOR A PROTECTIVE ORDER
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`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`____________________________________________
`
`Case No. IPR2021-00184
`Patent No. 7,803,423
`____________________________________________
`
`
`
`JOINT MOTION TO EXPUNGE AND REPLACE EXHIBIT 2032 AND
`WITHDRAW MOTION TO SEAL AND FOR A PROTECTIVE ORDER
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`
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`
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`
`
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`Pursuant to the Board’s email of September 15, 2021, authorizing this motion,
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`Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(collectively, “Petitioner”) and Patent Owner Nanoco Technologies Limited jointly
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`move to (1) expunge the current version of Exhibit 2032 (“Exhibit 2032”) and
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`replace it with an agreed-upon redacted version (“Redacted Exhibit 2032”) and (2)
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`withdraw Patent Owner’s Motion to Seal and for a Protective Order and Petitioner’s
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`response to that motion.
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`I.
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`BACKGROUND
`Patent Owner filed a Motion to Seal and to Enter Default Protective Order
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`Pursuant to 37 C.F.R. § 42.54 (“Motion”), seeking to seal portions of Patent Owner’s
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`Response and Exhibit 2030, as well as the entirety of Exhibits 2032 and 2034.1 Paper
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`27 at 1. In response, Petitioner addressed why the Motion had been filed, but that
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`the parties had subsequently worked together to resolve the dispute. See Paper 29 at
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`2-3.
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`Specifically, the parties agreed that Patent Owner’s Response and Exhibits
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`2030 and 2034 did not contain confidential information and did not need to be sealed.
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`1 Petitioner maintains its written objections to Exhibits 2030, 2032, and 2034, and
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`nothing herein shall be construed as a waiver or forfeiture of those objections.
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`See Paper 28 at 1-2.
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`1
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`However, Petitioner alleges that Exhibit 2032 does contain confidential information.
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`Because Patent Owner does not rely on the information Petitioner alleges to be
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`confidential in Exhibit 2032, the parties agreed that a redacted version of that exhibit
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`could be filed publicly, so that the public has access to the information on which
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`Patent Owner relies, but the confidentiality of the non-cited material is maintained.
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`Redacted Exhibit 2032 was attached to Paper 29 as Appendix 2.
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`II. GOOD CAUSE EXISTS TO EXPUNGE EXHIBIT 2032 AND
`REPLACE IT WITH A REDACTED VERSION
`The same showing of “good cause” is required for a motion to expunge as it
`
`is for a motion to seal. RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 62 at 3
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`(PTAB Sept. 9, 2014).
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`Good cause exists to expunge Ex. 2032 and replace it with a redacted version.
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`Petitioner alleges that Exhibit 2032 contains confidential information of Petitioner
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`and a third-party manufacturer of certain quantum dots, Hansol Chemical.
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`Specifically, Petitioner alleges that Exhibit 2032 contains confidential technical
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`information and details regarding the trade-secret recipes used by Hansol to make
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`certain quantum dots for Petitioner Samsung Electronics Co., Ltd., including
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`ingredients used in those trade-secret recipes. Petitioner alleges that the confidential
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`information in Exhibit 2032 has not previously been published or made public.
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`Petitioner alleges that public disclosure of the confidential information would
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`increase the likelihood of harm to Petitioner and Hansol, including by exposing this
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`
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`2
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`
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`information to their competitors, and would give those competitors an unfair
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`advantage in knowing certain details about Hansol’s quantum dot recipes even
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`though Petitioner and Hansol did not have corresponding information about their
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`competitors.
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`The public’s interest in maintaining a complete and understandable record in
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`this proceeding will not be harmed by expunging Exhibit 2032 and replacing it with
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`Redacted Exhibit 2032. Because none of the parties rely on the information that
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`Petitioner alleges to be confidential in Exhibit 2032, full disclosure of that exhibit to
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`the public is unnecessary to the issues in this case. Expunging Exhibit 2032 and
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`replacing it with Redacted Exhibit 2032 will serve the public interest by ensuring a
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`complete and understandable record of the allegations in this proceeding.
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`Because “the public’s interest in maintaining a complete and understandable
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`file history of this inter partes review” will not be harmed by expunging Exhibit
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`2032 and replacing it with Redacted Exhibit 2032, while Petitioner believes that
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`Petitioner and Hansol would be harmed by disclosure of the confidential information
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`in Exhibit 2032, good cause exists to grant the relief the parties request. See RPX,
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`Paper 62 at 3.
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`III. EXPUNGING EXHIBIT 2032 AND REPLACING IT WITH A
`REDACTED VERSION MOOTS THE MOTION TO SEAL
`The parties agree that Patent Owner’s Response and Exhibits 2030 and 2034
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`do not contain confidential information, and thus Patent Owner’s Motion is moot
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`3
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`with regard to those exhibits. Granting the parties’ requested relief of expunging
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`Exhibit 2032 and replacing it with Redacted Exhibit 2032 will moot the remaining
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`issues with regard to the Motion, because Redacted Exhibit 2032 does not contain
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`any confidential information.
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`IV. CONCLUSION
`Petitioner and Patent Owner respectfully request that the Board expunge the
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`version of Exhibit 2032 that is currently on file and replace it with the agreed-upon
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`Redacted Exhibit 2032, attached as Appendix 1.2 Because replacing Exhibit 2032
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`with the redacted version will obviate the need for a protective order to be entered
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`in this case, the parties also jointly move to withdraw Patent Owner’s Motion to Seal
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`(Paper 27) and Petitioner’s Response thereto (Paper 29) after Exhibit 2032 has been
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`expunged and replaced with its redacted version.
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`2 Should the Board prefer the parties to file the redacted version of Exhibit 2032,
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`Patent Owner will file the redacted version of Exhibit 2032 after the Board
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`grants this motion to expunge.
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`4
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`DATED: September 17, 2021
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`Respectfully submitted,
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`
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C. (No. 73,156)
`W. Todd Baker (No. 45,265)
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`P: 202.389.5000; F: 202.389.5200
`chris.mizzo@kirkland.com
`todd.baker@kirkland.com
`
`Gregory S. Arovas, P.C. (No. 38,818)
`Stefan Miller (No. 57,623)
`Jeremy Wilson (pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`P: 212.446.4800; F: 212.446.4900
`greg.arovas@kirkland.com
`stefan.miller@kirkland.com
`jeremy.wilson@kirkland.com
`
`
`Attorneys for Petitioner
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`
`/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
`
`
`
`Attorneys for Patent Owner
`Nanoco Technologies Limited
`
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`5
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the above-captioned “JOINT MOTION TO
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`EXPUNGE AND REPLACE EXHIBIT 2032 AND WITHDRAW MOTION TO
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`SEAL AND FOR A PROTECTIVE ORDER” was served in its entirety on
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`September 17, 2021, via electronic service on lead and back-up counsel:
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`WAMeunier@mintz.com
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`PJCuomo@mintz.com
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`MCNewman@mintz.com
`
`TWintner@mintz.com
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`MSGalica@mintz.com
`
`NanocoIPRs@mintz.com
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`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C.
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