Case CBM2013-00020
`Patent No. 5,191,573
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00020
`Patent 5,191,573
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`JOINT MOTION TO FILE CONFIDENTIAL DOCUMENTS UNDER
`SEAL PURSUANT TO 37 C.F.R. §§ 42.14 & 42.54
`
`
`
`
`
`
`
`
`Patent No. 5,191,573
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00020
`Patent 5,191,573
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`JOINT MOTION TO FILE CONFIDENTIAL DOCUMENTS UNDER
`SEAL PURSUANT TO 37 C.F.R. §§ 42.14 & 42.54
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner SightSound
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`Technologies, LLC (“Patent Owner” or “SightSound”) and Petitioner Apple Inc.
`
`(“Petitioner” or “Apple”) respectfully submit this Joint Motion to Seal portions of
`
`Petitioner’s Reply, the Declaration of Lawrence Kenswil (Exhibit 4256), the Second
`
`Declaration of Dr. John P.J. Kelly (Exhibit 4262), and certain Exhibits thereto, all of
`
`which are being filed concurrently with this Motion.
`
`I.
`
`Background
`
`In this proceeding, SightSound produced seven documents (the “Proposed
`
`Exhibits”) to Apple that SightSound also produced in related litigation between the
`
`parties currently pending in the Western District of Pennsylvania styled SightSound
`
`Techs., LLC v. Apple Inc., Civil Action No. 2:11-cv-01292-DWA. See Exhibits 4157
`
`through 4163. During litigation, SightSound designated the Proposed Exhibits
`
`“Confidential” and produced them pursuant to the protective order entered in that
`
`action. Exhibit 4261. The Proposed Exhibits are cited in Petitioner’s Reply, the
`
`Declaration of Lawrence Kenswil (Exhibit 4256), and/or the Second Declaration of
`
`Dr. John P.J. Kelly (Exhibit 4262) in support of Petitioner’s Reply. SightSound seeks
`
`to maintain the confidentiality of the Proposed Exhibits and has requested that Apple
`
`file them under seal in this proceeding for the reasons set forth below. Apple does
`
`not oppose SightSound’s request to file the Proposed Exhibits under seal.
`
`Accordingly, SightSound and Apple move to file under seal Exhibits 4157 through
`
`
`
`
`-2-
`
`
`
`4163 and the portions of Petitioner’s Reply, Declaration of Lawrence Kenswil
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`(Exhibit 4256), and Second Declaration of Dr. John P.J. Kelly (Exhibit 4262) that cite
`
`to the subject matter of the Proposed Exhibits, all of which are being filed
`
`concurrently with this Motion. SightSound and Apple have agreed to be bound by
`
`the terms of the Board’s default protective order (see Office Patent Trial Practice
`
`Guide at 77 Fed. Reg. 48756, 48771 (Aug. 14, 2012)), a copy of which is attached
`
`hereto as Exhibit 4269.
`
`II. Good Cause Exists For Sealing Certain Confidential Information
`SightSound submits that each of the Proposed Exhibits summarized in the
`
`table below contains SightSound’s confidential trade secret, business, and commercial
`
`information. In the table below, SightSound provides detailed good cause reasons for
`
`sealing each of the exhibits. The portions of Petitioner’s Reply, Declaration of
`
`Lawrence Kenswil (Exhibit 4256), and Second Declaration of Dr. John P.J. Kelly
`
`(Exhibit 4262) that cite to the subject matter of the Proposed Exhibits should be
`
`sealed for the same reasons. Apple does not oppose.
`
`Exhibit
`
`Good Cause for Filing Under Seal
`
`4157
`
`
`
`
`
`This document is a private placement memorandum disclosed only
`
`on a confidential basis. The document contains confidential
`
`information regarding SightSound’s financial performance, business
`
`strategies, licensing efforts and strategy, and financial agreements
`
`-3-
`
`
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`Exhibit
`
`Good Cause for Filing Under Seal
`
`with third parties. This document is subject to a protective order put
`
`in place by the District Court and contains confidential information
`
`which should not be revealed in this proceeding.
`
`4158
`
`This document is a confidential partially complete internal draft of an
`
`“expansion plan” for a potential business that never came into
`
`existence, but was contemplated as potentially relating to SightSound
`
`and the patents. The documents contain confidential financial
`
`projections based on SightSound’s analysis and strategy related to the
`
`patents. This document is subject to a protective order put in place
`
`by the District Court and contains confidential information which
`
`should not be revealed in this proceeding.
`
`4159
`
`
`This document is a “Confidential Offering Memorandum” for
`
`SightSound Technologies, Inc. The document contains confidential
`
`financial information and market analysis relating to the
`
`patents. This document is subject to a protective order put in place
`
`by the District Court and contains confidential information which
`
`should not be revealed in this proceeding.
`
`4160
`
`This document is a confidential memorandum regarding a valuation
`
`
`
`
`-4-
`
`
`
`Exhibit
`
`Good Cause for Filing Under Seal
`
`
`
`of SightSound.com’s stock. In addition to containing an internal
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`discussion of SightSound’s business and financing activities, the
`
`document contains an internal discussion of SightSound’s licensing
`
`efforts and licensing strategy, including SightSound’s assessment of
`
`the major record labels approach and interest in licensing the patents
`
`as well as specific licensing terms discussed in negotiations. This
`
`document is subject to a protective order put in place by the District
`
`Court and contains confidential information which should not be
`
`revealed in this proceeding.
`
`4161
`
`
`This document is a confidential “Business Plan” containing
`
`SightSound’s confidential information regarding its financial
`
`statements and future projections, as well as confidential analysis
`
`regarding the competitive landscape, business strategy and the
`
`patents. This document is subject to a protective order put in place
`
`by the District Court and contains confidential information which
`
`should not be revealed in this proceeding.
`
`This document is a confidential communication from counsel
`
`analyzing the patents which appears to have only been shared with
`
`-5-
`
`4162
`
`
`
`
`
`
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`Exhibit
`
`Good Cause for Filing Under Seal
`
`third parties in the context of confidential licensing discussions. This
`
`document is subject to a protective order put in place by the District
`
`Court and contains confidential information which should not be
`
`revealed in this proceeding.
`
`4163
`
`
`This document is a confidential draft “Prospectus” which contains
`
`confidential information regarding SightSound’s financial
`
`performance, business strategies, licensing efforts and strategy, and
`
`financial agreements with third parties. This document is subject to a
`
`protective order put in place by the District Court and contains
`
`confidential information which should not be revealed in this
`
`proceeding.
`
`
`III. Certification of Conference
`Pursuant to 37 C.F.R. § 42.54(a), SightSound and Apple hereby certify that they
`
`have conferred in good faith and have agreed to be bound by the terms of the Board’s
`
`default protective order attached hereto. Further, Apple does not oppose
`
`SightSound’s request to file under seal Exhibits 4157 through 4163 and the relevant
`
`portions of Petitioner’s Reply, Declaration of Lawrence Kenswil (Exhibit 4256), and
`
`Second Declaration of Dr. John P.J. Kelly (Exhibit 4262), and accordingly joins this
`
`
`
`
`-6-
`
`
`
`motion. Counsel for SightSound has authorized undersigned counsel for Apple to
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`make this joint filing on behalf of the parties.
`
`
`Dated: March 21, 2014
`
`
`
`
`
`
`Respectfully submitted,
`
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`Registration No. 47,414
`steven.baughman@ropesgray.com
`Ching-Lee Fukuda, Back-up Counsel
`Registration No. 44,334
`ching-lee.fukuda@ropesgray.com
`James R. Batchelder, Back-up Counsel
`Pro Hac Vice Granted
`james.batchelder@ropesgray.com
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`(202) 508-4606 (Telephone)
`(617) 235-9492 (Fax)
`Attorneys/Agents For Petitioner
`
`David R. Marsh, Ph.D. (Reg. No. 41,408)
`Kristan Lansbery, Ph.D. (Reg. No. 53,183)
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`(202) 942-5068
`(202) 942-5999 (Fax)
`Attorney/Agent For Patent Owner
`
`
`
`
`
`
`
`
`-7-
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`Case CBM2013-00020
`Patent No. 5,191,573
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00020
`Patent 5,191,573
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Joint Motion to File Confidential
`
`Documents Under Seal Pursuant to 37 C.F.R. §§ 42.14 & 42.54 in connection with
`
`Covered Business Method Review Case CBM2013-00020 was served on this 21st day
`
`of March, 2014, by electronic mail upon Arnold & Porter LLP, counsel for Patent
`
`Owner, at david.marsh@aporter.com and kristan.lansbery@aporter.com.
`
`Dated: March 21, 2014
`
`
`
`
`
`
`
`
`
`
`By /Megan F. Raymond /
`
`Megan F. Raymond
`
`-8-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
