Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 92
`Entered: April 30, 2014
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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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`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020
`Patent 5,191,573
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`DECISION
`Motions to Seal
`37 C.F.R §§ 42.14 and 42.54
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`Tel: 571-272-7822
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`
`
`Paper 92
`Entered: April 30, 2014
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`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 MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`DECISION
`Motions to Seal
`37 C.F.R §§ 42.14 and 42.54
`
`
`
`Case CBM2013-00020
`Patent 5,191,573
`
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`
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`INTRODUCTION
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`The parties filed a Joint Motion to Seal (Paper 54) that seeks to seal
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`certain exhibits and portions of documents that reference the exhibits.
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`Petitioner filed a Motion to Seal (Paper 72) seeking to seal portions of
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`Petitioner’s Motion to Exclude (Paper 70, redacted version; Paper 71,
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`unredacted version). The parties also filed a Joint Motion to Seal (Paper 87)
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`seeking to seal portions of Petitioner’s Reply in Support of its Motion to
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`Exclude (Paper 88, unredacted version; Paper 89, redacted version). The
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`parties submitted a copy of the Board’s default protective order as a
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`proposed protective order (Exhibit 4269) for this proceeding. Paper 54 at 3.
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`Because the parties agree to the terms of the protective order, the Board
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`hereby enters the protective order. As a consequence, the default protective
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`order governs the treatment and filing of confidential information in this
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`proceeding. For reasons discussed below, the Joint Motion to Seal
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`(Paper 54), Petitioner’s Motion to Seal (Paper 72), and the Joint Motion to
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`Seal (Paper 87) are conditionally granted.
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`2
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`Case CBM2013-00020
`Patent 5,191,573
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`DISCUSSION
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`There is a strong public policy in favor of making information filed in
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`a covered business method patent review open to the public, especially
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`because the proceeding determines the patentability of claims in an issued
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`patent and, therefore, affects the rights of the public. Under 35 U.S.C.
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`§ 326(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers filed in a
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`covered business method patent review are open and available for access by
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`the public; a party, however, may file a concurrent motion to seal and the
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`information at issue is sealed pending the outcome of the motion. It is,
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`however, only “confidential information” that is protected from disclosure.
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`35 U.S.C. § 326(a)(7). In that regard, the Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,760 (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.
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`The standard for granting a motion to seal is “for good cause.”
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`37 C.F.R. § 42.54(a). In the Joint Motions to Seal (Paper 54, Paper 87), both
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`Case CBM2013-00020
`Patent 5,191,573
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`parties bear the burden of proof in showing entitlement to the requested
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`relief. 37 C.F.R. § 42.20(c). The Board needs to know why the information
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`sought to be sealed constitutes confidential information. In the Motion to
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`Seal (Paper 72) filed by Petitioner, Petitioner bears the burden of proof.
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`Joint Motion to Seal (Paper 54)
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`In the Joint Motion to Seal (Paper 54), the parties move to seal
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`Exhibits 4157-4163 and states that “each of the Proposed Exhibits. . .
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`contains [Patent Owner’s] confidential trade secret, business, and
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`commercial information.” Paper 54 at 3. Patent Owner has not submitted a
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`redacted version of any of the exhibits that are the subject of the Joint
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`Motion to Seal (Paper 54), instead requesting that each document be sealed
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`in its entirety. The parties also move to seal portions of Petitioner’s Reply
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`(Paper 51, redacted version; Paper 52, unredacted version), the Declaration
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`of Lawrence Kenswil (Exhibit 4256, unredacted version), and the Second
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`Declaration of Dr. John P.J. Kelly (Exhibit 4262, unredacted version).
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`Petitioner has filed redacted versions of Petitioner’s Reply (Paper 51) and
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`the two Declarations, which are publicly available.
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`Case CBM2013-00020
`Patent 5,191,573
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`In Petitioner’s Reply, Petitioner relies on excerpts from
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`Exhibits 4157-4163 to rebut Patent Owner’s assertions that secondary
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`considerations indicate non-obviousness of the challenged claims.
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`As discussed previously, there is a strong public policy for making all
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`information filed in a covered business method patent review open to the
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`public. However, upon review of the documents and considering the stated
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`confidentiality of these exhibits by the parties, rather than denying the Joint
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`Motion to Seal, which would make the exhibits immediately publicly
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`accessible, the Board conditionally grants the Joint Motion to Seal
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`(Paper 54) for the duration of this proceeding. If the Board’s final written
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`decision substantively relies on any information in a sealed exhibit, that
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`exhibit will be unsealed by an Order of the Board; and if any sealed exhibit
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`contains no information substantively relied on by the Board in the final
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`written decision, then that exhibit will be expunged from the record by an
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`Order of the Board.
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`We encourage the parties, if possible, to submit summary documents
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`of Exhibits 4157-4163, 4256, and 4262 that contain the information
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`necessary for the parties to make their arguments, so that the Board could
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`refer to the summaries in its final written decision if necessary, rather than
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`Case CBM2013-00020
`Patent 5,191,573
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`potentially making an entire document available to the public. Should the
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`parties determine they are able to create and agree on summary documents,
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`the parties should notify the Board as soon as possible.
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`Motion to Seal (Paper 72)
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`In its Motion to Seal (Paper 72), Petitioner moves to seal portions of
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`Petitioner’s Motion to Exclude (Paper 70, redacted version; Paper 71,
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`unredacted version), because Petitioner’s Motion to Exclude references or
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`relies on documents that are the subject of the Joint Motion to Seal
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`(Paper 54), discussed above. Petitioner has filed a redacted version of its
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`Motion to Exclude (Paper 70), which is publicly available. According to
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`Petitioner, portions of Petitioner’s Motion to Exclude (Paper 70, redacted
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`version; Paper 71, unredacted version) should be sealed for the same reasons
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`detailed in the Joint Motion to Seal (Paper 54). We agree.
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`Therefore, the Board conditionally grants Petitioner’s Motion to Seal
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`(Paper 72) for the duration of this proceeding. However, if either the
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`Board’s final written decision or the Board’s decision on the Motion to
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`Exclude substantively relies on any information in any redacted portions of
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`the Motion to Exclude (Paper 70, redacted version; Paper 71, unredacted
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`6
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`Case CBM2013-00020
`Patent 5,191,573
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`version), then the Motion in its entirety will be unsealed by an Order of the
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`Board.
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`Joint Motion to Seal (Paper 87)
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`In the Joint Motion to Seal (Paper 87), the parties move to seal
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`Petitioner’s Reply in Support of its Motion to Exclude (Paper 88, unredacted
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`version; Paper 89, redacted version), because Petitioner’s Reply references
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`or relies on documents that are the subject of the Joint Motion to Seal
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`(Paper 54), discussed above. Petitioner has filed a redacted version of its
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`Reply in Support of its Motion to Exclude (Paper 89), which is publicly
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`available. According to the parties, portions of Petitioner’s Reply in Support
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`of its Motion to Exclude (Paper 88, unredacted version; Paper 89, redacted
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`version) should be sealed for the same reasons detailed in the Joint Motion
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`to Seal (Paper 54). We agree.
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`Therefore, the Board conditionally grants the Joint Motion to Seal
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`(Paper 87) for the duration of this proceeding. However, if either the
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`Board’s final written decision or the Board’s decision on the Motion to
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`Exclude substantively relies on any information in any redacted portions of
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`Petitioner’s Reply in Support of its Motion to Exclude (Paper 88, unredacted
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`Case CBM2013-00020
`Patent 5,191,573
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`version; Paper 89, redacted version), then Petitioner’s Reply in Support of its
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`Motion to Exclude in its entirety will be unsealed by an Order of the Board.
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`CONCLUSION
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`For the foregoing reasons, the Joint Motion to Seal (Paper 54),
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`Petitioner’s Motion to Seal (Paper 72), and the Joint Motion to Seal
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`(Paper 87) are conditionally granted. It is
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`ORDERED that the parties’ proposed protective order (Exhibit 4269)
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`is entered and governs the treatment and filing of confidential information in
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`this proceeding;
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`FURTHER ORDERED that with respect to Exhibits 4157-4163, the
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`Joint Motion to Seal (Paper 54) is conditionally granted and these exhibits
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`will be kept under seal unless and until the Board refers to material in any of
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`these exhibits in a final written decision;
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`FURTHER ORDERED that with respect to redacted portions of
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`Petitioner’s Reply (Paper 51), the Declaration of Lawrence Kenswil
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`(Exhibit 4256), and the Second Declaration of Dr. John P.J. Kelly
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`(Exhibit 4262), the Joint Motion to Seal (Paper 54) is conditionally granted
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`and the redacted portions of these documents will be kept under seal unless
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`Case CBM2013-00020
`Patent 5,191,573
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`and until the Board refers to material in any of these documents in a final
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`written decision;
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`FURTHER ORDERED that Petitioner’s Motion to Seal (Paper 72) is
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`conditionally granted and the redacted portions of Petitioner’s Motion to
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`Exclude (Paper 70, redacted version; Paper 71, unredacted version) will be
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`kept under seal unless and until the Board refers to the material in a final
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`written decision or in a decision on the Motion to Exclude (Paper 70,
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`redacted version; Paper 71, unredacted version); and
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`FURTHER ORDERED that the Joint Motion to Seal (Paper 87) is
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`conditionally granted and the redacted portions of Petitioner’s Reply in
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`Support of its Motion to Exclude (Paper 88, unredacted version; Paper 89,
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`redacted version) will be kept under seal unless and until the Board refers to
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`the material in a final written decision or in a decision on the Motion to
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`Exclude (Paper 70, redacted version; Paper 71, unredacted version).
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`Case CBM2013-00020
`Patent 5,191,573
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`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`Jennifer Sklenar
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`jennifer.sklenar@aporter.com
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`10
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