Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 88
`Entered: April 30, 2014
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`
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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 CBM2013-00023
`Patent 5,966,440
`
`
`
`
`
`
`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
`
`
`Tel: 571-272-7822
`
`
`
`Paper 88
`Entered: April 30, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`
`
`
`
`
`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 CBM2013-00023
`Patent 5, 966,440
`
`
`
`
`INTRODUCTION
`
`The parties filed a Joint Motion to Seal (Paper 48) that seeks to seal
`
`certain exhibits and portions of documents that reference the exhibits.
`
`Petitioner filed a Motion to Seal (Paper 68) seeking to seal portions of
`
`Petitioner’s Motion to Exclude (Paper 66, redacted version; Paper 67,
`
`unredacted version). The parties also filed a Joint Motion to Seal (Paper 83)
`
`seeking to seal portions of Petitioner’s Reply in Support of its Motion to
`
`Exclude (Paper 84, unredacted version; Paper 85, redacted version). The
`
`parties submitted a copy of the Board’s default protective order as a
`
`proposed protective order (Exhibit 4468) for this proceeding. Paper 48 at 3.
`
`Because the parties agree to the terms of the protective order, the Board
`
`hereby enters the protective order. As a consequence, the default protective
`
`order governs the treatment and filing of confidential information in this
`
`proceeding. For reasons discussed below, the Joint Motion to Seal
`
`(Paper 48), Petitioner’s Motion to Seal (Paper 68), and the Joint Motion to
`
`Seal (Paper 83) are conditionally granted.
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`2
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`Case CBM2013-00023
`Patent 5, 966,440
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`
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`DISCUSSION
`
`There is a strong public policy in favor of making information filed in
`
`a covered business method patent review open to the public, especially
`
`because the proceeding determines the patentability of claims in an issued
`
`patent and, therefore, affects the rights of the public. Under 35 U.S.C.
`
`§ 326(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers filed in a
`
`covered business method patent review are open and available for access by
`
`the public; a party, however, may file a concurrent motion to seal and the
`
`information at issue is sealed pending the outcome of the motion. It is,
`
`however, only “confidential information” that is protected from disclosure.
`
`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:
`
`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.
`
`The standard for granting a motion to seal is “for good cause.”
`
`37 C.F.R. § 42.54(a). In the Joint Motions to Seal (Paper 48, Paper 83), both
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`Case CBM2013-00023
`Patent 5, 966,440
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`parties bear the burden of proof in showing entitlement to the requested
`
`relief. 37 C.F.R. § 42.20(c). The Board needs to know why the information
`
`sought to be sealed constitutes confidential information. In the Motion to
`
`Seal (Paper 68) filed by Petitioner, Petitioner bears the burden of proof.
`
`Joint Motion to Seal (Paper 48)
`
`In the Joint Motion to Seal (Paper 48), the parties move to seal
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`Exhibits 4358-4364 and states that “each of the Proposed Exhibits. . .
`
`contains [Patent Owner’s] confidential trade secret, business, and
`
`commercial information.” Paper 48 at 3. Patent Owner has not submitted a
`
`redacted version of any of the exhibits that are the subject of the Joint
`
`Motion to Seal (Paper 48), instead requesting that each document be sealed
`
`in its entirety. The parties also move to seal portions of Petitioner’s Reply
`
`(Paper 50, redacted version; Paper 49, unredacted version), the Declaration
`
`of Lawrence Kenswil (Exhibit 4414, unredacted version), and the Second
`
`Declaration of Dr. John P.J. Kelly (Exhibit 4420, unredacted version).
`
`Petitioner has filed redacted versions of Petitioner’s Reply (Paper 50) and
`
`the two Declarations, which are publicly available.
`
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`Case CBM2013-00023
`Patent 5, 966,440
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`In Petitioner’s Reply, Petitioner relies on excerpts from
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`Exhibits 4358-4364 to rebut Patent Owner’s assertions that secondary
`
`considerations indicate non-obviousness of the challenged claims.
`
`As discussed previously, there is a strong public policy for making all
`
`information filed in a covered business method patent review open to the
`
`public. However, upon review of the documents and considering the stated
`
`confidentiality of these exhibits by the parties, rather than denying the Joint
`
`Motion to Seal, which would make the exhibits immediately publicly
`
`accessible, the Board conditionally grants the Joint Motion to Seal
`
`(Paper 48) for the duration of this proceeding. If the Board’s final written
`
`decision substantively relies on any information in a sealed exhibit, that
`
`exhibit will be unsealed by an Order of the Board; and if any sealed exhibit
`
`contains no information substantively relied on by the Board in the final
`
`written decision, then that exhibit will be expunged from the record by an
`
`Order of the Board.
`
`We encourage the parties, if possible, to submit summary documents
`
`of Exhibits 4358-4364, 4414, and 4420 that contain the information
`
`necessary for the parties to make their arguments, so that the Board could
`
`refer to the summaries in its final written decision if necessary, rather than
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`Case CBM2013-00023
`Patent 5, 966,440
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`potentially making an entire document available to the public. Should the
`
`parties determine they are able to create and agree on summary documents,
`
`the parties should notify the Board as soon as possible.
`
`Motion to Seal (Paper 72)
`
`In its Motion to Seal (Paper 68), Petitioner moves to seal portions of
`
`Petitioner’s Motion to Exclude (Paper 66, redacted version; Paper 67,
`
`unredacted version), because Petitioner’s Motion to Exclude references or
`
`relies on documents that are the subject of the Joint Motion to Seal
`
`(Paper 48), discussed above. Petitioner has filed a redacted version of its
`
`Motion to Exclude (Paper 70), which is publicly available. According to
`
`Petitioner, portions of Petitioner’s Motion to Exclude (Paper 66, redacted
`
`version; Paper 67, unredacted version) should be sealed for the same reasons
`
`detailed in the Joint Motion to Seal (Paper 48). We agree.
`
`Therefore, the Board conditionally grants Petitioner’s Motion to Seal
`
`(Paper 68) for the duration of this proceeding. However, if either the
`
`Board’s final written decision or the Board’s decision on the Motion to
`
`Exclude substantively relies on any information in any redacted portions of
`
`the Motion to Exclude (Paper 66, redacted version; Paper 67, unredacted
`
`
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`6
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`Case CBM2013-00023
`Patent 5, 966,440
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`version), then the Motion in its entirety will be unsealed by an Order of the
`
`Board.
`
`Joint Motion to Seal (Paper 83)
`
`In the Joint Motion to Seal (Paper 83), the parties move to seal
`
`Petitioner’s Reply in Support of its Motion to Exclude (Paper 84, unredacted
`
`version; Paper 85, redacted version), because Petitioner’s Reply references
`
`or relies on documents that are the subject of the Joint Motion to Seal
`
`(Paper 48), discussed above. Petitioner has filed a redacted version of its
`
`Reply in Support of its Motion to Exclude (Paper 85), which is publicly
`
`available. According to the parties, portions of Petitioner’s Reply in Support
`
`of its Motion to Exclude (Paper 84, unredacted version; Paper 85, redacted
`
`version) should be sealed for the same reasons detailed in the Joint Motion
`
`to Seal (Paper 48). We agree.
`
`Therefore, the Board conditionally grants the Joint Motion to Seal
`
`(Paper 83) for the duration of this proceeding. However, if either the
`
`Board’s final written decision or the Board’s decision on the Motion to
`
`Exclude substantively relies on any information in any redacted portions of
`
`Petitioner’s Reply in Support of its Motion to Exclude (Paper 84, unredacted
`
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`7
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`Case CBM2013-00023
`Patent 5, 966,440
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`version; Paper 85, redacted version), then Petitioner’s Reply in Support of its
`
`Motion to Exclude in its entirety will be unsealed by an Order of the Board.
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`CONCLUSION
`
`For the foregoing reasons, the Joint Motion to Seal (Paper 48),
`
`Petitioner’s Motion to Seal (Paper 68), and the Joint Motion to Seal
`
`(Paper 83) are conditionally granted. It is
`
`ORDERED that the parties’ proposed protective order (Exhibit 4468)
`
`is entered and governs the treatment and filing of confidential information in
`
`this proceeding;
`
`FURTHER ORDERED that with respect to Exhibits 4358-4364, the
`
`Joint Motion to Seal (Paper 48) is conditionally granted and these exhibits
`
`will be kept under seal unless and until the Board refers to material in any of
`
`these exhibits in a final written decision;
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`FURTHER ORDERED that with respect to redacted portions of
`
`Petitioner’s Reply (Paper 50), the Declaration of Lawrence Kenswil
`
`(Exhibit 4414), and the Second Declaration of Dr. John P.J. Kelly
`
`(Exhibit 4420), the Joint Motion to Seal (Paper 48) is conditionally granted
`
`and the redacted portions of these documents will be kept under seal unless
`
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`Case CBM2013-00023
`Patent 5, 966,440
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`and until the Board refers to material in any of these documents in a final
`
`written decision;
`
`FURTHER ORDERED that Petitioner’s Motion to Seal (Paper 68) is
`
`conditionally granted and the redacted portions of Petitioner’s Motion to
`
`Exclude (Paper 66, redacted version; Paper 67, unredacted version) will be
`
`kept under seal unless and until the Board refers to the material in a final
`
`written decision or in a decision on the Motion to Exclude (Paper 66,
`
`redacted version; Paper 67, unredacted version); and
`
`FURTHER ORDERED that the Joint Motion to Seal (Paper 83) is
`
`conditionally granted and the redacted portions of Petitioner’s Reply in
`
`Support of its Motion to Exclude (Paper 84, unredacted version; Paper 85,
`
`redacted version) will be kept under seal unless and until the Board refers to
`
`the material in a final written decision or in a decision on the Motion to
`
`Exclude (Paper 66, redacted version; Paper 67, unredacted version).
`
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`9
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`10
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`Case CBM2013-00023
`Patent 5, 966,440
`
`
`
`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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