Filed on behalf of Clearlamp, LLC
`By:
`Matthew L. Cutler (moutler@hdp.com)
`Bryan K. Wheelock (bwheelock@hdp.com)
`Douglas A. Robinson (drobinson@hdp.com)
`Harness, Dickey & Pierce, PLC
`‘ 7700 Bonhomrne AVe., Suite 400
`
`St. Louis, MO 63105
`Tel: (314) 726-7500
`Fax: (314) 726-7501
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LKQ CORPORATION
`Petitioner
`
`V.
`
`CLEARLAMP, LLC
`Patent Owner
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`
`
`JOINT MOTION FOR PRESERVATION OF THE RECORD PENDING
`
`APPEAL OR, ALTERNATIVELY,
`MOTION TO EXPUNGE UNDER RULE 42.56
`
`
`By:
`Matthew L. Cutler (moutler@hdp.com)
`Bryan K. Wheelock (bwheelock@hdp.com)
`Douglas A. Robinson (drobinson@hdp.com)
`Harness, Dickey & Pierce, PLC
`‘ 7700 Bonhomrne AVe., Suite 400
`
`St. Louis, MO 63105
`Tel: (314) 726-7500
`Fax: (314) 726-7501
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LKQ CORPORATION
`Petitioner
`
`V.
`
`CLEARLAMP, LLC
`Patent Owner
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`
`
`JOINT MOTION FOR PRESERVATION OF THE RECORD PENDING
`
`APPEAL OR, ALTERNATIVELY,
`MOTION TO EXPUNGE UNDER RULE 42.56
`
`
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`I.
`
`Background and Overview of Relief Reguested
`
`Petitioner LKQ Corporation (“LKQ”) and Patent Owner Clearlamp, LLC
`
`(“Clearlamp”) (collectively “the Parties”) jointly request that the Board maintain
`
`the record of this case (i. e., not allow the sealed documents in this proceeding to
`
`become public) until after the appeal process for this proceeding concludes.
`
`Trial in this case was instituted on March 29, 2013. The Board entered its
`
`Final Written Decision on March 27, 2014 (Paper 73). In its Final Written
`, Decision, the Board granted Clearlamp’s two motions to seal (Papers 34 and 41).
`
`Paper 73, at p. 41. In addition the Board directed Clearlamp to file, within 45 days
`
`from the entry of the Final Written Decision, a motion to expunge the Sealed
`
`Documents (i.e., Paper 35 and Exhibits 2006, 2009, 2011, 2012, 2016, 2018, 2021,
`
`2024, and 2025, collectively referred to herein as the “Sealed Documents”), else
`
`those documents would become public.
`
`Pursuant to 37 CPR. § 90.3(a), the deadline for the Parties to file a notice. of
`
`' appeal is May 29, 2014. Because the Parties are each contemplating appeal, and
`
`because the sealed exhibits should remain sealed yet should also be a part of the
`
`record on appeal, the parties respectfillly request relief from the Board’s directive
`
`contained on page 41 of the Final Written Decision. Instead of the documents
`
`being expunged or made public, the Parties ask that the record be preserved as it is
`
`(i. e., that the Sealed Documents remain sealed) until the appeal process concludes.
`
`
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`If the Board denies the Parties’ request to maintain the record pending
`
`appeal, then Clearlamp requests, in the alternative, that the Sealed Documents be
`
`expunged from the record pursuant to 37 C.F.R. § 42.56 and not made'public. If
`
`the Board determines that information contained in any documents previously filed
`
`under seal will be made public, the Parties respectfully request permission to file
`
`alternate redacted versions of those documents.
`
`II.
`
`The Record Should Be Preserved Pending Appeal
`
`Sealed confidential information subject to a protective order will ordinarily
`
`become public 45 days after final judgment in a trial unless a motion to expunge is
`
`filed. (Rule 42.56; see also Comment 172, 77 FED. REG. 48612, 48644). Here,
`
`the date 45 days after final judgment was entered is May 12, 2014. However, the
`
`Parties have until 63 days from entry ofjudgment (i. e., until May 29, 2014) to file
`
`a notice of appeal.
`
`The Federal Rules of Appellate Procedure and the Federal Circuit Rules
`
`require that the record be retained by the Board pending appeal. Specifically,
`
`Federal Circuit Rule 17(a) states that “the agency must retain the record.”
`
`(emphasis added.) Federal Circuit Rule 17(d), titled “Access of Parties and
`
`Counsel to Original Record” also requires thatthe parties and their counsel have
`
`access to both the sealed and unsealed portions of the record “when a petition for
`
`review or notice of appeal is filed.” (emphasis added.) No notice of appeal has
`
`2
`
`
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`yet been filed for this case, and the deadline for filing a notice of appeal, as noted
`
`above, is May 29, 2014.
`
`Moreover, information that was filed under seal in this IPR was discussed by
`
`the parties in their submissions and/or was cited to by the Board in its Final
`
`Written Decision. For example, Sealed Documents were cited at:
`
`Paper 35 (Patent Owner’s Sealed Response) at pp. 30, 46—48 (Exhibit 2009);
`
`pp. 38-47 (Exhibit 2016) 1);
`
`Exhibit 2004 (Bell Declaration) at p. 32 (Exhibit 2006); p. 33 (referencing
`
`claim chart submitted as Exhibit 2018);
`
`Exhibit 2009 (Rappaport Declaration) at pp. 16—21 (Sandau testimony in
`
`Exhibits 2016 and 2021); pp. 21—22 (describing data contained in Exhibit
`
`201 1); p. 21 (referencing Devlin deposition transcript (Exhibit 2024);
`
`Exhibit 2022 (Asselta Declaration) at p. 2 (Exhibit 2012);
`
`Exhibit 2025 (Supplemental Bell Declaration) at p. 2 (Exhibits 2012 ans
`
`2018); and
`
`Paper 73 (Final Written Decision) at 27 (Exhibit 2016).
`
`If the record is not preserved in its entirety—including any sealed portions—and
`
`an appeal is taken, the Federal Circuit will not be able to fillly consider the issues
`
`‘Exhibit 2016 is excerpts from the deposition of Robert Sandau; Exhibit 2021 is
`the full transcript of that deposition.
`
`
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`discussed in the Final Written Decision, which would cause prejudice to the
`
`Parties.
`
`111.
`
`If the Board Denies the Parties’ Motion to Preserve2 Confidential
`Information Should be Expunged in Favor of Redacted Exhibits
`
`If the Parties’ Motion for Preservation of the Record is denied, the Parties
`
`respectfully request that all sealed confidential information filed on the IPR docket
`
`be expunged for the reasons set forth below.
`
`A. The Board’s Final Written Decision Authorized Filing of a Motion to
`
`Expunge
`
`On page 41 of its Final Written Decision (Paper 73), the Board granted
`
`Clearlamp’s motions to seal the Sealed Documents, and further directed that
`
`“[S]hould Clearlamp seek to maintain the confidentiality of the material that is the
`
`subject of its Motion to Seal, Clearlamp should file a motion to expunge the
`
`I
`
`information from the record before 45 days from the entry ofjudgment.” The
`
`parties understand this statement to authorize the filing of a motion to expunge.
`
`Further, the motion is timely because 45 days from the Board’s Final Written
`
`- Decision is May 11, 2104.
`
`B. Making the Sealed Documents Public Would Cause Preiudice to the
`
`Parties
`
`For the same reasons set forth in the Clearlamp’s motions to seal, namely
`
`that the sealed information contains sensitive and confidential business
`
`information of the Patent Owner and the Petitioner, the Parties now respectfully
`
`4
`
`
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`request that if the Board denies the Parties’ Motion for Preservation of the Record,
`
`‘ all the information filed under seal in this matter now be expunged from the
`
`record. Expunging the, sealed information will avoid the prejudice to both Parties
`
`that would be caused by public disclosure of the sealed information. Further,
`
`‘ expungement would not contradict the objecting of balancing the “public interest
`
`in maintaining a complete and understandable file history for public notice
`
`purposes” while protecting the confidential and proprietary information of the
`
`Parties. (See 11 FED. REG. 48623).
`
`IV. Conclusion
`
`Because the Board’s Final Decision, and the Parties’ submissions, rely in
`
`part upon confidential information that was filed under seal and the Federal Rules
`
`of Appellate Procedure require that the record be retained, the Parties respectfully
`
`request that the entire IPR record be preserved in its present form pending appeal,
`
`including preservation of document filed under seal in sealed, non-public form.
`
`If the Board denies the Parties’ Motion for Preservation of the Record, the
`
`Parties request in the alternative that any Sealed Documents on the IPR docket be
`expunged. Ifthe Board determines that any information previously filed under seal
`
`should be made public, the Parties respectfully request permission to file alternate
`
`I redacted versions of the documents in question, to ensure that only a minimum
`
`amount of confidential information is disclosed.
`
`5
`
`
`
`- Dated: May 9, 2014
`
`Respectfully submitted by:
`
`Case IPR2013-00020
`
`Patent 7,297,364
`
`/Matthew L. Cutler/
`
`MATTHEW L. CUTLER, Reg. No. 43574
`BRYAN K. WHEELOCK, Reg. No. 31441
`DOUGLAS A. ROBINSON, Reg. No. 59703
`HARNESS, DICKEY & PIERCE, PLC
`
`7700 Bonhomme Ave., Suite 400
`
`-
`
`St. Louis, MO 63105
`Tel: (314) 726-7500
`Fax: (314) 726-7501
`mcutler@hdp.com
`bwheelock@hdp.com
`drobinson@hdp.com
`
`Attorneysfor Patent Owner,
`Clearlamp, LLC
`
`/Jason A. En el/ with ermission
`
`Alan L. Barry
`Jason A. Engel
`Benjamin E. Weed
`K&L Gates LLP
`
`70 West Madison Street, Suite 3100
`Chicago, Illinois 60602
`Phone: (312) 372-1121
`Fax: (312) 827-8000
`alan.barry@klgates.com
`jason.engel@klgates.com
`benjamin.weed@klgates.com
`
`Attorneys for Petitioner, LKQ Corporation
`
`
`
`Case 1PR2013-00020
`
`Patent 7,297,364
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 mm
`
`It is hereby certified that on May 9, 2014, a copy of the foregoing'document
`
`was served Via electronic mail upon the following:
`
`Alan L. Barry
`Jason A. Engel
`Benjamin B. Weed
`K&L Gates LLP
`
`70 West Madison Street, Suite 3100
`Chicago, Illinois 60602
`Phone: (312) 372-1121
`Fax: (312) 827-8000
`alan.barry@klgates.com
`jason.engel@klgates.com
`benjamin.weed@klgates.com
`
`Attorneysfor Petitioner, LKQ Corporation
`
`/Matthew L. Cutler/
`
`
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