`571-272-7822 Date Entered: 4 November 2013
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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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`ABB INC.
`Petitioner,
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`v.
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`ROY-G-BIV CORPORATION
`Patent Owner
`____________
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
`
`
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`Before, THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
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`GIANNETTI, Administrative Patent Judge.
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`
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`DECISION
`Motion to Seal
`37 C.F.R. §§ 42.1 and 42.54
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`
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`Petitioner, ABB Inc., has filed a motion to seal certain documents produced
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`by Patent Owner, Roy-G-Biv Corporation. Paper 43 (“Motion”). The documents
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`consist of a deposition transcript (Ex. 1129) of Patent Owner’s founder and
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`chairman, David W. Brown, Mr. Brown’s weekly status reports from 1994 and
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`1995 (Exs. 1110-16, 1122-26), an additional set of time records for EMC Project
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`containing time entries (Ex. 1128), and agenda materials from a June 1995 officer
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`meeting attended by Mr. Brown (Ex. 1120). For the reasons that follow, we deny
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`Petitioner’s motion.
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`DISCUSSION
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`The Board’s standards for granting motions to seal are discussed in Garmin
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`International v. Cuozzo Speed Technologies, LLC, IPR2012-00001 (Paper 34,
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`March 14, 2013). In summary, there is a strong public policy for making all
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`information filed in inter partes review proceedings open to the public. Id. The
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`standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. The
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`moving party bears the burden of showing that the relief requested should be
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`granted. 37 C.F.R. § 42.20(c). This includes showing that the information is truly
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`confidential, and that such confidentiality outweighs the strong public interest in
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`having an open record. In addition, a motion to seal is required to include a
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`certification that the moving party has in good faith conferred, or attempted to
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`confer, with the opposing party in an effort to come to an agreement on the scope
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`of the protection sought. Garmin, supra at 3.
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`Petitioner, as the moving party, has failed to carry this burden. The issue of
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`Mr. Brown’s diligence in 1994-95 was injected into this proceeding by Patent
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`Owner, to overcome certain references relied on by Petitioner. In support,
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`Petitioner submitted Mr. Brown’s declaration (Ex. 2010) and, as corroboration, his
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`2
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`1994-95 time records (Exs. 2010-3 – 2010-6). Neither Mr. Brown’s declaration
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`nor the related documents were sealed. The documents that are the subject of this
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`motion relate to the activities of Mr. Brown in that same period. Motion 2.
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`Petitioner relies on them to rebut Patent Owner’s allegation of diligence. Neither
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`Petitioner, nor Patent Owner, explain why some documents concerning Mr.
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`Brown’s activities from that period should be sealed, when others are not.
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`Upon reviewing the documents, it is difficult to see how summary
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`descriptions of Mr. Brown’s activities from seventeen years ago are confidential
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`today. There is no proof in the record that the information contained in the
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`documents is confidential, only the fact that they were designated confidential in
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`the district court proceeding. That is not sufficient, especially when weighed
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`against the public’s access rights to the evidence relied on by the parties.
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` Finally, there is no indication that the parties have conferred to reach
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`agreement on the scope of the protection, if any, that is necessary to protect any
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`confidential information. See 37 C.F.R. § 42.54. The certification provided by
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`Petitioner indicates only that Patent Owner does not oppose the motion.
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`The parties are, therefore, directed to meet and confer on the issues raised by
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`this decision, particularly, whether there is a need to seal the documents relied on
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`by Petitioner when other, similar documents relied on by Patent Owner are not
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`sealed.
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`In view of the foregoing, it is therefore
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`ORDERED that Petitioner’s Motion to Seal is denied;
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`FURTHER ORDERED that Exhibits 1110-16, 1120, and 1122-26, and 1128
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`submitted under seal, shall be made public in ten business days from the date of
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`this order;
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`3
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`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
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`FURTHER ORDERED that within five business days from the date of this
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`order the parties shall meet and confer (in person or by telephone) to discuss in
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`good faith the maintenance by Patent Owner of its confidentiality claim for the
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`documents identified above. The results of this conference shall be reported to
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`Board, promptly, by email.
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`PETITIONER:
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`Richard D. McLeod
`Michael D. Jones
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`michael.jones@klarquist.com
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`
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`PATENT OWNER:
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`Richard T. Black
`Joel B. Ard
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
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