Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER’S MOTION TO SEAL UNDER 37 C.F.R. § 42.54
`
`
`U.S. Patent No. 8,217,902
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`WINTEK CORPORATION
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS INC.
`Patent Owner
`________________
`
`Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`PATENT OWNER’S MOTION TO SEAL UNDER 37 C.F.R. § 42.54
`
`
`
`Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`I.
`
`Introduction
`
`Patent Owner TPK Touch Solutions Inc. (“TPK”) hereby submits this
`
`Motion to Seal Exhibit 2019, which is being filed in connection with its Patent
`
`Owner Response. Both the Patent Owner Response and Exhibit 2019 (along with
`
`various other evidentiary exhibits) are being filed concurrently with this Motion.
`
`As explained in more detail below, the document being submitted as Exhibit 2019
`
`includes
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`sensitive business
`
`confidential
`
`information pertaining to TPK’s
`
`proprietary touch-screen technology and, therefore, good cause exists for placing
`
`this document under seal.
`
`Patent Owner has conferred with Petitioner Wintek Corporation (“Wintek”)
`
`regarding the scope of the proposed protective order in this proceeding. As
`
`explained below, while Petitioner has agreed to the default protective order set
`
`forth in the Office Patent Trial Practice Guide (77 Fed. Reg. 48771 (Aug. 14,
`
`2012)), Patent Owner also proposed a few changes to one provision in the default
`
`order and has not yet received Petitioner’s response concerning these requested
`
`modifications.
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`II.
`
`Good Cause Exists for Sealing Certain Confidential Information
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`In determining whether to grant a Motion to Seal, the Board must “strike a
`
`balance between the public's interest in maintaining a complete and understandable
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`file history and the parties' interest in protecting truly sensitive information.” Id. at
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`2
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`48760. “A party intending a document or thing to be sealed shall file a motion to
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`seal concurrent with the filing of the document or thing to be sealed.”
`
`37 C.F.R.
`
`§ 42.14. “The rules identify confidential information in a manner consistent with
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`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.” 37 C.F.R. § 42.54. “The Board may, for good cause, issue an order
`
`to protect a party or person from disclosing confidential information.” Id.
`
`Exhibit 2019 is an evidentiary exhibit being filed concurrently with this
`
`motion, and includes information that Patent Owner maintains is sensitive and
`
`confidential business technical, research, product development, and/or strategy
`
`information related to Patent Owner’s products and technology. In particular, this
`
`one-page document consists of screenshots from software programs used internally
`
`by Patent Owner, which show certain confidential designs and implementations for
`
`the circuitry and components in Patent Owner’s proprietary touch-screens. As
`
`such, this document contains non-public, highly-sensitive, confidential detailed
`
`descriptions of Patent Owner’s products and technology. Moreover,
`
`this type of
`
`information was also covered by the definitions for “HIGHLY CONFIDENTIAL –
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`ATTORNEY’S EYES ONLY” and/or “HIGHLY CONFIDENTIAL – SOURCE
`
`CODE” under the Protective Order in the underlying district court litigation in the
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`U.S. District Court for the Northern District of California, San Francisco Division
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`3
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`(Civil Case No. 3:13-cv-02218-JST). Thus, Patent Owner respectfully submits that
`
`good cause exists for filing this exhibit under seal in this proceeding.
`
`III. Certification of Non-Publication
`
`On behalf of Patent Owner, undersigned counsel certifies the information
`
`sought to be sealed by this Motion to Seal has not, to their knowledge, been
`
`published or otherwise made public. Efforts to maintain the confidentiality of this
`
`type of information have been undertaken by Patent Owner and Petitioner in the
`
`related district court proceeding between the parties.
`
`IV. Certification of Conference with Opposing Party Pursuant to 37 C.F.R.
`§ 42.54
`Patent Owner has in good faith conferred with Petitioner as to the scope of
`
`the proposed Protective Order. Petitioner has stated to Patent Owner that it agrees
`
`to the provisions in the Board’s Default Protective Order set forth in the Office
`
`Patent Trial Practice Guide (77 Fed. Reg. 48771 (Aug. 14, 2012)). As described
`
`in detail below, Patent Owner has also requested a few changes with respect to the
`
`provision in the Default Protective Order setting forth the list of persons who may
`
`receive access to confidential materials in order to harmonize this provision with
`
`the corresponding provisions in the Protective Order entered in the related district
`
`court litigation. As of filing of this Motion, however, Patent Owner has not yet
`
`4
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`received a response from Petitioner concerning these proposed changes to the
`
`protective order.
`
`V.
`
`Proposed Protective Order
`Patent Owner respectfully requests that its proposed protective order be
`
`entered in place of the Default Protective Order in this proceeding. A clean copy of
`
`Patent Owner’s proposed protective order is submitted herewith as Exhibit 2024.
`
`Additionally, submitted as Exhibit 2025 is a redlined version of the proposed
`
`order, which illustrates the changes from the Default Protective Order.
`
`As shown in the redlined version, Patent Owner’s proposed Protective Order
`
`is substantially similar to the Default Protective Order. Each of the changes to the
`
`default order relate to modifying the list of persons who may receive access to the
`
`materials designated as confidential information in this proceeding to maintain
`
`consistency with the related district court proceeding. Specifically, only three
`
`substantive changes have been made to the default order:
`
`First: Paragraph 2 is amended such that the entry “Parties. Persons who are
`
`owners of a patent involved in the proceeding and other persons of are named
`
`parties to the proceeding” is deleted from the listing of who may receive
`
`confidential information under the protective order. The effect of this deletion is
`
`that employees and principals of TPK and Wintek may not receive access to the
`
`confidential information. This harmonizes this proceeding’s protective order with
`
`5
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`
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`the Protective Order that has been entered in the underlying litigation, which
`
`restricts party personnel from receiving any material produced as “Confidential”
`
`information (including any “HIGHLY CONFIDENTIAL – ATTORNEY’S EYES
`
`ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information) in that
`
`litigation. “Confidential” information is defined in the district court’s Protective
`
`Order as “information (regardless of how it is generated, stored, or maintained) or
`
`tangible things that qualify for protection under Federal Rule of Civil Procedure
`
`26(c).” Further, the restriction equally affects both parties, who are represented by
`
`outside counsel in this proceeding. Thus, Patent Owner respectfully submits that
`
`good cause exists for this change.
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`Second: Similarly, Paragraph 2 is also amended such that the entry “In house
`
`counsel: In house counsel of a party” is also deleted from Paragraph 2’s listing of
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`who may receive confidential information. Like party personnel, the district court’s
`
`Protective Order
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`restricts in-house counsel
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`from any material produced as
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`“Confidential” information in that litigation.. Thus, like the change described in the
`
`preceding section, this change seeks to harmonize this proceeding’s protective
`
`order with the related district court Protective Order. Accordingly, Patent Owner
`
`respectfully submits that good cause exists for this change.
`
`Third: Paragraph 2 is further amended such that the entry “other than in
`
`house counsel and in house counsel’s support staff,” is also deleted from Paragraph
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`6
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`2(E)’s discussion of other employees of the parties. This change merely seeks to
`
`make this subsection of the proposed protective order consistent with the changes
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`discussed directly above (i.e., the removal of “in house counsel” from the list of
`
`who may receive
`
`confidential
`
`information). Accordingly, Patent Owner
`
`respectfully submits that good cause exists for this change.
`
`VI. Conclusion
`
`For the foregoing reasons, Patent Owner respectively requests that
`
`its
`
`proposed protective order be entered in this proceeding in place of the default
`
`protective order, and that Exhibit 2019 be placed under seal.
`
`Date: June 27, 2014
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti, Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`David Bilsker, Reg. No. 39,611
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`7
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`
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
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`General Tel: (415) 875-6600
`Direct Tel: (415) 875-6432
`Fax: (415) 875-6700
`Email: davidbilsker@quinnemanuel.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
`
`8
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`
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`Case IPR2013-00568
`U.S. Patent No. 8,217,902
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION TO SEAL UNDER 37 C.F.R. § 42.54 was served electronically via e-
`
`mail on June 27, 2014, in its entirety on the following:
`
`Joseph E. Palys
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Joseph.palys@finnegan.com
`
`Date: June 27, 2014
`
`Abhay A. Watwe
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Abhay.watwe@finnegan.com
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorneys for Patent Owner – TPK Touch
`Solutions Inc.
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