`571-272-7822
`
`
`
`
`
`
`
`
` Paper 42
`
`
`
` Entered: June 30, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L. M. ERICSSON
`Patent Owner
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`
`Before KARL D. EASTHOM and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Motions to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`INTRODUCTION
`
`Four motions to seal are pending in this proceeding:
`
`Paper 10: Telefonaktiebolaget L.M. Ericsson (“Patent Owner”)
`
`moves to seal Exhibit 2009. Paper 10, unredacted; Paper 12, redacted.
`
`Exhibit 2009 is designated “Parties and Board Only.” Patent Owner
`
`contends that Exhibit 2009 contains confidential business information
`
`relating to its license negotiations with a number of parties and it remains
`
`confidential in a co-pending legal proceeding. Petitioner did not file an
`
`opposition to Patent Owner’s Motion to Seal.
`
`Paper 17: Broadcom Corporation (“Petitioner”) moves to seal (1) the
`
`portion of its Opposition to Patent Owner’s Motion for Additional Discovery
`
`(“Opposition”) (Paper 19, unredacted)(Paper 18, redacted); (2) the
`
`Declaration of David Djavaherian (Exhibit 1007); and (3) the portion of its
`
`Opposition (Paper 19) that addresses Exhibit 1007. Paper 17, unredacted;
`
`Paper 16, redacted. Paper 19 and Exhibit 1007 are designated as “Parties
`
`and Board Only.” Petitioner contends that its Opposition references Exhibit
`
`2009, which Patent Owner has moved to seal. Petitioner also contends that
`
`Exhibit 1007 contains confidential statements regarding Broadcom’s
`
`relationship with the defendants in Ericsson Inc. v. D-Link Corp. et al., Civil
`
`Action No. 10-cv-473 (E.D. Tex.) Patent Owner did not file an opposition
`
`to Petitioner’s motion to seal.
`
`Paper 26: Petitioner moves to seal Patent Owner’s Emergency
`
`Motion for Relief from the Protective Order, 6:10-cv-473 (E.D. Tex., March
`
`8, 2013) (Exhibit 1008). Paper 26. Petitioner also contends that Exhibit
`
`1008 contains confidential statements regarding Broadcom’s relationship
`
`with the defendants in Ericsson Inc. v. D-Link Corp. et al., Civil Action No.
`
`2
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`10-cv-473 (E.D. Tex.) Patent Owner did not file an opposition to
`
`Petitioner’s motion to seal.
`
`Paper 36: Patent Owner moves to seal the portion of its Patent Owner
`
`Response (Paper 40, unredacted)(Paper 41, redacted) that addresses Exhibit
`
`2009, which Patent Owner previously moved to seal. Paper 36, unredacted;
`
`Paper 37, redacted. Patent Owner contends that its Patent Owner Response
`
`references confidential Exhibit 2009. Petitioner did not file an opposition to
`
`Patent Owner’s Motion to Seal.
`
`The parties have agreed to the Board’s default protective order. Paper
`
`17, 4; Paper 26, 2; Paper 36, 3. Accordingly, the parties must file a joint
`
`Default Protective Order with a signed Standard Acknowledgement for
`
`Access to Protective Order Materials. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14, 2012) (“TPG”). As a
`
`consequence, the Default Protective Order will govern the treatment and
`
`filing of confidential information in this proceeding.
`
`DISCUSSION
`
`There is a strong public policy for making all information filed in a
`
`quasi-judicial administrative proceeding open to the public, especially in an
`
`inter partes review which determines the patentability of claims in an issued
`
`patent and therefore affects the rights of the public. Under 35 U.S.C.
`
`§ 316(a)(1), the default rule is that all papers filed in an inter partes review
`
`are open and available for access by the public; and a party may file a
`
`concurrent motion to seal and the information at issue is sealed pending the
`
`outcome of the motion.
`
`Similarly, 37 C.F.R. § 42.14 states the following:
`
`3
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`The record of a proceeding, including documents and things,
`shall be made available to the public, except as otherwise
`ordered. A party intending a document or thing to be sealed
`shall file a motion to seal concurrent with the filing of the
`document or thing to be sealed. The document or thing shall be
`provisionally sealed on receipt of the motion and remain so
`pending the outcome of the decision on the motion.
`
`It is, however, only “confidential information” that is protected from
`
`disclosure. 35 U.S.C. § 316(a)(7)(“The Director shall prescribe regulations -
`
`- . . . providing for protective orders governing the exchange and submission
`
`of confidential information”). In that regard, the TPG at 48,760 provides the
`
`following guidance:
`
`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. Patent Owner, as the moving party, has the burden of proof
`
`in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c). We
`
`need to know why the information sought to be sealed constitutes
`
`confidential information. A motion to seal is required to include a proposed
`
`protective order and a certification that the moving party has in good faith
`
`conferred or attempted to confer with the opposing party in an effort to come
`
`to an agreement as to the scope of the proposed protective order for this inter
`
`partes review. 37 C.F.R. § 42.54.
`
`4
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`An expectation exists that confidential information will be made
`
`public where the existence of the information is identified in a final written
`
`decision following a trial. See Office Patent Trial Practice Guide at 77 Fed.
`
`Reg. 48,756, 48,761 (Aug. 14, 2012)). “After . . . a final judgment . . . , a
`
`party may file a motion to expunge confidential information from the trial.”
`
`37 C.F.R. § 42.56.
`
`Upon review of the parties’ papers, we are persuaded that good cause
`
`exists to have the requested materials remain under seal at least until a final
`
`judgment. We agree with Patent Owner that the existence of Exhibit 2009
`
`contains, at least in part, confidential information pertaining to Patent
`
`Owner’s business, and that the document should continue to be treated as
`
`confidential under the terms of the protective order. As to Exhibits 1007 and
`
`1008, we agree with Petitioner that the documents contain, at least in part,
`
`confidential information pertaining to Patent Owner’s business, and that the
`
`documents should continue to be treated as confidential under the terms of
`
`the protective order. Finally, the unredacted papers referencing Exhibits
`
`2009 and 1007—i.e., Petitioner’s Opposition (Paper 19) and Patent Owner’s
`
`Patent Owner Response (Paper 40)—reference the same confidential
`
`information, and the redactions in corresponding Papers 18 and 41 are
`
`narrowly tailored to redact only confidential information.
`
`The motions to seal will be granted conditionally until a final
`
`judgment on the conditions that if a final written decision substantively
`
`relies on any information in a sealed document, if the information otherwise
`
`becomes publically available, or for other reasons arising from new
`
`circumstances, the information may be unsealed by an Order of the Board or
`
`may become public if the parties do not to move timely to expunge it
`
`5
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`pursuant to 37 C.F.R. § 42.56. See also TPG at 48,761 ¶ 6 (Expungement of
`
`Confidential Information).
`
`It is
`
`ORDER
`
`ORDERED that the default protective order is entered and governs the
`
`treatment and filing of the confidential information of this proceeding;
`
`FURTHER ORDERED that counsel for each of the parties file a
`
`signed acknowledgment of the Default Standing Protective Order;
`
`FURTHER ORDERED that the parties’ motions to seal (Papers 10,
`
`17, 26, and 36) are granted conditionally; and
`
`FURTHER ORDERED that Exhibits 1007, 1008, and 2009 and
`
`(unredacted) Papers 11, 17, 19, 36, and 40 shall remain under seal in their
`
`entirety as “Parties and Board Only,” and will be kept under seal pursuant to
`
`the conditions outlined above.
`
`
`
`6
`
`
`
`Case IPR2013-00601
`Patent 6,772,215
`
`
`For PETITIONER:
`
`Dominic E. Massa
`Michael A. Diener
`WILMER CUTLER PICKERING HALE AND DORR LLP
`dominic.massa@wilmerhale.com
`michael.diener@wilmerhale.com
`
`For PATENT OWNER:
`
`Peter J. Ayers
`J. Christopher Lynch
`LEE & HAYES PLLC
`peter@leehayes.com
`chris@leehayes.com
`
`7
`
`