`
`Filed on behalf of: RPX Corporation
`
`
`
`
`
`Paper No. _______
`Filed: July 14, 2014
`
`By:
`
`
`
`
` Oliver R. Ashe, Jr., Esq.
`ASHE, P.C.
`11440 Isaac Newton Sq. North
`Suite 210
`Reston, VA 20190
`Tel.: (703) 467-9001
`Fax: (703) 467-9002
`E-mail: oashe@ashepc.com
`
`Gregory M. Howison
`HOWISON & ARNOTT, LLP
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, Texas 75240
`Tel.: (972) 680-6050
`Fax: (972) 479-0464
`E-mail: ghowison@dalpat.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION
`INTERNATIONAL CORPORATION,
`Patent Owner
`
`_____________
`
`Case IPR2014-00173
`Patent 7,490,151
`_____________
`
`PETITIONER’S MOTION TO EXPUNGE
`
`
`
`
`
`Table of Contents
`
`
`
`Page
`
`Statement of Precise Relief Request Under § 42.22(a)(1) .............................. 1
`
`Statement of Reasons for Relief Requested Under § 42.22(a)(2) ................... 1
`
`I.
`
`II.
`
`Procedural Background ......................................................................... 1
`A.
`Expungement of All Documents Filed under Seal ................................ 3
`B.
`C. Alternative Expungement of Certain Exhibits and Information ........... 6
`1.
`Exhibit 2040 (Membership Agreement) ..................................... 6
`2.
`Exhibit 2041 (RPX-Sidley Austin Engagement Letter) ............. 7
`3.
`Exhibit 2045 (E-mail Dated October 9, 2013 and Attachments)7
`4.
`Exhibit 2052 (E-mail Dated October 22, 2013) .......................... 8
`5.
`Paper 34 (Patent Owner’s Preliminary Response) ...................... 8
`6.
`Paper 45 (Petitioner’s Response to Board’s March 17, 2014,
`Order) .......................................................................................... 9
`Paper 48 (Decision – Denial of Inter Partes Review) ................ 9
`7.
`Exhibit 2039 (Petitioner’s Response to Discovery) .................. 10
`8.
`Exhibits 2042-44, 2046-51, 2054 (E-mail Correspondence) .... 11
`9.
`10. Citations to Expunged Exhibits ................................................ 13
`III. Conclusion ..................................................................................................... 13
`
`
`
`i
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`
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`
`
`I.
`
`PETITIONER’S MOTION TO EXPUNGE
`
`Statement of Precise Relief Request Under § 42.22(a)(1)
`Petitioner RPX Corporation (“RPX”) moves to expunge from the record all
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`documents (exhibits, pleadings, and orders) that have been filed under seal in this
`
`proceeding. Alternatively, in the event such relief is not granted, RPX moves to
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`expunge from the record in their entirety Exhibits 2040, 2041, 2045, 2052 and
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`certain information contained in Papers 34, 45, 48, and Exhibits 2039, 2042-2044,
`
`2046-2051, 2054 (for which redacted versions are submitted herewith).
`
`RPX has conferred with VirnetX, Inc. (“VirnetX”) and Apple Inc. (“Apple”)
`
`prior to filing this motion. The parties’ positions are delineated below. VirnetX
`
`opposes RPX’s motion in certain respects, but has represented that it does not
`
`intend to file a separate opposition.
`
`II.
`
`Statement of Reasons for Relief Requested Under § 42.22(a)(2)
`A.
`Procedural Background
`RPX’s Petition for Inter Partes Review was accompanied by a motion to
`
`seal two exhibits submitted with the Petition. Thereafter, with the Board’s
`
`approval, RPX and Apple reviewed and redacted various documents (e.g.,
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`telephonic transcripts, pleadings, exhibits, and orders) containing information
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`considered to be confidential by RPX and/or Apple. After consultation with
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`VirnetX, redacted versions of the documents became publicly available on the
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`PRPS. Therefore, this document review process throughout the proceeding has
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 2 of 14
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`generated two categories of documents: 1) unredacted versions designated for
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`access by the “Parties and Board Only” and 2) corresponding redacted versions
`
`designated for public access. See, e.g., Exhibits 2001, 1074-1076; Exhibit 1077,
`
`page 31, line 22 to page 35, line 18.
`
`In the “Decision - Denial of Institution of Inter Partes Review” (Paper 48),
`
`the Board stated the following:
`
`This Decision is sealed due to protected material asserted by
`the parties. After receiving the Decision, the parties jointly may
`request a redacted version of the Decision. After consideration of the
`joint request, or, if no request is filed, the Board will issue a
`subsequent public Decision. [Paper 48, p. 2, footnote 2].
`
`In accordance with the above-identified instructions in the Decision, RPX,
`
`VirnetX and Apple jointly submitted a proposed redacted version of the Decision
`
`which included redactions proposed by Apple and RPX and to which VirnetX had
`
`no objection. (Paper 51).
`
`In the “Order – Conduct of the Proceedings” (Paper 52), the Board stated the
`
`following:
`
`The Board has reviewed the proposed redacted decision and
`holds that it strikes the appropriate balance between the public’s
`interest in maintaining a complete and understandable file history and
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 3 of 14
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`the parties’ interest in protecting sensitive information. Accordingly,
`the Board enters the redacted decision and orders that the redacted
`decision be made available to the public. [Paper 52, p. 2].
`
`RPX submits that the information in the redacted version of the Decision
`
`entered by the Board in Paper 52 is commensurate in form and substance to the
`
`information redacted by RPX and/or Apple in previously submitted documents.
`
`During a conference call on June 10, 2014, the parties and the Board
`
`discussed a procedure whereby RPX, VirnetX and Apple would confer prior to
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`filing this motion to expunge, thereby providing Apple an opportunity to propose
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`expungement of confidential information and providing VirnetX an opportunity to
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`consider any opposition to the motion. (Exhibit 1079, page 24, line 21 to page 26,
`
`line 7).
`
`B.
`Expungement of All Documents Filed under Seal
`Apple has proposed that all the documents that are currently under seal (i.e.,
`
`the unredacted documents presently designated for access by the “Parties and
`
`Board Only”) should be expunged. Apple believes that expungement of those
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`documents would strike the appropriate balance between maintaining a complete
`
`and relevant file history and Apple’s interest in protecting its sensitive
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`information. Further, Apple maintains that this position is consistent with the
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 4 of 14
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`Board’s Order (Paper 52) entering the redacted Decision into the public record
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`(discussed above).
`
`RPX considers Apple’s proposal to be sensible. First, the parties have
`
`already reviewed the information to be expunged and have submitted
`
`corresponding redacted versions for public access. Second, the Board can easily
`
`implement the proposal – the materials designated for access only by the Board
`
`and parties can be expunged while maintaining an intact redacted record for public
`
`access. Finally, the proposal is in accordance with the Board’s determination that
`
`redaction of similar information in the Decision “strikes the appropriate balance
`
`between the public’s interest in maintaining a complete and understandable file
`
`history and the parties’ interest in protecting sensitive information.” (Paper 52, p.
`
`2).
`
`VirnetX’s Opposition: VirnetX opposes Apple’s proposal. VirnetX notes
`
`that “[t]here is a strong public policy in favor of making information filed in an
`
`inter partes review open to the public” and that “the default rule is that all papers
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`filed in an inter partes review are open and available for access by the public.”
`
`Apple, Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90 at
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`pages 45-46 (June 2, 2014). Only “confidential information”—i.e., “trade secret or
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 5 of 14
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`other confidential research, development, or commercial information”—is
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`protected from disclosure. 35 U.S.C. § 316(a)(7). In that regard, VirnetX refers to
`
`the Trial Practice Guide, which “encourages parties to redact sensitive information,
`
`where possible, rather than seeking to seal entire documents.” 77 Fed. Reg. 48756,
`
`48761 (Aug. 14, 2012). VirnetX maintains that Apple must show good cause for
`
`expungement of all documents filed under seal (see 37 C.F.R. § 42.54(a)), but that
`
`Apple has failed to meet its burden. According to VirnetX, Apple makes no effort
`
`to explain why entire documents should be expunged or why redacted versions of
`
`those documents do not address Apple’s concerns. VirnetX also notes that Apple’s
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`proposal to expunge entire documents rather than redact confidential information
`
`contravenes the Board’s goal of balancing “the needs of the parties to submit
`
`confidential information with the public interest in maintaining a complete and
`
`understandable file history for public notice purposes.” Id.
`
`RPX’s Reply: RPX maintains that VirnetX’s opposition is without merit
`
`because it does not address Apple’s proposal. Specifically, neither Apple nor RPX
`
`propose “to expunge entire documents rather than redact confidential information.”
`
`In an ongoing process throughout this proceeding and in which VirnetX actively
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`participated, information that RPX and/or Apple considered confidential was
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 6 of 14
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`redacted from various documents. The unredacted documents were filed for access
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`only by the Board and the parties whereas corresponding redacted versions were
`
`made accessible to the public. Apple’s proposal is simply to remove the
`
`unredacted versions from the PTAB records – the corresponding redacted version
`
`of each document would remain accessible to the public, thereby striking the
`
`appropriate balance between preserving confidential business information and
`
`providing the public with an understandable record.
`
`C. Alternative Expungement of Certain Exhibits and Information
`As noted above, RPX endorses Apple’s proposal to expunge all unredacted
`
`documents that have been submitted under seal while maintaining public access to
`
`the corresponding redacted versions thereof.
`
`In the event the Board does not adopt Apple’s proposal, RPX moves for
`
`expungement of only certain exhibits and information, as explained below.
`
`1.
`Exhibit 2040 (Membership Agreement)
`Exhibit 2040 should be expunged from the record because it contains highly
`
`confidential business information. Additionally, Exhibit 2040 is not relevant to the
`
`Board’s final Decision (Paper 48) and is ancillary to the First Addendum (Exhibits
`
`1073, 2050, 2051), which remain in the record. It would be highly prejudicial to
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 7 of 14
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`RPX’s business to have the terms of this membership agreement become a matter
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`of public record. Apple does not oppose this request. VirnetX does not
`
`necessarily agree with RPX’s reasoning, but does not oppose RPX’s request as
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`outlined in this paragraph.
`
`2.
`Exhibit 2041 (RPX-Sidley Austin Engagement Letter)
`Exhibit 2041 should be expunged from the record because, by its very
`
`nature, it contains privileged and confidential information. The relevant
`
`information, e.g., that RPX retained Sidley Austin LLP (“Sidley Austin”), is
`
`available elsewhere in the record without the need to disclose privileged and
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`confidential information contained in Exhibit 2041. See, e.g., Exhibit 2053, p. 21,
`
`lns. 14-16. It would be highly prejudicial to Sidley Austin and RPX to have the
`
`details of their attorney-client relationship a matter of public record. Apple does
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`not oppose this request. VirnetX does not necessarily agree with RPX’s reasoning,
`
`but does not oppose RPX’s request as outlined in this paragraph.
`
`3.
`
`Exhibit 2045 (E-mail Dated October 9, 2013 and
`Attachments)
`Exhibit 2045 should be expunged from the record because it contains
`
`various RPX business data (market analyses, business strategies, client-specific
`
`financial data, etc.) that are highly confidential business information that are
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 8 of 14
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`unrelated to the issues raised in the IPR proceedings. Notably, the e-mail and its
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`attachments have always been designated and treated as RPX confidential
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`information (see, e.g., original headers/footers in Exhibit 2045). The relevant
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`information, e.g., that RPX offered Apple the ability to participate in its Patent
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`Quality Program, is available elsewhere in the record without the need to disclose
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`confidential business information. See, e.g., Exhibits 1073, 2050, 2051. Apple
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`does not oppose this request. VirnetX does not necessarily agree with RPX’s
`
`reasoning, but does not oppose RPX’s request as outlined in this paragraph.
`
`4.
`Exhibit 2052 (E-mail Dated October 22, 2013)
`Exhibit 2052 should be expunged from the record because it contains
`
`confidential business information that is not material to the Board’s final Decision
`
`(Paper 48) or any position advanced by VirnetX. Apple does not oppose this
`
`request. VirnetX does not necessarily agree with RPX’s reasoning, but does not
`
`oppose RPX’s request as outlined in this paragraph.
`
`5.
`Paper 34 (Patent Owner’s Preliminary Response)
`Certain information should be expunged from page 4 of the Patent Owner’s
`
`Preliminary Response (Paper 34) as shown in the attached proposed redacted
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`version of the document. The information is confidential business information that
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 9 of 14
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`is not material to the Board’s final Decision (Paper 48). Apple does not oppose
`
`this request. VirnetX does not necessarily agree with RPX’s reasoning, but does
`
`not oppose RPX’s request as outlined in this paragraph.
`
`6.
`
`Paper 45 (Petitioner’s Response to Board’s March 17, 2014,
`Order)
`Certain information should be expunged from page 6 of the Petitioner’s
`
`Response to Board’s March 17, 2014 Order (Paper 45) as shown in the attached
`
`proposed redacted version of the document. The information is confidential
`
`business information that is not material to the Board’s final Decision (Paper 48).
`
`Apple does not oppose this request. VirnetX does not necessarily agree with
`
`RPX’s reasoning, but does not oppose RPX’s request as outlined in this paragraph.
`
`7.
`Paper 48 (Decision – Denial of Inter Partes Review)
`As set forth in Apple’s proposed redactions submitted on June 23, 2014,
`
`certain information should be expunged from pages 8-9 of the Board’s final
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`Decision (Paper 48) as shown in the attached proposed redacted version of the
`
`document. The information is confidential business information that is not
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`material to the Board’s final Decision (Paper 48) or any position advanced by
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`VirnetX. Apple does not oppose this request. VirnetX does not necessarily agree
`
`with RPX’s reasoning, but does not oppose RPX’s request as outlined in this
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 10 of 14
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`paragraph.
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`8.
`Exhibit 2039 (Petitioner’s Response to Discovery)
`Certain information should be expunged from Appendix A of the
`
`Petitioner’s Response to Discovery (Exhibit 2039) as shown in the attached
`
`proposed redacted version of the document. The information is not relied upon by
`
`VirnetX and the documents listed therein have not been marked as exhibits in the
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`proceedings.
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`RPX also moves to expunge information identifying specific individuals in
`
`Appendices A-C. The specific roles, responsibilities, and activities of individual
`
`RPX employees is not a matter of public record and, therefore, their names are
`
`considered to be confidential business information. Significantly, the identity of
`
`individual employees is not material to the Board’s final Decision (Paper 45) or
`
`any position advanced by VirnetX. In the interest of providing an understandable
`
`public record, where the name of a specific individual has been expunged, the
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`proposed replacement exhibits have been annotated with the corporate affiliation
`
`of the individual (i.e., “Apple” or “RPX”). Therefore, the proposed redaction of
`
`individual names and subsequent annotation with company affiliation is believed
`
`to strike the appropriate balance between preserving confidential business
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 11 of 14
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`information and providing the public with an understandable record.
`
`Apple does not oppose this request.
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`VirnetX’s Opposition: VirnetX opposes RPX’s request to expunge
`
`information identifying specific individuals. VirnetX argues that RPX has not met
`
`its burden of showing good cause that the names of individuals require redaction
`
`because RPX has failed to show that this information constitutes “confidential
`
`information” under the Protective Order. Specifically, VirnetX argues that RPX
`
`has failed to show that the names of individuals are “trade secret or other
`
`confidential research, development, or commercial information.” See 77 Fed. Reg.
`
`48756, 48761 (Aug. 14, 2012). Although VirnetX does not necessarily agree with
`
`RPX’s reasoning, VirnetX does not oppose the remainder of RPX’s request.
`
`9.
`Exhibits 2042-44, 2046-51, 2054 (E-mail Correspondence)
`Certain information identifying specific individuals and their contact
`
`information should be expunged from Exhibits 2042-2044, 2046-2051, and 2054
`
`as shown in the attached proposed redacted versions of the documents. The
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`specific roles, responsibilities and activities of individual RPX employees is not a
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`matter of public record and, therefore, their names are considered to be
`
`confidential business information. Significantly, the identity of individual
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 12 of 14
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`employees is not material to the Board’s final Decision (Paper 48) or any position
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`advanced by VirnetX. In the interest of providing an understandable public record,
`
`where the name of a specific individual has been expunged, the proposed
`
`replacement exhibits have been annotated with the corporate affiliation of the
`
`individual (i.e., “Apple” or “RPX”). Therefore, the proposed redaction of
`
`individual names and subsequent annotation with company affiliation is believed
`
`to strike the appropriate balance between preserving confidential business
`
`information and providing the public with an understandable record.
`
`Apple does not oppose this request.
`
`VirnetX’s Opposition: VirnetX opposes RPX’s request. VirnetX argues
`
`that RPX has not met its burden of showing good cause that information
`
`identifying specific individuals and their contact information require redaction
`
`because RPX has failed to show that this information constitutes “confidential
`
`information” under the Protective Order. See 77 Fed. Reg. 48756, 48761 (Aug. 14,
`
`2012).
`
`Additionally, the lower portion of Exhibit 2046 should be expunged as
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`shown in the attached proposed redacted version of the exhibit. The information is
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`RPX business confidential, not material to the Board’s final Decision, and not
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 13 of 14
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`relied upon by VirnetX. Apple does not oppose this request. VirnetX does not
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`necessarily agree with RPX’s reasoning, but does not oppose RPX’s request as
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`outlined in this paragraph.
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`10. Citations to Expunged Exhibits
`There are several instances where documents that RPX and/or Apple seek to
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`expunge are cited in the parties’ pleadings and/or the PTAB’s orders. In Ikaria,
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`Inc. v. Geno LLC, IPR2013-00253, Paper 22 at page 2 (April 24, 2014), the PTAB
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`held that citations to an expunged exhibit would not be removed from the
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`pleadings and orders, even though the exhibit itself was expunged. In accordance
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`with this guidance, RPX seeks to expunge certain exhibits that contain business
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`confidential and/or privileged information and the disclosure of such information
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`in the pleadings and orders, but does not seek to expunge citations to such
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`evidence in the pleadings or PTAB orders. However, if the PTAB desires the
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`citations to expunged exhibits be redacted, RPX will promptly submit appropriate
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`papers upon the PTAB’s request. Neither Apple nor VirnetX object to this
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`proposal.
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`III. Conclusion
`In conclusion, RPX moves to expunge from the record all documents
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`Petitioner’s Motion to Expunge
`Case IPR2014-00173
`Page 14 of 14
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`(exhibits, pleadings, and orders) that have been filed under seal in this proceeding.
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`Alternatively, in the event such relief is not granted, RPX moves to expunge from
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`the record in their entirety Exhibits 2040, 2041, 2045, 2052 and certain information
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`contained in Papers 34, 45, 48, and Exhibits 2039, 2042-2044, 2046-2051, 2054
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`(for which redacted versions are submitted herewith for access by the Board and
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`parties only pending the Board’s decision on the motion).
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`July 14, 2014
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`Respectfully submitted,
`
` /Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner RPX
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`ASHE, P.C.
`11440 Isaac Newton Square North
`Suite 210
`Reston, VA 20190
`Tel.: 703-467-9001
`E-mail: oashe@ashepc.com
`
`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the paper entitled
`“PETITIONER’S MOTION TO EXPUNGE” was served this 14th day of July,
`2014, by e-mail, on the following counsel of record for Patent Owner and Apple,
`Inc.:
`
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street, NW
`Washington, DC 20005
`Phone: (202)551-1996
`Fax: (202)551-0496
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street, NW
`Washington, DC 20005
`Phone: (202)551-1990
`Fax: (202)551-0490
`E-mail: naveenmodi@paulhastings.com
`
`Jeffrey P. Kushan
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`E-mail: jkushan@sidley.com
`
`
`
`
`July 14, 2014
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`
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`
`
` /Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr.
`
`
`
`
`
`
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