Trials@uspto.gov
`571-272-7822
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`Paper 61
`Date: September 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`RPX CORP.,
`Petitioner,
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`v.
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`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00173
`Patent 7,490,151
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
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`EASTHOM, Administrative Patent Judge.
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` DECISION
`Motion to Expunge
`37 C.F.R. § 42.56
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`IPR2014-00173
`Patent 7,490,151
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`INTRODUCTION
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`On July 14, 2014, Petitioner, RPX Corp. (“RPX), filed a Motion to Expunge
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`(“Motion”), requesting two alternatives: 1) to expunge from the record all
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`documents that have been filed under seal in this proceeding, or 2) to expunge, in
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`their entirety, Exhibits 2040, 2041, 2045, and 2052, and to redact certain
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`information contained in Papers 34, 45, and 48, and in Exhibits 2039, 2042–2044,
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`2046–2051, and 2054. Paper 53.
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`With its Motion, as part of the second alternative, Petitioner submitted
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`redacted versions of Paper 34 (Paper 54), Paper 45 (Paper 55) and Paper 48 (Paper
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`56) and Exhibits 2039, 2042–2044, 2046–2051, and 2054. In addition to the newly
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`redacted version of Paper 45 (Paper 55) and of Paper 48 (Paper 56), the record
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`includes a previously redacted version of Paper 45 (Paper 46) and of Paper 48
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`(Paper 51). The record also includes previously redacted and sealed versions of
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`many other exhibits and papers.
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`In our Decision Denying Institution (Paper 48), we determined that Apple
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`Inc. (“Apple”) was an unnamed real-party-in interest in this proceeding. Apple,
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`from whom VirnetX sought and obtained discovery, has participated throughout
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`the proceeding with the named parties in determining what information to seal and
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`redact. In its Motion, RPX outlines the positions by Apple and VirnetX
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`concerning its opposition against, or agreement with, RPX’s Motion. (The Motion
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`indicates that Apple and VirnetX communicated their respective positions to RPX,
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`rather than filing papers.)
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`Under second alternative, the public will retain much more information than
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`it would retain under the first alternative. Petitioner’s Motion under the first
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`alternative is denied and under the second alternative is granted.
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`2
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`IPR2014-00173
`Patent 7,490,151
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`PUBLIC POLICY
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`A strong public policy exists for making all information filed in a quasi-
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`judicial administrative proceeding open to the public, especially in an inter partes
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`review, which determines the patentability of claims in an issued patent and
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`therefore affects the rights of the public.
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`Only “confidential information” is protected from disclosure. 35 U.S.C.
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`§ 316(a)(7)(“The Director shall prescribe regulations . . . providing for protective
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`orders governing the exchange and submission of confidential information”). The
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012)
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`(“TPG”), provides guidance:
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`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.
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`Granting a motion to seal “confidential information” requires a showing of
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`“good cause” 37 C.F.R. § 42.54 during a proceeding. A parallel rule, 37 C.F.R.
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`§ 42.56, implies the same standard applies to a motion to expunge “confidential
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`information” “[a]fter denial of a petition to institute a trial or after final judgment
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`in a trial.” The movant generally has the burden of proof in showing entitlement to
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`the requested relief. 37 C.F.R. § 42.20(c). In this case, RPX must show that any
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`information sought to be expunged constitutes confidential information, and that
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`RPX’s interest in expunging it outweighs the public’s interest in maintaining a
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`complete and understandable file history of this inter partes review.
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`3
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`IPR2014-00173
`Patent 7,490,151
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`REQUEST TO EXPUNGE
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`RPX’s First Alternative
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`RPX does not carry its burden under the first proposed alternative. RPX and
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`Apple essentially maintain that expunging from the record all documents that have
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`been filed under seal in this proceeding, strikes the appropriate balance, because
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`the parties and Apple previously balanced the interests and agreed upon the
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`information to be sealed and redacted. In addition, according to RPX and Apple,
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`the Board easily can implement the proposal. See Motion 3–4.
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`VirnetX opposes, arguing that Apple has not shown good cause. See id. at 5.
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`When the documents were sealed and filed initially, the Board had not weighed the
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`public interest from the perspective of creating a complete and final record, after
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`rendering its Decision Denying Institution. RPX does not maintain that the parties
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`and Apple weighed the public interest in reaching its agreements as to sealing and
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`redacting the multitude of papers and exhibits during the proceeding.
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`RPX is correct that the Board reasoned that the previously redacted version
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`of the Decision Denying Institution (Paper 51) struck the appropriate balance. See
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`Motion 2–3 (citing Paper 52). Nevertheless, in rendering our Order (Paper 52)
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`concerning the redaction of the Decision Denying Institution, we implicitly
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`considered the public’s interest in having immediate access to the Decision
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`Denying Institution, and struck a balance that favored keeping more information
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`confidential, at least for a limited time, to ensure that Apple’s and RPX’s interests
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`were protected.
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`Now, however, from the perspective of creating a final, permanent, public
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`record, including all the exhibits and papers sought to be expunged and redacted,
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`and taking into account the parties interests, including real party-in-interest
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`Apple’s, we determine that RPX has not met its burden on the first alternative.
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`Expunging all previously sealed information, and retaining the previously redacted
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`IPR2014-00173
`Patent 7,490,151
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`versions in their place, would result in less than “a complete and understandable
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`file history” and result in an overly inclusive expungement of information that
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`RPX does not show is “truly sensitive.” See TPG at 48,760.
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`Accordingly, we deny RPX’s first requested alternative: the request to
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`expunge all papers and exhibits filed under seal.
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`RPX’s Second Alternative
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`Exhibits 2039, 2042–2044, 2046–2051, and 2054
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`RPX requests the removal of certain individual names from these exhibits,
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`and in some of the exhibits, contact information. RPX proposes generally
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`replacing the redacted names and/or contact information with the entity associated
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`with the individual (i.e., either “Apple” or “RPX”). RPX makes further and similar
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`showings with respect to requesting redaction of confidential information from a
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`portion of Exhibit 2046. Apple does not oppose the requests. See Motion 11–13.
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`VirnetX argues that RPX did not show good cause, allegedly because
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`individual names are not in the nature of a “‘trade secret or other confidential
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`research, development, or commercial information.’” See Motion 11 (quoting TPG
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`at 43,761). See id. at 12–13.
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`RPX maintains that its employee’s names and contact information, and other
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`information specified, are confidential. See Motion 11. The Board’s Decision
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`Denying Institution does not rely on any such information, that information is not
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`required for a complete understanding of the record, and VirnetX does not explain
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`how the public has a discernable interest in these specific names and contact
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`information, or the information sought to be redacted from Exhibit 2046. On
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`balance, RPX shows good cause to retain, as public, the redacted versions of
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`Exhibits 2039, 2042–2044, 2046–2051, and 2054, and to expunge the sealed
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`versions thereof.
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`IPR2014-00173
`Patent 7,490,151
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`Exhibits 2040, 2041, 2045, and 2052
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`RPX asserts that information in Exhibit 2040, detailing Apple’s Membership
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`Agreement with RPX, appears substantially elsewhere in the record as Exhibits
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`1073, 2050, and 2051, that it contains highly prejudicial information, and that it is
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`not necessary to understand the record. RPX asserts that information in Exhibit
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`2041, an attorney-client engagement letter, contains privileged and confidential
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`material that is not necessary to understand the record. RPX asserts that
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`information in Exhibit 2045 contains business data, including market analysis,
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`business strategies, and client-specific financial data. RPX asserts that information
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`in Exhibit 2052, an email, contains confidential business information. RPX moves
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`to redact the noted information. See Motion 6–9.
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`The record supports RPX’s motion. VirnetX and Apple do not oppose. The
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`information is not material to the Decision Denying Institution or necessary for a
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`complete understanding of the record. See id. On balance, RPX shows good cause
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`to expunge Exhibits 2040, 2041, 2045, and 2052.
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`Paper 48
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`RPX moves to redact a single sentence from the Decision Denying
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`Institution, Paper 48. Compare Paper 48 (unredacted sealed version) with Paper 56
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`(proposed redacted version). See Motion, 9–10. RPX asserts that the sentence
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`represents confidential business information. The sentence relates to marketing
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`strategy by RPX, although it also provides evidentiary citations. The sentence is
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`not required for a complete understanding of the record and is not material to the
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`Decision Denying Institution. VirnetX and Apple do not oppose the redaction. On
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`balance, RPX shows good cause to retain the most recently redacted version of
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`Paper 48, Paper 56, as public, and to expunge the sealed version, Paper 48.
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`IPR2014-00173
`Patent 7,490,151
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`Papers 34 and 45
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`RPX moves to redact a single sentence from Paper 34 and certain
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`information from a single page in Paper 45. See Motion, 8–9. RPX asserts that the
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`redactions include confidential business information. Id. The record supports
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`RPX. One redaction relates to specific fees, and another relates to specific
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`language in the Addendum agreement (Ex. 2051), all of which primarily relate to
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`the confidential business relationship between RPX and Apple, and none of which
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`is necessary to for a complete understanding of the record. RPX also correctly
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`maintains that the information is not material to the Decision Denying Institution.
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`See Motion 8–9. VirnetX and Apple do not oppose. On balance, RPX shows good
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`cause to retain the redacted version of Papers 34 and 45, respectively Papers 54
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`and 55, as public, and expunge the sealed versions, Papers 34 and 45.
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`It is
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`ORDER
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`ORDERED that Exhibits 2040, 2041, 2045, and 2052 are expunged from the
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`record;
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`FURTHER ORDERED that Papers 34, 45, and 48 are expunged from the
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`record and that redacted versions, respectively Papers 54, 55, and 56, are retained
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`as public versions in their place; and
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`FURTHER ORDERED that the sealed versions of Exhibits 2039, 2042–
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`2044, 2046–2051, and 2054 are expunged, and the redacted versions thereof are
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`retained as public.
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`IPR2014-00173
`Patent 7,490,151
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`PETITIONER:
`Oliver R. Ashe, Jr.
`Gregory M. Howison
`HOWISON & ARNOTT, LLP
`oashe@ashepc.com
`ghowison@dalpat.com
`admin@dalpat.com
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`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`Jason Stach
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`jason.stach@finnegan.com
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