Paper No.
`Filed: January 15, 2015
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`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
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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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`MICROSOFT CORPORATION and APPLE INC.
`Petitioners
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`v.
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`VIRNETX INC.
`Patent Owner
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`Case IPR2014-00404
`Patent 7,987,2741
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`JOINT MOTION TO SEAL
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`1
`Case IPR2014-00484 has been joined with this case.
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`Filed: January 15, 2015
`
`Filed on behalf of Microsoft Corporation and VirnetX, Inc.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION and APPLE INC.
`Petitioners
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00404
`Patent 7,987,2741
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO SEAL
`
`
`
`
`
`
`1
`Case IPR2014-00484 has been joined with this case.
`
`
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` Patent Owner VirnetX
`
`Inc.
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`(“VirnetX”) and Petitioner Microsoft
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`Case IPR2014-00404
`Patent No. 7,987,274
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`
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`Corporation (“Microsoft”) request permission to seal the document contained in
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`Exhibit 2044 under 37 C.F.R. § 42.54. Exhibit 2044 is a copy of a confidential
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`settlement agreement between Microsoft and VirnetX. Petitioner Apple Inc.
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`(“Apple”) is not a party to the confidential settlement agreement. Because Exhibit
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`2044 contains highly confidential information of an extremely sensitive nature,
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`Patent Owner and Petitioner Microsoft respectfully request entry of the Default
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`Protective Order with an Addendum that limits Exhibit 2044 to “Outside Attorney
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`Eyes Only” and requests permission to place Exhibit 2044 under seal. Apple does
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`not oppose this request.
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`I.
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`Good Cause Exists for Sealing Exhibit 2044
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`In determining whether to grant a Motion to Seal, the Board must “strike a
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`balance between
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`the public’s
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`interest
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`in maintaining a complete and
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48771, 48760
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`(Aug. 14, 2012). “A party intending a document or thing to be sealed shall file a
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`motion to seal concurrent with the filing of the document or thing to be sealed.” 37
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`C.F.R. § 42.14. “The rules identify confidential information in a manner consistent
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`with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for protective
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`orders for trade secret or other confidential research, development, or commercial
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`1
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`information.” Trial Practice Guide at 48760. “The Board may, for good cause,
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`Case IPR2014-00404
`Patent No. 7,987,274
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`issue an order to protect a party or person from disclosing confidential
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`information.” 37 C.F.R. § 42.54.
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`Exhibit 2044 is a copy of a confidential settlement agreement between
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`Microsoft and VirnetX that settles all pending patent disputes between the parties.
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`The parties are bound by the agreement to keep its terms confidential. Patent
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`Owner and Microsoft present this settlement agreement to the Board solely for the
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`purpose of terminating this proceeding with respect to Microsoft. (See Joint
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`Motion to Terminate Proceeding With Respect to Microsoft.) The details of the
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`confidential settlement agreement between Microsoft and VirnetX are not material
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`to any arguments presented by any of the parties
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`Moreover, in the unlikely event a party needs access to any of the
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`information within Exhibit 2044, this information will still be available to that
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`party’s outside attorneys even under the modified protective order. Thus, Patent
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`Owner and Microsoft respectfully submit that good cause exists for filing this
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`exhibit under seal and limiting it to Outside Attorney Eyes Only in this proceeding.
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`II. Certification of Non-Publication
`On behalf of Patent Owner and Petitioner Microsoft, the undersigned
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`counsel certify that Exhibit 2044 has not, to their knowledge, been published or
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`otherwise made public. Efforts to maintain the confidentiality of Exhibit 2044
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`2
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`have been undertaken by Patent Owner and Microsoft in the related district court
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`Case IPR2014-00404
`Patent No. 7,987,274
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`proceeding between the parties.
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`III. Certification of Conference with Opposing Party Pursuant to 37 C.F.R.
`§ 42.54
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`The parties have conferred as to the scope of the Default Protective Order
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`with Addendum. The parties, including Petitioner Apple, have agreed to the
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`provisions in the modified protective order.
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`IV. Proposed Protective Order
`Patent Owner and Petitioner Microsoft respectfully request that the Default
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`Protective Order with Addendum be entered in this proceeding. A clean copy of
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`the Default Protective Order with proposed Addendum is submitted with this
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`Motion as Exhibit 2045. A redline version of the Default Protective Order with the
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`proposed Addendum is submitted as Exhibit 2046.
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`As shown in the redlined version, the Addendum is limited to Exhibit 2044
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`and is substantially similar to the language of the Default Protective Order. The
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`Addendum substantively differs from the Default Protective order in that it (1) is
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`limited to Exhibit 2044; (2) limits access to Exhibit 2044 to outside attorney eyes
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`only; and (3) removes the provision specifying that redacted versions of documents
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`with both confidential and non-confidential information should be submitted.
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`First, the Addendum specifies: “This Addendum governs the treatment and
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`3
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`filing of Exhibit 2044.” Instead of more broadly discussing confidential
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`Case IPR2014-00404
`Patent No. 7,987,274
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`information and documents, as does the Default Protective Order, the Addendum is
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`limited to Exhibit 2044.
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`Second, paragraphs 1 and 4(B) of the Addendum specify that confidential
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`information is to be marked “PROTECTIVE ORDER MATERIAL – OUTSIDE
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`ATTORNEY EYES ONLY.” Paragraph 2 of the Addendum differs from the
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`language of the Default Protective Order in that the entries beginning with
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`“Parties,” “In-house counsel,” and “Other Employees of a Party” are not included
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`in the listing of who may receive Exhibit 2044. This has the effect of disallowing
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`employees and principals of Apple from receiving access to Exhibit 2044.
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`Paragraph 2 further differs from the language of the Default Protective Order
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`in that the title “Party Representatives” is changed to “Outside Attorneys.” This
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`difference, in conjunction with the others, has the effect of limiting access to
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`Exhibit 2044 to outside attorney eyes only.
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`Third, the Addendum specifies that Exhibit 2044 may be filed with the
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`Board under seal with a non-confidential description of the Exhibit. The
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`Addendum does not include the language of paragraph 4(A)(ii) of the Default
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`Protective Order which specifies that redacted versions of exhibits should be filed
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`where the exhibit includes confidential and non-confidential information. Because
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`this paragraph does not apply to Exhibit 2044, it is not included in the Addendum.
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`4
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`Good cause exists for the Addendum because it allows Exhibit 2044, which
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`Case IPR2014-00404
`Patent No. 7,987,274
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`
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`contains sensitive and highly confidential information, to be submitted to the
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`Board without harming anyone’s ability to raise arguments or claims and without
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`harming the Patent Owner’s and Microsoft’s interests in keeping the agreement
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`confidential. The differences between the language of the Default Protective Order
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`and the Addendum simply provide clarity as to who may receive Exhibit 2044
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`under the protective order.
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`V. Conclusion
`For these reasons, Patent Owner and Petitioner Microsoft respectfully
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`request that the Default Protective Order with Addendum be entered and that
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`Exhibit 2044 be placed under seal.
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`Respectfully submitted,
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`
`
`
`
` /W. Karl Renner/
`W. Karl Renner
`Registration No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`Counsel for Petitioner
`Microsoft Corporation
`
`
`Dated: January 14, 2015
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`
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`
`
` /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`
`Counsel for Patent Owner
`VirnetX, Inc.
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`5
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`CERTIFICATE OF SERVICE
`
`Case IPR2014-00404
`Patent 7,987,274
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`I hereby certify that on this 15th day of January 2015, a copy of the
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`foregoing Motion to Seal was served by electronic mail upon the following:
`
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`Counsel for Petitioner Microsoft Corporation:
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38868-0002IP4@fr.com
`
`
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`Counsel for Petitioner Apple Inc.:
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`Jeffrey P. Kushan (jkushan@sidley.com)
`Joseph A. Micallef (jmicallef@sidley.com)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`
`
`
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`Dated: January 15, 2015
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`Respectfully submitted,
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`
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`
`
`/Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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