Paper 9
`Date: October 17, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FIRST DATA CORPORATION,
`Petitioner,
`
`v.
`
`CARDSOFT (ASSIGNMENT FOR THE
`BENEFIT OF CREDITORS), LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00720
`Patent 7,302,683 B2
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK,
`and JAMES P. CALVE, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`ORDER
`Motion to Seal Under 37 C.F.R. § 42.54
`
`
`
`
`
`
`
`Date: October 17, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FIRST DATA CORPORATION,
`Petitioner,
`
`v.
`
`CARDSOFT (ASSIGNMENT FOR THE
`BENEFIT OF CREDITORS), LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00720
`Patent 7,302,683 B2
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK,
`and JAMES P. CALVE, Administrative Patent Judges.
`
`CALVE, Administrative Patent Judge.
`
`ORDER
`Motion to Seal Under 37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`IPR2014-00720
`Patent 7,302,683 B2
`
`
`
`INTRODUCTION
`
`
`
`On April 30, 2014, First Data Corporation (“Petitioner”) filed a Petition for
`
`inter partes review (Paper 1) and accompanying exhibits 1001–1013. Concurrent
`
`with filing the Petition, Petitioner filed Petitioner’s Motion to Seal (“Motion”)
`
`(Paper 3), a redacted Master Engagement Agreement (“Agreement”) between First
`
`Data Merchant Services Corporation and VeriFone, Inc. (“VeriFone”), and a Letter
`
`Addendum (“Addendum”) to the Agreement. Motion 2, 3. Petitioner filed the
`
`Agreement and Addendum as Exhibit 1011 to the Petition and requested entry of a
`
`default protective order in the Office Patent Trial Practice Guide. Id. 4.
`
`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
`
`file of any proceeding shall be made available to the public, except that any
`
`petition or document filed with the intent that it be sealed shall, if accompanied by
`
`a motion to seal, be treated as sealed pending the outcome of the motion.
`
`Similarly, 37 C.F.R. § 42.14 provides:
`
`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
`
`2
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`IPR2014-00720
`Patent 7,302,683 B2
`
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`confidential information”). In that regard, the Office Patent Trial Practice Guide,
`
`
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`77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012) provides:
`
`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 “good cause.” 37 C.F.R.
`
`§ 42.54. Petitioner, as the moving party, has the burden of proof in showing
`
`entitlement to the requested relief. 37 C.F.R. § 42.20(c). Petitioner must show that
`
`information sought to be sealed constitutes confidential information. A motion to
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`seal confidential information that is filed with a petition is required to include a
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`proposed protective order or a request to enter the default protective order set forth
`
`in the Office Patent Trial Practice Guide. 37 C.F.R. § 42.55.
`
`Upon consideration of Petitioner’s Motion to Seal, we determine that
`
`Petitioner has not shown good cause for granting the Motion to Seal.
`
`Petitioner argues that the Agreement and Addendum contain confidential
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`business information of Petitioner and VeriFone regarding the type of agreement
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`they entered into for relevant products, and the particular terms of the agreement.
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`Motion 3. Petitioner contends that “[d]isclosure of such terms could prejudice
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`them in future negotiations on similar agreements, and would provide competitors
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`with confidential business information.” Motion 3–4 (emphasis added). These
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`arguments are not persuasive for the following reasons.
`
`3
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`
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`IPR2014-00720
`Patent 7,302,683 B2
`
`
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`Petitioner submitted a copy of the Agreement that is redacted except for an
`
`
`
`introductory portion at the top of page one and part of Section 6, which relates to
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`Indemnification. Ex. 1011, 3. The unredacted portion of Section 6 sets forth
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`VeriFone’s obligation to indemnify First Data Merchant Services Corporation and
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`its affiliates and agents for claims relating to VeriFone “Intellectual Property or
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`Products.” Id. at 7–8. The unredacted part of the Agreement and Addendum do
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`not identify intellectual property or products of VeriFone. Id. Nor has Petitioner
`
`explained how disclosure of the Agreement and Addendum would prejudice
`
`Petitioner or VeriFone in future business transactions. Petitioner asserts only that
`
`disclosure could prejudice the parties. Motion 3–4. Moreover, in our Decision
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`Denying Institution, filed concurrently herewith, we rely on Exhibit 1011 in
`
`making our determination that VeriFone is a real party-in-interest. Here, we
`
`determine that the public’s interest in maintaining a complete and understandable
`
`file history outweighs Petitioner’s interest in protecting what it perceives, but has
`
`not shown to be, confidential information. Based on the evidence of record before
`
`us, Petitioner has not shown good cause to seal the redacted Agreement or the
`
`Addendum.
`
`In view of the foregoing, it is therefore,
`
`ORDER
`
`ORDERED Petitioner’s motion to seal Exhibit 1011 is denied.
`
`
`
`4
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`
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`IPR2014-00720
`Patent 7,302,683 B2
`
`For PETITIONER:
`
`Paul C. Haughey
`Darin J. Gibby
`Kilpatrick Townsend & Stockton LLP
`phaughey@kilpatricktownsend.com
`dgibby@kilpatricktownsend.com
`
`
`
`For PATENT OWNER
`
`Mark R. Buscher
`D. Richard Anderson
`Birch, Stewart, Kolasch & Birch, LLP
`mrb@buscherlaw.com
`dra@bskb.com
`
`
`
`5
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