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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Applicant:
`
`Darbee
`
`Universal Remote Control, Inc.
`
`Case No.:
`
`IPR2014-01104
`
`v.
`
`Filing Date: October 8, 1993
`
`Universal Electronics, Inc.
`
`Patent No.:
`
`5,414,761
`
`Trial Paralegal: Cathy Underwood
`
`Title:
`
`REMOTE CONTROL
`SYSTEM
`
`Attorney Doc.: 059489.144300
`
`
`MOTION TO SEAL PURSUANT TO 37 C.F.R. § 42.14 AND 42.54(a)
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on April
`1, 2015.
`
`
`
`
`
`
`
`By:
`
`/s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`
`
`
`
`

`

`
`
`2001.
`
`
`2002.
`
`
`2003.
`
`
`2004.
`
`
`2005.
`
`
`2006.
`
`
`2007.
`
`
`2008-16.
`
`2017.
`
`
`2018.
`
`
`2019.
`
`
`2020.
`
`
`
`TABLE OF EXHIBITS
`
`3D-Matrix, Ltd. v. Menicon Co., IPR2014-00398, Paper No. 11
`(P.T.A.B. Aug. 1, 2014)
`
`Synopsis v. Mentor Graphics Corp., IPR2012-00042, Paper No. 16
`(P.T.A.B. Feb. 22, 2013)
`
`Research in Motion Corp. v. Wi-Lan USA Inc., IPR2013-00126, Paper
`No. 10 (P.T.A.B. June 20, 2013)
`
`OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-00329, Paper 9 (P.T.A.B.
`Nov. 29, 2013)
`
`Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR2013-00222,
`Paper No. 12 (P.T.A.B. Aug. 12, 2013)
`
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper No.
`15 (P.T.A.B. Dec. 30, 2013)
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR2013-00183,
`Paper No. 12 (P.T.A.B. July 31, 2013)
`
`INTENTIONALLY SKIPPED
`
`Trial Transcript from Universal Electronics, Inc. v. Universal Remote
`Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D. Cal.), Dkt. No. 398-1
`
`Universal Remote Control, Inc.’s (“URC’s”) Initial Disclosures from
`Universal Electronics, Inc. v. Universal Remote Control, Inc., No.
`8:12-cv-00329-AG-JPR (C.D. Cal.)
`
`URC’s Response to UEI’s Interrogatory at No. 6 from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`Ohsung Website Printout, available
`at http://www.ohsungec.com/02_affli/02_foreign/06.aspx.
`
`i
`
`

`

`
`
`2021.
`
`
`2022.
`
`
`2023.
`
`
`2024.
`
`2025.
`
`
`2026.
`
`
`2027.
`
`
`2028.
`
`
`2029.
`
`2030.
`
`2031.
`
`URC’s Amended Initial Disclosures from Universal Electronics, Inc.
`v. Universal Remote Control, Inc., No. 8:12-cv-00329-AG-JPR (C.D.
`Cal.)
`
`Defendant Ohsung Electronics, USA, Inc.’s Answer to Second
`Amended Complaint, Dkt. No. 76, from Universal Electronics Inc., v.
`Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and
`Ohsung Electronics U.S.A., Inc., Case No. SACV 13-00984 AG
`(JPRx) (C.D. Cal.)
`
`LinkedIn Profile of Jak You, available
`at https://www.linkedin.com/pub/jak-you/92/8a5/6b.
`
`09/05/2013 M. Hurley Email to L. Kenneally
`
`Amended Notice of 30(b)(6) Deposition to URC from Universal
`Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv-
`00329-AG-JPR (C.D. Cal.)
`
`Joint Stipulation Staying Action Pending Petitions for Inter Partes
`Review of All Asserted Claims, Dkt. No. 87 from Universal
`Electronics Inc., v. Universal Remote Control, Inc., Ohsung
`Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No.
`SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`Joint Statement of the Parties Pursuant to Order Staying Action (ECF
`No. 88) and Joint Request to Continue Status Conference, Dkt. No.
`102 from Universal Electronics Inc., v. Universal Remote Control,
`Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A.,
`Inc., Case No. SACV 13-00984 AG (JPRx) (C.D. Cal.)
`
`URC NY Secretary of State, Division of Corporations, Entity
`Information Website Printout
`
`Declaration of Alex Cook
`
`Declaration of Ramzi Ammari
`
`June 28, 2004 Intrigue/Logitech Settlement Agreement
`
`ii
`
`

`

`
`
`2032.
`
`2033.
`
`Logitech Harmony Claim Charts
`
`July 1, 2012 Logitech Settlement Agreement
`
`2034. Logitech Harmony 650 Manual
`
`2035. Logitech Harmony 700 Manual
`
`2036. Logitech Harmony 900 Manual
`
`2037. Logitech Harmony One Manual
`
`2038. Logitech Harmony 1100 Manual
`
`2039. January 1, 2002 Contec Settlement Agreement
`
`2040. September 1, 2009 Contec Holdings Agreement
`
`2041. Excerpts of Logitech Annual Reports 2007 through 2014
`
`2042. January 1, 2007 RTI Settlement Agreement
`
`2043. Nevo/Xsight Sales Data
`
`2044. December 17, 2001 U.S. Electronics Settlement Agreement
`
`2045-46.
`
`INTENTIONALLY SKIPPED
`
`2047.
`
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, IPR2013-00265,
`Paper No. 11 (P.T.A.B. Oct. 31, 2013)
`
`2048. UEI Upgradeable Sales Data
`
`2049. UEI Licensing Royalties
`
`2050.
`
`November 1, 2004 URC Settlement Agreement
`
`2051-63.
`
`INTENTIONALLY SKIPPED
`
`2064. Redacted Declaration of Ramzi Ammari
`
`2065. Proposed Protective Order
`
`2066. Redline of Proposed Protective Order
`
`iii
`
`

`

`
`
`2067.
`
`2068.
`
`2069.
`
`Redacted Nevo/Xsight Sales Data
`
`Redacted UEI Upgradeable Sales Data
`
`Redacted UEI Licensing Royalties
`
`iv
`
`

`

`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`MOTION TO SEAL PURSUANT TO 37 C.F.R. §§ 42.14 and 42.54(a)
`
`In accordance with 37 C.F.R. §§ 42.14 and 42.54(a), Universal Electronics
`
`Inc. (“UEI” or “Patent Owner”) respectfully submits this Motion to Seal. In
`
`support of its Response of Patent Owner Pursuant to 37 C.F.R. § 42.120 (the
`
`“Response”), Patent Owner establishes secondary considerations of non-
`
`obviousness based upon, among other things, the Declaration of Ramzi Ammari
`
`(the “Ammari Decl.”) (Ex. 2030); a June 28, 2004 Settlement Agreement (Ex.
`
`2031); a July 1, 2012 Settlement Agreement (Ex. 2033); a January 1, 2002
`
`Settlement Agreement (Ex. 2039); a September 1, 2009 Agreement (Ex. 2040); a
`
`January 1, 2007 Settlement Agreement (Ex. 2042); Nevo/Xsight Sales Data (Ex.
`
`2043); a December 17, 2001 Settlement Agreement (Ex. 2044); Upgradeable Sales
`
`Data (Ex. 2048); Licensing Royalties (Ex. 2049); and a November 1, 2004
`
`Settlement Agreement (Ex. 2050), all of which contain the confidential
`
`information of Patent Owner and, in many instances, one or more third parties.
`
`The Patent Owner’s Response also contains this confidential information.
`
`Patent Owner wishes to preserve the confidentiality of this information and
`
`prevent this information from falling into the hands of its competitors, including
`
`Petitioner. Patent Owner would be greatly prejudiced if its competitors were
`
`permitted to view the licensing royalties, sales data, or the terms of the various
`
`settlement agreements. The prejudice to Patent Owner is especially high with
`
`1
`
`

`

`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`respect to Petitioner in view of the co-pending litigation between the parties.1
`
`Petitioner has not (yet) consented to Patent Owner’s Motion to Seal.2
`
`Patent Owner requests that the Board enter Patent Owner’s proposed
`
`protective order attached hereto as Ex. 2065. The proposed protective order
`
`largely adopts the Board’s default protective order except that subsections 2(A),
`
`(D), and (E) have been deleted. Having deleted those subsections, the parties, their
`
`employees, and their in-house counsel may not review information designated
`
`under the protective order. A redline showing the differences between the Board’s
`
`default protective order and Patent Owner’s proposed protective order is attached
`
`as Ex. 2066. Such modifications to the default protective order preventing access
`
`by in-house counsel, parties and party employees are necessary in this case, in
`
`view of the highly sensitive and competitive nature of the material Patent Owner
`
`seeks to file under seal.
`
`The Ammari Decl.(Ex. 2030); a June 28, 2004 Settlement Agreement (Ex.
`
`2031); a July 1, 2012 Settlement Agreement (Ex. 2033); a January 1, 2002
`
`Settlement Agreement (Ex. 2039); a September 1, 2009 Agreement (Ex. 2040); a
`
`January 1, 2007 Settlement Agreement (Ex. 2042); Nevo/Xsight Sales Data (Ex.
`
`2043); a December 17, 2001 Settlement Agreement (Ex. 2044); Upgradeable Sales
`
`1 Universal Electronics, Inc. v. Universal Remote Control, Inc., Ohsung
`Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV 13-
`00984 AG (JPRx) (C.D. Cal.).
`2 Petitioner’s counsel agreed not to oppose Patent Owner’s Motion to Seal.
`
`2
`
`

`

`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`Data (Ex. 2048); Licensing Royalties (Ex. 2049); a November 1, 2004 Settlement
`
`Agreement (Ex. 2050); and those portions of the Response reflecting information
`
`contained in the aforementioned exhibits constitute confidential information that
`
`falls within the scope of Patent Owner’s proposed protective order. (See Ex.
`
`2065.)
`
`Petitioner has filed redacted versions of its Response, the Ammari Decl. (Ex.
`
`2064), the Nevo/Xsight Sales Data (Ex. 2067), the UEI Upgradeable Sales Data
`
`(Ex. 2068), and the UEI Licensing Royalties (Ex. 2069), all of which are available
`
`for public viewing. Patent Owner has submitted unredacted, confidential versions
`
`of these documents to be viewed only by counsel and the Board. The settlement
`
`agreements, by their very terms, are comprised entirely of non-public information
`
`such that Patent Owner cannot file any portions of those documents for public
`
`viewing without breaching those agreements. Patent Owner is thus contractually
`
`obligated to preserve the confidentiality of those agreements.
`
`Patent Owner has demonstrated good cause to file under seal its Response;
`
`the Ammari Decl. (Ex. 2030); a June 28, 2004 Settlement Agreement (Ex. 2031); a
`
`July 1, 2012 Settlement Agreement (Ex. 2033); a January 1, 2002 Settlement
`
`Agreement (Ex. 2039); a September 1, 2009 Agreement (Ex. 2040); a January 1,
`
`2007 Settlement Agreement (Ex. 2042); Nevo/Xsight Sales Data (Ex. 2043); a
`
`December 17, 2001 Settlement Agreement (Ex. 2044); Upgradeable Sales Data
`
`3
`
`

`

`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`(Ex. 2048); Licensing Royalties (Ex. 2049); and a November 1, 2004 Settlement
`
`Agreement (Ex. 2050), all of which contain the confidential information of Patent
`
`Owner and, in many instances, one or more third parties. Accordingly, Patent
`
`Owner respectfully requests that the Board grant its Motion to Seal Pursuant to 37
`
`C.F.R. § 42.14 and 42.54(a) and enter its proposed protective order.
`
`
`
`Date: April 1, 2015
`
`
`
`
`
`
`
`Respectfully Submitted,
`GREENBERG TRAURIG, LLP
`
`
`
`
`
`
`
` /Eric J. Maiers/
`
`
`By: Eric J. Maiers, Reg. No. 59,614
`James J. Lukas, Reg. No. 59,114
`Matthew J. Levinstein, Pro Hac Vice
`Rob R. Harmer, Reg. No. 68,048
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`(312) 456-8400
`
`
`4
`
`

`

`IPR2014-01104
`
`
`
`U.S. Patent No. 5,414,761
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the below date, I caused the
`
`foregoing to be served upon the following counsel of record via electronic mail
`
`(with counsel’s agreement):
`
`Douglas A. Miro
`Ostrolenk Faber LLP
`1180 Avenue of the Americas New
`York, NY 10036
`Telephone: (212) 596-0500
`Facsimile: (212) 382-0888
`dmiro@ostrolenk.com
`kbarkaus@ostrolenk.com
`JNgai@ostrolenk.com
`
`Peter H. Kang, Reg. No. 40,350
`Theodore W. Chandler, Reg. No. 50,319
`Ferenc Pazmandi, Reg. No. 66,216
`Sidley Austin LLP
`1001 Page Mill Rd.
`Building One
`Palo Alto, CA 94304
`Telephone: (650) 565-7000
`Facsimile: (65) 565-7100
`pkang@sidley.com
`tchandler@sidley.com
`fpazmandi@sidley.com
`
`April 1, 2015
`
`
`
`
`
`
`
`
`
`
` /s/ Eric J. Maiers
`Eric J. Maiers
`
`
`
`
`
`5
`
`
`Date:
`
`
`
`
`
`
`
`
`
`
`
`
`

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