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`Paper No. ___
`Filed: February 26, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00137
`U.S. Patent No. 8,297,502
`
`_____________
`
`PETITIONER’S MOTION TO SEAL
`PETITIONER’S LIMITED LIABILITY COMPANY AGREEMENT
`PURSUANT TO 37 C.F.R. § 42.54
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`In an email dated February 24, 2015, the Board requested that Petitioner
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`Askeladden LLC (“Askeladden”) submit Askeladden’s Operating Guidelines.
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`That document is contained within Askeladden’s Limited Liability Company
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`Agreement (“LLC Agreement”), attached hereto as Exhibit 1033. Further, at
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`present, Patent Owners do not oppose Petitioner’s filing of confidential
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`information under seal, but oppose certain terms in the Board’s Default Protective
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`Order.
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`I.
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`Good cause exists for sealing Petitioner’s confidential information.
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`The Office Patent Trial Practice Guide provides that “the rules aim to strike
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`a balance between the public’s interest 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.” 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012). Under the Board’s
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`rules, “confidential information [is identified] in a manner consistent with Federal
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`Rule of Civil Procedure 26(c)(1)(G), which provides for protective orders for trade
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`secret or other confidential research, development, or commercial information.”
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`Id. (citing 37 C.F.R. § 42.54).
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`Askeladden is the sole real party-in-interest in this proceeding. In their
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`Preliminary Response, Patent Owners allege that another entity, The Clearing
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`House, is a real party-in-interest. See IPR2015-00137, Paper 10, at 29. On
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`February 17, 2015, the Board authorized a reply to Patent Owner’s Preliminary
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`1
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`Response and directed Askeladden to “present evidence to support its apparent
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`position that Askeladden is the sole real party-in-interest,” preferably in the form
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`of a declaration (Paper No. 13). On February 23, 2015, Askeladden filed a Reply
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`Brief (“Brief”) and a Declaration of Sean Reilly (“Declaration”), along with a
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`Motion to Seal the Brief and Declaration and an executed copy of the Board’s
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`default protective order. See Paper Nos. 14, 15, 16, 27; Exhibit 1031. On
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`February 24, 2015, the Board contacted the parties via email, requesting that
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`Askeladden provide a document referenced in Paragraph 11 of the Declaration as
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`“Operating Guidelines”. The LLC Agreement attached hereto includes, as Exhibit
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`A, the Operating Guidelines where the relevant portions referenced in the
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`Declaration may be found.
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`The LLC Agreement establishes, as stated in the Declaration, that
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`Askeladden maintains sole control over the handling of this IPR. See, e.g., Unified
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`Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252, Paper 37
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`(B.P.A.I. 2015). In particular, the narrowly-tailored excerpts that Askeladden
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`seeks to seal discuss details of Askeladden’s organizational structure, business
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`processes, financing, and operational guidelines, which are confidential.
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`Askeladden has a strong interest in maintaining the confidentiality of its
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`internal business structure and strategy. On the other hand, there is no
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`countervailing interest that would counsel against grant of the present motion. The
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`2
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`Patent Owners do not oppose the filing of Askeladden’s supporting information
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`under seal. And, the sealed information has nothing to do with the ground of
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`invalidity at issue in the IPR proceeding. Therefore, grant of the present motion
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`will have no effect on the public’s interest in “maintaining a complete and
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`understandable file history.”
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`Certification of Non-Publication
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`On behalf of Petitioner, undersigned counsel certifies that the information
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`identified as confidential and sought to be sealed has not, to their knowledge, been
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`published or otherwise made public.
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`II.
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`Certification of Conference with Opposing Party
`Pursuant to 37 C.F.R. § 42.54 and Proposed Protective Order
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`Petitioner proposes using the Board’s Default Protective Order, attached as
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`Appendix A. Petitioner’s executed copy of this proposed Protective Order was
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`already previously filed (Paper No. 17).
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`Petitioner has conferred in good faith with Patent Owners regarding the use
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`of the Board’s Default Protective Order to file Askeladden’s confidential
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`information under seal. While Patent Owners are not opposed to such filings under
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`seal, the Patent Owners currently disagree with certain terms in the Board’s
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`Default Protective Order. The parties have both discussed this matter over the
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`phone and via email, but did not reach agreement in advance of the Board’s
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`imposed filing deadline.
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`3
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`III. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board seal
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`the LLC Agreement, which Petitioner files concurrently herewith.
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`Respectfully submitted,
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`/Stephen K Yam/
`Stephen K. Yam
`Attorney for Petitioner
`Registration No. 64,927
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`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, New York 10104-3800
`Facsimile: (212) 218-2200
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105, the undersigned certifies
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`that on this date, a true and correct copy of this Petitioner’s Motion to Seal and
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`Appendix A thereto was served via email on the Patent Owner’s counsel at the
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`following address indicated in the Patent Owner’s Mandatory Notices.
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`bbuchheit@gmail.com
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`Upon receipt of an executed Protective Order by Patent Owner, Petitioner agrees to
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`serve a copy of the accompanying exhibit.
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`Dated: February 26, 2015
`
`/Stephen K Yam/
`Stephen K. Yam
`Attorney for Petitioner
`Registration No. 64,927
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`5
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`APPENDIX A
`DEFAULT PROTECTIVE ORDER
`77 Fed. Reg. 48771
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00137
`U.S. Patent No. 8,297,502
`
`_____________
`
`PROTECTIVE ORDER
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`Finding good cause exists to enter a Protective Order governing the
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`disclosure and treatment of confidential information produced in this inter partes
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`review, it is ordered:
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`1.
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`Confidential information shall be clearly marked “PROTECTIVE ORDER
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`MATERIAL.”
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`2.
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`Access to confidential information is limited to the following individuals
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`who have executed the acknowledgment appended to this order:
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`(A)
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`Parties. Persons who are owners of a patent involved in the
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`proceeding and other persons who are named parties to the proceeding.
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`A-1
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`(B)
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`Party Representatives. Representatives of record for a party in the
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`proceeding.
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`(C)
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`Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject matter
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`of the proceeding.
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`(D)
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`In-house counsel. In-house counsel of a party.
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`(E) Other Employees of a Party. Employees, consultants or other persons
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`performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to
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`confidential information only upon agreement of the parties or by order of the
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`Board upon a motion brought by the party seeking to disclose confidential
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`information to that person. The party opposing disclosure to that person shall have
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`the burden of proving that such person should be restricted from access to
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`confidential information.
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`(F)
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`The Office. Employees and representatives of the Office who have a
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`need for access to the confidential information shall have such access without the
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`requirement to sign an Acknowledgement. Such employees and representatives
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`shall include the Director, members of the Board and their clerical staff, other
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`support personnel, court reporters, and other persons acting on behalf of the Office.
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`A-2
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`(G)
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`Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to sign an
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`Acknowledgement, but shall be informed of the terms and requirements of the
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`Protective Order by the person they are supporting who receives confidential
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`information.
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`3.
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`Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons
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`not authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality of
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`the information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the disclosing
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`party;
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`(C)
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`Ensuring that support personnel of the recipient who have access to
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`the confidential information understand and abide by the obligation to maintain the
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`confidentiality of information received that is designated as confidential; and
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`(D) Limiting the copying of confidential information to a reasonable
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`number of copies needed for conduct of the proceeding and maintaining a record of
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`the locations of such copies.
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`A-3
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`4.
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`Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i)
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`A party may file documents or information with the Board
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`under seal, together with a non-confidential description of the nature of the
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`confidential information that is under seal and the reasons why the information is
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`confidential and should not be made available to the public. The submission shall
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`be treated as confidential and remain under seal, unless, upon motion of a party
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`and after a hearing on the issue, or sua sponte, the Board determines that the
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`documents or information do not to qualify for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file confidential and
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`non-confidential versions of its submission, together with a Motion to Seal the
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`confidential version setting forth the reasons why the information redacted from
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`the non-confidential version is confidential and should not be made available to the
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`public. The non-confidential version of the submission shall clearly indicate the
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`locations of information that has been redacted. The confidential version of the
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`submission shall be filed under seal. The redacted information shall remain under
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`seal unless, upon motion of a party and after a hearing on the issue, or sua sponte,
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`A-4
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`the Board determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties.
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`Information designated as confidential that is disclosed to another party during
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`discovery or other proceedings before the Board shall be clearly
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`marked as “PROTECTIVE ORDER MATERIAL” and shall be produced in a
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`manner that maintains its confidentiality.
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`A-5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00137
`U.S. Patent No. 8,297,502
`
`_____________
`
`Acknowledgment for Access to Protective Order Material
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`I _____________________________, affirm that I have read the Protective Order;
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`that I will abide by its terms; that I will use the confidential information only in
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`connection with this proceeding and for no other purpose; that I will only allow
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`access to support staff who are reasonably necessary to assist me in this
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`proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`A-6
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`________________________
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`By
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`___________________
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`Date: ___________________
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`A-7
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