Trials@uspto.gov
`571.272.7822
`
` Paper 103
` Entered: June 23, 2022
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-00636
`Patent 8,917,822 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper 103
` Entered: June 23, 2022
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-00636
`Patent 8,917,822 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`IPR2015-00636
`Patent 8,917,822 B2
`
`
`INTRODUCTION
`I.
`With our authorization, and pursuant to 37 C.F.R. § 42.56, Ultratec,
`Inc. (“Patent Owner”) and CaptionCall, L.L.C. (“Petitioner”) (jointly, “the
`parties”) filed a joint motion seeking to expunge Papers 45, 47, 66, 67, 79,
`and 88 (“Papers”), and Exhibits 2071, 2086, 2091, 2106, 2107, 2121, and
`2123 (“Exhibits”). Paper 102 (“Motion” or “Mot.”).
`“[A]fter final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” See 37 C.F.R. § 42.56. On
`September 7, 2016, we entered a Final Written Decision (Paper 97)
`(“Decision” or “Dec.”), which was appealed by Patent Owner (Paper 100).
`On September 8, 2016, we denied Patent Owner’s Motion to Dismiss.
`Paper 98. On January 18, 2022, the United States Court of Appeals for the
`Federal Circuit granted Patent Owner’s motion to voluntarily dismiss its
`appeal of the Final Written Decision, in Ultratec, Inc. v. CaptionCall, LLC,
`Dkt. Nos. 42, 43 in Appeal No. 17-1209 (Fed. Cir.). Mot. 2. On March 4,
`2022, the parties filed this Motion. For the reasons discussed below, the
`parties’ Motion is granted.
`II. DISCUSSION
`A strong public policy exists for making open to the public all
`information filed in this administrative proceeding. Only “confidential
`information” 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 confidential information.”). The
`Consolidated Trial Practice Guide (“TPG”) states that:
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`is an expectation that information will be made public where the
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`IPR2015-00636
`Patent 8,917,822 B2
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`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`Consolidated Trial Practice Guide at 21–22 (Nov. 2019), available at
`http://www.uspto.gov/TrialPracticeGuideConsolidated. “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.” Id. at 19.
`A. Description of Papers
`Paper 45 is Patent Owner’s Motion to Dismiss the Petition for Failure
`to Name All Real Parties-In-Interest. (A redacted version is publicly
`available in Paper 48.) We granted Patent Owner’s Motion to Seal this
`Paper. Dec. 20. Paper 47 is Patent Owner’s Motion to Seal the following
`documents: Exhibit 2086 (“Mediation Notice”); the redacted portions of
`Paper 45 (Motion to Dismiss) that refer to the Mediation Notice, mediation,
`or previous motions to seal; Exhibit 2091 (an e-mail); and Paper 47 itself.
`This Motion was granted. Dec. 19. Paper 66 is Patent Owner’s Motion to
`Seal the Patent Owner’s Reply in Support of its Motion to Dismiss (Paper
`67), and Paper 66 itself. This Motion was granted. Dec. 19. Paper 67 is
`Patent Owner’s Reply in Support of its Motion to Dismiss. We granted
`Patent Owner’s Motion to Seal this Paper, as requested in Paper 66.
`Dec. 20. Paper 79 is Patent Owner’s Motion to Seal Patent Owner’s
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`IPR2015-00636
`Patent 8,917,822 B2
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`Demonstratives in Exhibit 2121, and Paper 79 itself. This Motion was
`granted. Dec. 19. Paper 88 is the Record of Oral Hearing for a portion of
`the April 6, 2016 hearing (after 11:37 a.m.), and is labeled “Confidential –
`Protective Order Material.” In this Paper, the discussion is limited to the
`Motion to Dismiss. A redacted, public version, reporting the portion of the
`hearing before 11:25 a.m., is in Paper 89. See Dec. 4, Paper 82.
`B. Description of Exhibits
`Exhibit 2071 “is a sealed September 19, 2014 letter submitted solely
`in support of Patent Owner’s Motion for Additional Discovery.” Mot. 2.
`The Exhibit was named in a Motion to Seal (Paper 28, revised in Paper 41),
`which was granted. Dec. 19. As noted earlier in regard to Paper 47, Exhibit
`2086 is a “Notice of Mediation.” The Motion to seal this exhibit was
`granted. Dec. 20. As noted earlier in regard to Paper 47, Exhibit 2091 is an
`e-mail. The Motion to seal this exhibit was granted. Dec. 20. Exhibit 2106
`is titled “Sorenson Holdings, LLC Consolidated Financial Statements.”
`Patent Owner filed a Motion to Seal this exhibit (Paper 56), which was
`granted (Dec. 20). Exhibit 2107 is titled “Sorenson Holdings, LLC
`Financial Report for the Quarter Ended March 31, 2015.” Patent Owner
`filed a Motion to Seal this exhibit (Paper 56), which was granted (Dec. 20).
`Exhibit 2121 was previously expunged. See Paper 84, 1.1 Exhibit 2123 is
`titled “Patent Owner’s Demonstratives for Oral Hearing.” It replaced
`
`
`1 “Pursuant to the Board’s e-mail dated Tuesday, April 5, 2016, expunging
`the previously filed demonstrative exhibits and granting the parties leave to
`re-file their demonstrative exhibits, Patent Owner, Ultratec, Inc., hereby
`notifies the board that Patent Owner’s Original Motion to Seal its
`demonstratives (Paper [79]) should now refer to Patent Owner’s re-filed
`demonstrative exhibits (Exhibit 2123), and in particular to slides 78–81
`contained therein Exhibit 2123.”
`
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`IPR2015-00636
`Patent 8,917,822 B2
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`expunged Exhibit 2121. A redacted, public version was filed in Exhibit
`2124. (A redacted version of Exhibit 2121, in Exhibit 2122, was also
`expunged.) A Motion to Seal Exhibit 2121 was filed in Paper 79, and the
`Exhibit number was updated in Paper 84. The Motion was granted (naming
`Exhibit 2121). Dec. 20.
`The Parties’ Contentions
`C.
`The parties contend that for all the named Papers and Exhibits, which
`were filed under seal and were never made public, “good cause exists to
`expunge the aforementioned Papers and Exhibits from the record because
`they contain information that the Parties identified as confidential and were
`sealed on that basis. Additionally, the material that the Parties seek to
`expunge is not required for a complete understanding of the record.” Mot. 3.
`As to that point, the parties further contend:
`First, none of the Papers or Exhibits was relied upon by either
`the Patent Owner or the Petitioner for any argument concerning
`the patentability of the claims. Second, the Board did not rely
`on any of the Papers or Exhibits in issuing its unpatentability
`determinations in the Final Written Decision. Third, the appeal
`has concluded; Patent Owner voluntarily moved to dismiss its
`appeal of the Board’s Final Written Decision, which the Federal
`Circuit granted on January 19, 2022. [] And Fourth, the
`Board’s Order denying Patent Owner’s Motion to Dismiss is
`public in its entirety (Paper 98), and the record includes non-
`confidential versions of Patent Owner’s Motion to Dismiss the
`Petition for Failure to Name All Real Parties-in-Interest
`(Paper 48), and Patent Owner’s Reply in Support of its Motion
`to Dismiss (Paper 68), thereby maintaining public access to any
`information relevant to this IPR.
`Mot. 7 (citation omitted).
`Because we agree with the statements by the parties, we are persuaded
`by the parties’ contentions that expunging Papers 45, 47, 66, 67, 79, and 88,
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`IPR2015-00636
`Patent 8,917,822 B2
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`and Exhibits 2071, 2086, 2091, 2106, 2107, and 2123, would protect
`confidential information without harming the public’s interest in maintaining
`a complete and understandable file history. The redacted public versions of
`the identified documents will be retained in the record for public access.
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Expunge Papers 45, 47, 66, 67,
`79, and 88, and Exhibits 2071, 2086, 2091, 2106, 2107, and 2123, is
`granted.
`
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`IPR2015-00636
`Patent 8,917,822 B2
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`PETITIONER:
`
`Ruben Munoz
`Eric Klein
`Todd Landis
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`eklein@akingump.com
`tlandis@akingump.com
`
`
`FOR PATENT OWNER:
`
`Michael Jaskolski
`Michael J. Curley
`Martha Jahn Snyder
`Nikia L. Gray
`Stephen J. Gardner
`QUARLES & BRADY, LLP
`michael.jaskolski@quarles.com
`michael.curley@quarles.com
`martha.snyder@quarles.com
`nikia.gray@quarles.com
`stephen.gardner@quarles.com
`
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