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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GOOGLE INC., SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`____________________
`
`CASE: IPR2015-008061
`Patent No. 7,765,482
`
`Title: Web-Based Media Submission Tool
`
`
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`
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`PATENT OWNER’S MOTION TO EXPUNGE
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`
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`1 Samsung Electronics Co., Ltd., who filed a Petition in IPR2016-00029,
`has been joined as a petitioner in the instant proceeding.
`
`
`
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
`
`
`I.
`
`INTRODUCTION
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`
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`Pursuant to 37 C.F.R. § 42.56, Patent Owner Summit 6 respectfully moves the
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`Board to expunge from the record exhibits not relied upon by the Board in its Final
`
`Written Decision, un-redacted exhibits and papers that have been previously-filed as
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`redacted versions, and confidential exhibits relied upon by the Board for which
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`redacted versions are submitted herewith. Exhibits 1019, 2001, 2002, 2020, 2021,
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`2033, 2047, 2075, and Paper 42 are collectively referred to herein as the “Confidential
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`Documents.”
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`More specifically, Patent Owner moves to expunge from the record in their
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`entirety Exhibits 2001, 2002, and 2047, which the Board did not rely upon in its
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`Final Written Decision, Paper 63. Patent Owner also moves to expunge Paper 42
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`and Exhibits 1019 and 2075 because redacted versions of those materials have been
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`filed. Finally, Patent Owner moves to expunge Exhibits 2020, 2021, and 2033, which
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`the Board did rely upon, and replace them with redacted versions.
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`Ordinarily, the deadline for filing a motion to expunge is 45 days from the
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`Board’s final written decision, which was entered in IPR2015-00806 on September
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`6, 2016 (Paper 63) (the “Final Written Decision”). See Office Patent Trial Practice
`
`Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48760-61 (Aug. 14, 2012).
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`1
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
`
`Unless the Board decides a motion before that 45-day deadline, the confidential
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`exhibits will become publicly available. Id.
`
`In this case, the Order on Public Availability of Proceeding Documents,
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`entered on September 6, 2016, Paper 64, explained that any sealed documents relied
`
`upon in the Final Written Decision, Paper 63, would be unsealed. However, the
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`Board instructed that documents may be expunged if the parties filed a motion to
`
`expunge to replace the exhibits with public versions that only redact confidential
`
`information not identified in the Final Written Decisions. Paper 64 at 3–4.
`
`Notwithstanding, the Board also recognized that Patent Owner could not move to
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`expunge at that time because the Court of Appeals for the Federal Circuit needed the
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`entire record of this proceeding to evaluate Patent Owner’s appeal. Paper 65 at 2–3.
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`
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`Because the appeal is now complete, Patent Owner moves to expunge the
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`Confidential Documents. Additionally, because the Confidential Documents contain
`
`confidential information, Patent Owner respectfully requests that the Board rule on
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`this motion prior to the Confidential Documents becoming a part of the public record
`
`in this case. Alternatively, Patent Owner requests that the Board issue an interim
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`order delaying the public release of the Confidential Documents until such a time
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`that the Board can rule on Patent Owner’s Motion to Expunge.
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`2
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
`
`
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`Prior to filing the instant motion, Patent Owner submitted the same to counsel
`
`for Petitioner for comment. Petitioner’s counsel advised that Petitioner has no
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`comment to Patent Owner’s motion.
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`A. Procedural Background
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`II. BACKGROUND
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`
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`Throughout this proceeding, the parties have filed various motions to seal
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`certain papers and exhibits. See, e.g., Papers 13, 29, 30, 37, 40, 47, 54. One motion
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`to seal certain papers and exhibits was granted. See Paper 18 (sealing Exhibits 2001,
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`2002, 2020, 2021, and 2033). Multiple motions to seal have been conditionally
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`granted as to certain papers and exhibits. See Papers 44 (conditionally sealing
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`Exhibit 2047) and 59 (conditionally sealing Exhibit 1019 and Paper 42). On
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`September 6, 2016, the Board entered its Final Written Decision in which it relied
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`on certain sealed papers and exhibits. See Paper 63. On October 7, 2016, the parties
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`filed a Joint Stipulation of Papers and Exhibits, agreeing to the identification of the
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`exact portions of all sealed papers and exhibits cited in the Final Written Decision,
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`Paper No. 63. See Paper 67.
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`Exhibit 1019: p. 73, line 1–p. 77, line 9; see Paper 63 at 34;
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`Exhibit 2020: p. 12 and pp. 24–26; see Paper 63 at 36-37;
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`Exhibit 2021: p. 7, ¶ 5.9; see Paper 63 at 37;
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`3
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
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`Exhibit 2033: see Paper 63 at 38; and
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`Exhibit 2075; see Paper 63 at 70.
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`The parties stipulated that the Board did not cite the remaining sealed exhibits
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`or papers. See id. at 1.
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`B. Applicable Legal Standards
`
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`Pursuant to 35 U.S.C. § 316(a)(7), “confidential information” is protected
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`from disclosure. 35 U.S.C. § 316(a)(7) (“The Director shall prescribe regulations . .
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`. providing for protective orders governing the exchange and submission of
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`confidential information.”) Confidential information should be defined in a manner
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`consistent with Fed. R. Civ. P. 26(c)(1)(G). Trial Practice Guide, 77 Fed. Reg. 48756
`
`at 48760. Granting a motion to seal confidential information requires a showing of
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`“good cause.” 37 C.F.R. § 42.54. The same standard applies to a motion to expunge
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`“confidential information” under 37 C.F.R. § 42.56 after final judgment in a trial.
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`RPX Corp. v. Virnetx Inc., IPR 2014-00171, Paper 62 at 3 (PTAB Sept. 9, 2014).
`
`The movant generally has the burden of showing entitlement to the requested relief.
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`37 C.F.R. § 42.20(c); RPX Corp. at 3.
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`C. Good Cause Exists to Expunge the Confidential Documents From
`the Record
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`Pursuant to 37 C.F.R. § 42.56, Patent Owner respectfully moves the Board to
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`expunge in their entirety Exhibits 2001, 2002, and 2047, and Exhibits 2020, 2021,
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`4
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
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`and 2033 (for which redacted versions are submitted herewith). Patent Owner also
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`moves to expunge Exhibit 1019, Exhibit 2075, and Paper 42 because redacted
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`versions of these materials have been previously filed.
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`i.
`
`The Board should expunge Exhibits 2001, 2002, and 2047.
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`The Board has already agreed there is good cause for certain confidential
`
`information to be sealed. See Papers 18, 44, 59. Patent Owner seeks to preserve the
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`confidentiality of some of the documents filed under seal and, therefore, moves to
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`expunge them from the record. 37 C.F.R. 42.56. The Board has already concluded
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`that if certain exhibits or paper contain no information substantively relied on by the
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`Board in its Final Written Decision, then the unredacted sealed versions of the
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`exhibits or paper may be expunged from the record by an Order of the Board. See
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`Paper 59 at 5.
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`
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`Therefore, Patent Owner respectfully moves the Board to expunge sealed
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`Exhibits 2001, 2002, and 2047 from the record, which the Board did not rely upon
`
`in its Final Written Decision. Paper 63; see also Paper 67. The Board recognized
`
`that these exhibits contain confidential business information that is not publicly
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`known. See Paper 18 at 2; 44 at 3. Moreover, all three exhibits constitute agreements
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`between Patent Owner and third parties, which include explicit
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`5
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
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` confidentiality clauses. See Paper 18 at 2. The Board conditionally sealed Exhibit
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`2047 in Paper 44, and sealed Exhibits 2001 and 2002 in Paper 18. Because the Board
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`did not rely on Exhibits 2001, 2002, and 2047 in its Final Written Decision, there is
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`little public interest in making such information public. Therefore, Patent Owner
`
`submits that there is good cause to expunge these documents from the record in this
`
`proceeding.
`
`ii.
`
`The Board should expunge Exhibits 2020, 2021, and 2033.
`
`In addition, Patent Owner has previously explained that there are certain
`
`confidential provisions contained in Exhibits 2020, 2021, and 2033, all of which
`
`have been sealed in this proceeding. Paper 13 at 2–3; see also Paper 18 (order sealing
`
`same). The parties agreed that the Board relied on Exhibits 2020, 2021, and 2033 in
`
`its Final Written Decision, Paper 63. Paper 67 at 1. Therefore, Patent Owner seeks
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`to expunge Exhibits 2020, 2021, and 2033, and replace them with public versions
`
`that only redacts confidential information not identified in the Final Written
`
`Decision. The Board has already instructed that this approach is appropriate. Paper
`
`64 at 3–4.
`
`Therefore, good cause exists to expunge the following confidential documents
`
`and replace them with redacted versions for the following reasons:
`
`
`
`
`6
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
`
`Exhibit 2020
`
`
`Information Memorandum,
`is a Confidential
`Exhibit 2020
`“AdMission” (Swiftsure Capital LLC, December 13, 2004). Certain
`information should be expunged from Exhibit 2020 as shown in the
`attached proposed redacted version of the document. The information
`constitutes confidential business information not material to the
`Board’s Final Written Decision. See Paper 63.
`
`Exhibit 2021
`
`
`Exhibit 2021 is an Amendment No. 3 to the Visual Content Services
`Agreement Between eBay and iPIX (June 27, 2003). Certain
`information should be expunged from Exhibit 2021 as shown in the
`attached proposed redacted version of the document. The information
`constitutes confidential business information not material to the
`Board’s Final Written Decision. See Paper 63.
`
`Exhibit 2033
`
`
`Exhibit 2033 is a Visual Content Services Agreement Between eBay
`and iPIX (April 19, 2000). Certain information should be expunged
`from Exhibit 2033 as shown in the attached proposed redacted version
`of the document. The information constitutes confidential business
`information not material to the Board’s Final Written Decision. See
`Paper 63.
`
`
`
`iii. The Board should expunge Exhibits 1019, 2075, and Paper 42.
`
`Finally, Patent Owner moves the Board to expunge Exhibits 1019, 2075, and
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`Paper 42. Exhibits 1019 and 2075 were relied upon by the Board in its Final Written
`
`Decision. Paper 63 at 34, 70; see also Paper 67 at 1. However, redacted versions of
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`these exhibits were previously filed in this proceeding. Specifically, Exhibit 2075 is
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`the deposition transcript of Gary Frazier, a redacted version of which was filed on
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`7
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
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`April 6, 2016, identified as Exhibit 2076. Exhibit 1019 is the deposition transcript
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`of Sarah Pate, a redacted version of which was filed on April 1, 2016, identified as
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`Exhibit 1020. Because the Board did not specifically rely on the redacted sections
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`of these transcripts in the Final Written Decision, Patent Owner submits there is good
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`cause to expunge the un-redacted versions of these documents from the record in
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`this proceeding.
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`In addition, Paper 42, should be expunged because a redacted version was
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`filed in this proceeding. See Paper 41. Moreover, the Final Written Decision, Paper
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`63, does not discuss Paper 42. Accordingly, there is little public interest in making
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`such information public. Therefore, Patent Owner submits that there is also good
`
`cause to expunge the un-redacted versions of these documents from the record in
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`this proceeding.
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`III. CONCLUSION
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`In conclusion, pursuant to 37 C.F.R. § 42.56, Patent Owner moves to expunge
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`from the record in their entirety Paper 42, Exhibits 1019, 2001, 2002, 2047, and
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`2075. Patent Owner also moves to expunge from the record Exhibits 2020, 2021,
`
`and 2033 (for which redacted versions are submitted herewith for access by the
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`Board and parties only pending the Board’s decision on the motion).
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`8
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
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`Dated: March 7, 2018.
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`Respectfully submitted,
`
`
`
` By: / Peter J. Ayers/
`Peter J. Ayers, Esq.
`2200 Bowman Avenue
`Austin Texas, 78703
`Tel: (512) 771-3070
`Email: peter@ayersiplaw.com
`
`Attorneys for Patent Owner Summit 6 LLC
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`9
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`IPR2015-00806
`U.S. Pat. No. 7,765,482
`Patent Owner’s Motion to Expunge
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the paper entitled “Patent
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`Owner’s Motion to Expunge” was served this 7th day of March, 2018, by e-mail,
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`on the following counsel of record:
`
`John Alemanni, Reg. No. 47,384
`Lead Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`JAlemanni@kilpatricktownsend.com
`
`Michael Morlock, Reg. No. 62,245
`Back-up Counsel
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`MMorlock@kilpatricktownsend.com
`
`Brian K. Erickson, Reg. No. 48,895
`DLA Piper LLP(US)
`401 Congress Avenue, Ste. 2500
`Austin, TX 787011-3799
`Samsung_Summit-IPR@dlapiper.com
`
`James M. Heintz, Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Ste. 300
`Reston, VA 20190
`Samsung_Summit-IPR@dlapiper.com
`
`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`Attorney for Patent Owner Summit 6 LLC
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`10
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