Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 19
` Entered: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Motion for Entry of a Modified Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 19
` Entered: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-01201
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Motion for Entry of a Modified Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`IPR2015-01201
`Patent 5,591,678
`
`
`I.
`
`INTRODUCTION
`Raytheon Company (“Patent Owner”) filed a Motion for Entry of a
`Modified Protective Order. Paper 14 (“Mot.”). Sony Corporation
`(“Petitioner”) filed an Opposition (Paper 15, “Opp.”) and Patent Owner filed
`a Reply (Paper 18, “Reply”). A copy of a Proposed Protective Order was
`filed together with Patent Owner’s Motion as Exhibit 2002 (redline
`comparison to the Default Protective Order) and Exhibit 2003 (clean copy).
`With its Reply, Patent Owner filed a revised Proposed Protective Order
`(Ex. 2007), including changes responsive to Petitioner’s objections set forth
`in the Opposition. We refer to the revised version of the Proposed
`Protective Order (Ex. 2007) throughout this Decision.
`In its Motion, Patent Owner indicates that it “intends to submit, with
`its Patent Owner Response, documents that are subject to The International
`Traffic in Arms Regulations (‘ITAR’).” Mot. 1 (citing 22 C.F.R. Parts 120–
`130); see id. at 2–3 (citing Ex. 2001 ¶¶ 4, 6; Ex. 2005 ¶ 3). Patent Owner,
`thus, requests entry of a modified protective order (Ex. 2007), prior to filing
`its Patent Owner Response, in order to comply with its obligations under
`ITAR. Mot. 3–4.
`The Proposed Protective Order differs from the Board’s Default
`Protective Order primarily in that it includes several provisions regarding
`access to ITAR designated materials (i.e., “ITAR Restricted Documents”).
`See Ex. 2007 ¶¶ 2, 4–7; Ex. 2002 (red-line comparison to the Default
`Protective Order). The Proposed Protective Order also removes
`
`
`
`2
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`IPR2015-01201
`Patent 5,591,678
`
`paragraph 2(A)1 from the Board’s Default Protective Order, and adds a new
`paragraph 10 relating to “Retained Jurisdiction.” See Ex. 2007 ¶¶ 2, 10.
`Petitioner opposes the Proposed Protective Order for several reasons.
`See Opp. 4–10. Specifically, Petitioner objects to certain changes proposed
`by Patent Owner as they relate to non-ITAR confidential information as
`burdensome to Petitioner (id. at 4–5); and to certain ITAR-related
`provisions, particularly reporting obligations related to potential ITAR
`infractions, the ability to submit ITAR Restricted Documents to the Board,
`and the non-mutuality of the ITAR-related provisions (i.e., specific
`references to Raytheon in these provision) (id. at 5–10). Petitioner argues
`also that Patent Owner has not shown it even needs to submit the ITAR
`information. Id. at 8–9. Finally, Petitioner notes how the Proposed
`Protective Order potentially would affect Board operations. Opp. 11–12.
`In its Reply, Patent Owner revises the Proposed Protective Order to
`address some of Petitioner’s objections, and responds to Petitioner’s
`contentions.
`
`II. ANALYSIS
`The Office Patent Trial Practice Guide states the following concerning
`protective orders:
`(a) Purpose. This document provides guidance on
`the
`procedures for filing of motions to seal and the entry of
`protective orders in proceedings before the Board. The
`protective order governs
`the protection of confidential
`
`1 Paragraph 2(A) allows access to confidential information by “Parties”
`defined as “Persons who are owners of a patent involved in the proceeding
`and other persons who are named parties to the proceeding.” See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14, 2012)
`(Appendix B).
`
`
`
`3
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`IPR2015-01201
`Patent 5,591,678
`
`
`information contained in documents, discovery, or testimony
`adduced, exchanged, or filed with the Board. The parties are
`encouraged to agree on the entry of a stipulated protective
`order. Absent such agreement, the default standing protective
`order will be automatically entered.
`77 Fed. Reg. at 48,769 (Appendix B) (emphasis added). As indicated in
`Patent Owner’s Motion, the parties were unable to agree on the scope of the
`Proposed Protective Order. Mot. 12. Given the unique circumstances of this
`proceeding, particularly regarding the implication of ITAR, rather than
`addressing the Proposed Protective Order as a whole, we follow the
`guidance of the Trial Practice Guide with respect to contested
`non-ITAR-specific provisions, and address the contested ITAR-specific
`provisions separately. Patent Owner, as the moving party, has the burden to
`show that it is entitled to the relief it requests. See 37 C.F.R. § 42.20(c).
`Submission of ITAR Restricted Documents
`As indicated above, Patent Owner intends to submit ITAR Restricted
`Documents with its Patent Owner Response. According to Patent Owner,
`these documents are related to the conception and reduction to practice of
`the invention claimed in the ’678 patent. Mot. 2 (citing Ex. 2001 ¶ 4;
`Ex. 2005 ¶ 3). Patent Owner intends to submit these documents to establish
`that Bertin2 is not prior art under 35 U.S.C. § 102(e). Id. According to
`Patent Owner, the ITAR Restricted Documents it intends to submit were
`subject to ITAR prior to the filing of the Petition in this proceeding. Id. at 3
`(citing Ex. 2005 ¶ 3). The ITAR Restricted Documents are governed by
`ITAR, and must be treated accordingly. Id. (citing Ex. 2001 ¶ 6). Patent
`Owner further asserts that “[w]ithout the entry of such a protective order
`
`2 In our Decision on Institution, we instituted the instant trial based, in part,
`on U.S. Patent No. 5,202,754 to Bertin. See Paper 6, 23–24.
`
`
`
`4
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`IPR2015-01201
`Patent 5,591,678
`
`[that will ensure compliance with ITAR in connection with the submission
`of ITAR Restricted Documents, its] ability to respond to Petitioner’s
`challenges, and therefore its due process rights, would be compromised.” Id.
`Petitioner argues that Patent Owner “has not made a sufficient case
`that it needs ITAR information at all.” Opp. 8. In this regard, Petitioner
`argues that “Patent Owner has not addressed what steps it has taken to limit
`the need for ITAR-based restrictions.” Id. at 3. Petitioner further asserts
`that Patent Owner has known its case would involve ITAR Restricted
`Documents since at least July 2015, and that Patent Owner should have
`indicated whether it had sought or will seek a license from the U.S. State
`Department to lift the ITAR-restricted designation from the documents. Id.
`at 8–9 (citing Ex. 1023).
`We are not persuaded that Patent Owner has a burden in its Motion
`for entry of a protective order to demonstrate that the material it wishes to
`submit is necessary for its substantive case. Further, Patent Owner asserts
`that it “intends to submit only a small fraction” of the 11,000 pages of
`documents designated as ITAR protected that were produced in the related
`district court proceeding. Reply 2. Petitioner also does not cite to any
`authority to support the asserted obligation of Patent Owner to limit the use
`of ITAR information, or to obtain a license for the use thereof, prior to
`submission of such information in this inter partes proceeding.
`We are persuaded that Patent Owner has demonstrated a need to
`submit ITAR Restricted Documents in this proceeding. We also are
`persuaded that a modified Protective Order, addressing the treatment of
`ITAR Restricted Documents, is necessary in order to satisfy Patent Owner’s
`obligations under ITAR.
`
`
`
`5
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`IPR2015-01201
`Patent 5,591,678
`
`
`Petitioner’s Objections to the Proposed Protective Order
`We now address each of Petitioner’s specific objections to the
`Proposed Protective Order in turn.
`Paragraph 2(A) of the Default Protective Order
`The Proposed Protective Order deletes paragraph 2(A) of the Default
`Protective Order, which allows disclosure of confidential information to
`“Parties,” as defined therein. Patent Owner asserts this “modification [to the
`Default Protective Order] serves to limit distribution of confidential
`information to those individuals necessary for supporting the parties’ efforts
`in the proceeding.” Mot. 9. Petitioner argues this change relates also to
`non-ITAR confidential information, and that this change is burdensome to
`Petitioner. Opp. 4. In Reply, Patent Owner argues that Petitioner never
`responded to a request from Patent Owner for information about the scope
`and identity of the individuals who would have access (Reply 1 (citing
`Ex. 2006, 1)) to confidential information.
`We are not persuaded Patent Owner has met its burden to show that
`deviation from the Default Protective Order is warranted on the issue of
`disclosure of non-ITAR confidential information to “Parties.” Paragraph 4
`of the Proposed Protective Order further limits paragraph 3 (i.e., the
`paragraph defining who has access to confidential information) to address
`ITAR Restricted Documents, thus, addressing Patent Owner’s concerns
`regarding compliance with ITAR for any documents submitted in this
`proceeding. Accordingly, the language of paragraph 2(A) of the Default
`Protective Order shall be re-added to the Proposed Protective Order as
`paragraph 3(A), and the subsequent sub-paragraphs of paragraph 3 shall be
`renumbered accordingly.
`
`
`
`6
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`IPR2015-01201
`Patent 5,591,678
`
`
`Paragraphs 6 and 7 of the Proposed Protective Order
`Petitioner objects to certain language in paragraphs 6 and 7 of the
`Proposed Protective Order as being unclear, and as potentially putting the
`Board in a position to interpret and enforce ITAR regulations. Opp. 5–10.
`As noted by Patent Owner, the U.S. Department of State, Directorate of
`Defense Trade Controls (“DDTC”) is the executive agency that administers
`and enforces ITAR. Mot. 4. Paragraph 6 of the Proposed Protective Order
`includes language that ITAR infractions “should be disclosed to the
`Department of State,” and paragraph 7 includes language that a party aware
`of actual of suspected ITAR infractions “will immediately inform Raytheon
`Company.” See Ex. 2007.
`Petitioner argues that the obligation to inform Patent Owner of any
`ITAR infractions is “inappropriate in an adversary proceeding,” any such
`reporting could be used by Patent Owner to “gain a tactical advantage in the
`proceeding,” and could “create a requirement for counsel to violate the
`USPTO rules of ethics.” Opp. 5–6. Petitioner also argues that, because
`“ITAR applies to all people who receive ITAR information, even in the
`absence of a protective order,” including reporting duties in the protective
`order in this proceeding “would have the effect of placing the PTAB in the
`middle of dispute about whether violations occurred,” which is “unnecessary
`because the DDTC remains fully empowered to handle violations.” Id. at 7.
`Petitioner further argues that the language in paragraph 6 that ITAR
`infractions “should be disclosed to the Department of State,” is permissive,
`and, thus, unclear. Id. at 9. Petitioner also asserts that, if such a requirement
`is present in ITAR, it should be handled by the DDTC, not the PTAB, and if
`such a requirement is not present in ITAR, “it is unclear why the protective
`
`
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`7
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`IPR2015-01201
`Patent 5,591,678
`
`order should create one.” Id. at 9–10. Patent Owner argues that these same
`provisions are already present in the protective order in the related district
`court litigation, and thus present no additional burden to Petitioner. Mot.
`10–11; Reply. 1–2.
`We agree with Petitioner that any potential ITAR infractions should
`be handled by the DDTC. We recognize this language is included already in
`the Protective Order in the related district court litigation, and, as such,
`Petitioner already is obligated to comply with these provisions. We,
`however, determine that the DDTC is best equipped to handle any potential
`ITAR infractions, and we do not see a need to include an additional
`enforcement mechanism in the protective order in this proceeding.
`Accordingly, the following language shall be deleted from the
`Proposed Protective Order:
`
`In paragraph 6: “, which should be disclosed to the Department
`of State.”3
`In paragraph 7: “Any party aware of actual or suspected ITAR
`
`infractions, with respect to information designated by Raytheon as ITAR-
`RESTRICTED, will immediately inform Raytheon Company.”
`Objections Addressed in Reply
`Petitioner includes additional objections in its Opposition. We
`address each of these in turn, but find Patent Owner’s revisions to the
`Proposed Protective Order sufficiently address these remaining objections.
`
`
`3 Patent Owner is authorized to replace this language with a single sentence
`merely stating the statute(s) or regulation(s) that control reporting
`requirements under ITAR, without including an additional obligation,
`permissive or otherwise, under the protective order to do so.
`
`
`
`8
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`IPR2015-01201
`Patent 5,591,678
`
`
`Petitioner objects to the changes to paragraph 2(B) of the Default
`Protective Order, arguing the changes are burdensome. Opp. 4–5. Patent
`Owner has added clarifying language to the Proposed Protective Order
`addressing this issue. See Reply 1; Ex. 2007 ¶ 3(A). We are persuaded this
`change sufficiently addresses Petitioner’s concerns.
`Petitioner objects to the following language in paragraph 6 of the
`Proposed Protective Order: “Counsel will take all necessary steps to ensure
`that any ‘ITAR-RESTRICTED’ documents will only be provided to, or
`accessible by, U.S. persons employed by Counsel that have entered an
`appearance in this case.” Opp. 10. Petitioner asserts that a literal reading of
`this language prevents ITAR Restricted Documents from being submitted to
`the Board in this proceeding. Id. Patent Owner has added language to the
`Proposed Protective Order addressing this issue.4 See Reply 4; Ex. 2007 ¶ 6.
`We are persuaded this change sufficiently addresses Petitioner’s concerns.
`Petitioner also objects to the assumption in the Proposed Protective
`Order that only Patent Owner will produce ITAR Restricted Documents.
`Opp. 10. Petitioner submits that any ITAR-related provisions in the
`protective order “should be mutual in their requirements.” In the revised
`Proposed Protective Order, Patent Owner sufficiently addresses this concern.
`See Reply. 4; Ex. 2007.
`Paragraph 10 of Proposed Protective Order
`Although neither party discusses paragraph 10 in the briefing, we note
`that this paragraph also represents a deviation from the Default Protective
`
`4 The specific added language states, “No provision herein shall be
`construed as preventing Counsel from submit[ting] ITAR-Restricted
`information to the Board consistent with the Board’s procedures for filing
`sealed documents.” Ex. 2007 ¶ 6.
`
`
`
`9
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`IPR2015-01201
`Patent 5,591,678
`
`Order. Paragraph 10 of the Proposed Protective Order relates to retained
`jurisdiction of the Board, after final disposition. Patent Owner’s Motion
`does not address the need for this modification. We are not persuaded the
`addition of paragraph 10 is necessary. Accordingly, paragraph 10 of the
`Proposed Protective Order shall be deleted.
`Submission of Confidential Documents
`The parties are reminded that confidential information must be filed
`using the appropriate availability indicator in PRPS (e.g., “Board and Parties
`Only”), regardless of whose confidential information it is. Further, a motion
`to seal must be filed concurrently with any document that either party wishes
`to be kept under the Protective Order. It is the responsibility of the party
`whose confidential information is at issue, not necessarily the proffering
`party, to file the motion to seal, unless the party whose confidential
`information is at issue is not a party to this proceeding.
`Motions to seal may be granted for good cause; until the motion is
`decided, documents filed with the motion shall be sealed provisionally.
`See 37 C.F.R. §§ 42.14, 42.54(a). The moving party bears the burden of
`showing that there is good cause to seal the record. See 37 C.F.R.
`§ 42.20(c). The parties also are reminded that “[t]here 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.” Garmin Int’l v. Cuozzo Speed Techs., LLC,
`Case IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper 34).
`
`
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`10
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`IPR2015-01201
`Patent 5,591,678
`
`
`Conclusion
`For the reasons discussed, Patent Owner’s Motion for Entry of a
`Modified Protective Order is granted subject to the revisions set forth above.
`
`III. ORDER
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Entry of a Modified
`Protective Order is granted, and that Patent Owner’s Proposed Protective
`Order (Ex. 2007), revised as indicated herein, is placed into effect and shall
`govern the conduct of this proceeding unless otherwise modified;
`FURTHER ORDERED that Patent Owner will file a clean copy of a
`new Protective Order based on its Proposed Protective Order, but revised as
`indicated herein; and
`FURTHER ORDERED that a signed copy of the Protective Order will
`be submitted as an exhibit with the first-filed Motion to Seal in this
`proceeding.
`
`11
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`IPR2015-01201
`Patent 5,591,678
`
`PETITIONER:
`Matthew A. Smith
`Zhuanjia Gu
`Robert Hails
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`docketing@turnerboyd.com
`
`PATENT OWNER:
`Thomas J. Filarski
`Stanley A. Schlitter
`Daniel S. Stringfield
`Brian Fahrenbach
`John L. Abramic
`STEPTOE & JOHNSON, LLP
`tfilarski@steptoe.com
`sschlitter@steptoe.com
`dstringfield@steptoe.com
`bfahrenbach@steptoe.com
`jabramic@steptoe.com
`
`
`
`
`12
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