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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BUNGIE, INC.,
`Petitioner,
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`v.
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`WORLDS INC.,
`Patent Owner.
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`_______________
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`Case IPR2015-01264 (Patent 7,945,856 B2)
`Case IPR2015-01319 (Patent 8,082,501 B2)
`Case IPR2015-01321 (Patent 8,145,998 B2)
`____________
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`PATENT OWNER WORLDS INC.’S UNOPPOSED
`MOTION TO SEAL AND ENTRY OF PROTECTIVE ORDER
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
`Pursuant to the Board’s Order (Paper 53), Patent Owner Worlds, Inc.
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`(“Worlds”) submits this Motion to Seal limited portions of Bungie’s Brief on
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`Remand (Paper 51, “Bungie Br.”). Pursuant to the Board’s Order and 37 C.F.R.
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`42.54(a), Worlds provided a copy of this Motion to Seal and Entry of Protective
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`Order, the proposed Default Protective Order (Ex. 2100), and the proposed
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`redactions to Bungie’s Brief on Remand (Ex. 2101, with proposed redactions
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`shown on pp. 18-19) to Petitioner Bungie, who does not oppose this Motion.1
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`I.
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`INTRODUCTION
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`Bungie’s Brief on Remand includes what Bungie characterizes as Statements
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`of Material Fact (“SMF”) Nos. 7-11 (see Bungie Br. 17-19).2 SMF Nos. 7, 10, and
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`1 In conferring with Bungie, Bungie requested inclusion of the following statement:
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`Bungie does not believe the information in question is confidential, but in view of
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`the Board’s suggestion that the parties employ a “laser-like focus on the substance
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`and merits of the dispositive issues” (Paper 53 p. 5), Bungie does not oppose this
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`motion.
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`2 The Board has temporarily placed Bungie’s Brief on Remand under seal.
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`Pursuant to the Board’s Order (Paper 53, 4), this Motion is submitted to “indicate
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`why it is appropriate to continue to maintain information in those briefs under seal”
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`and to “indicate with specificity the portions to remain sealed.” This Motion is not
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`intended to address the merits or weight to be attributed to SMF Nos. 7-11.
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`- 2 -
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`
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
`11 specifically include what Bungie contends are quoted contents (including
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`“terms”) of settlement communications between Bungie’s counsel and Worlds’
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`counsel. For the reasons discussed below, Worlds submits that sealing this type of
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`information falls within the Board’s authority to “[require] that a trade secret or
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`other confidential research, development, or commercial information not be
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`revealed or be revealed only in a specified way.” 37 C.F.R. § 42.54(a)(7).
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`II. LEGAL STANDARD
`The Office Patent Trial Practice Guide provides that the Board may seal
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`documents pursuant to a proposed protective order where there is “good cause”
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`that “strike[s] a balance between the public’s interest in maintaining a complete
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`and understandable file history and the parties’ interest in protective truly sensitive
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`information.” 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). Those rules “identify
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`confidential information in a manner consistent with Federal Rule of Civil
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`Procedure 26(c)(1)(G), which provides for protective orders for trade secret or
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`other confidential research, development, or commercial information.” Id. (citing
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`37 C.F.R. § 42.54).
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`Pursuant to this authority, the Board routinely grants motions to treat
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`settlement agreements, filed along with motions to terminate Board proceedings
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`based on settlement, as business confidential information under 35 U.S.C. § 317(b)
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`- 3 -
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`
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
`and 37 C.F.R. § 42.74(c). See, e.g., ams AG, et al. v. 511 Innovations, Inc.,
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`IPR2016-01819, Paper 21 at 3-4 (PTAB Apr. 27, 2017).
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`III. BASIS FOR MOTION TO SEAL
`Sealing the proposed portions of Bungie’s SMF Nos. 7, 10, and 11
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`successfully strikes a balance between the public’s interest in maintaining a
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`complete and understandable file history and the protection of truly sensitive
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`information. Just as an executed settlement agreement deserves protection from
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`unsealed filings and public disclosure, so do Bungie’s SMF Nos. 7, 10, and 11.
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`Further, no public interest is served in disclosing contents of settlement discussions
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`occurring between parties before the Board. Here, Bungie’s brief cites to but does
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`not quote from SMF Nos. 7, 10, or 11. See, e.g., Bungie Br., 25.
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`Where a petitioner and patent owner can reach agreement on settlement
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`terms further to settlement discussions, the successful settlement discussions must
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`be memorialized into a settlement agreement, and submitted to the Board along
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`with a motion to terminate and, optionally, a request to treat the executed
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`settlement agreement as business confidential information. As a policy matter, it
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`would do little good to treat a settlement agreement as business confidential
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`information, but permit unsealed filing of settlement discussions leading to that
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`settlement agreement. Moreover, the risk of permitting unsealed filing of
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`- 4 -
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`
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
`settlement communications is likely to chill such settlement communications from
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`even occurring in the first place.
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`As such, Worlds requests that the Board seal SMF Nos. 7, 10, and 11
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`pursuant to the Board’s authority to seal business confidential information under
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`37 C.F.R. § 42.54(a)(7), as indicated in Ex. 2101, subject to the proposed
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`protective order (Ex. 2100) filed with this Motion. The proposed protective order
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`filed with this Motion is consistent with the Board’s default Protective Order per
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`Appendix B of the Board’s Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,765-66 (Aug. 14, 2012).
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`IV. CONCLUSION
`For the reasons presented above, Patent Owner respectfully requests that the
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`Board grant this Motion to Seal and seal Petitioners’ SMF Nos. 7, 10, and 11 (pp.
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`18-19) contained in Petitioners’ Brief of Remand as shown in Ex. 2101.
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`- 5 -
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
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`
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`Dated: January 23, 2019
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`
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`
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`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`Alan A. Wright (Reg. No. 40,438)
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Email: whelge@dbjg.com
`Email: anoto@dbjg.com
`Email: awright@dbjg.com
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`Counsel for Patent Owner
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`- 6 -
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`
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`IPR2015-01264, -01319, -01321 Patent Owner’s Unopposed Motion to Seal and
`Entry of Protective Order
`CERTIFICATE OF SERVICE
`I hereby certify that on January 23, 2019, a true and correct copy of the
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`foregoing Patent Owner’s Unopposed Motion to Seal and Entry of Protective
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`Order is being served via email, by consent, to the Petitioner at the correspondence
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`addresses of record as follows:
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`Michael T. Rosato
`Reg. No. 52,182
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Ave.
`Suite 5100
`Seattle, WA 98104-7036
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`E-mail: mrosato@wsgr.com
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`Matthew A. Argenti
`Reg. No. 61,836
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 354-4154
`Facsimile: (650) 493-6811
`E-mail: margenti@wsgr.com
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`
`/s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Lead Counsel for Patent Owner
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`- 7 -
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