UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`RPX CORPORATION,
`Petitioner
`
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner
`____________________
`
`Case IPR2015-01750
`US Patent No. 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`____________________
`
`________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S THIRD MOTION TO SEAL
`
`
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`
`heading.
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`RPX CORPORATION,
`Petitioner
`
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner
`____________________
`
`Case IPR2015-01750
`US Patent No. 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`____________________
`
`________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S THIRD MOTION TO SEAL
`
`
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in the
`
`heading.
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Acxiom Corp. v Phoenix Licensing, LLC, Case No. CBM2015-00134
` (November 19, 2015) .............................................................................................. 1
`First Data Corp. v Cardsoft, LLC, Case No. IPR2014-00715
` (October 17, 2014)...............................................................................................1, 4
`Gnosis S.P.A. v South Alabama Medical Science Foundation, IPR2013-00116
`(October 9, 2013) .................................................................................................... 3
`Microsoft Corp. v Enfish, LLC, Case No. IPR2013-0059 (June 17, 2014) ............... 3
`RPX Corp v. VirnetX, Inc., IPR2014-00171 ..................................................... 2, 3, 5
`Other Authorities
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759-60 (Aug. 14,
`2013) ....................................................................................................................... 2
`
`
`
`i
`
`
`
`
`
`RPX moved to seal certain pleadings and exhibits which it claims have its
`
`confidential information (the “Motion”). Patent Owner files this paper, styled as an
`
`“opposition,” but primarily writes in the public interest. Specifically, “[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.” First Data Corp. v Cardsoft, LLC, Case IPR2014-
`
`00715, Paper 10, p. 2 (October 17, 2014). In this context, Patent Owner writes
`
`more as an amicus, in pro publica, than as an adversary to the movant. Patent
`
`Owner
`
`is concerned
`
`that zealous sealing will prevent
`
`the public from
`
`understanding the Board’s decision.
`
`In these three related IPRs, two primary issues are raised in the petitions and
`
`preliminary responses: (a) the merits of petitioner’s invalidity arguments, and (b)
`
`whether Petitioner has failed to name a real party in interest (RPI). The Motion
`
`applies only to the RPI issue. Regardless of the Board’s decision on these two
`
`issues, “[c]onfidential information relied upon in a decision to grant or deny a
`
`request to institute ordinarily will be made public.” Acxiom Corp. v Phoenix
`
`Licensing, LLC, Case No. CBM2015-00134 et al, Paper 22, p. 6 (November 19,
`
`2015). A determination that a petitioner has failed to name an RPI is a decisive
`
`
`
`1
`
`
`
`issue in IPR proceedings and the required inquiry is a “highly fact-dependent
`
`question” Decision Granting Patent Owner’s Motion for Additional Discovery,
`
`Paper 11, at p. 4 (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,759-60 (Aug. 14, 2013)). Therefore, the Board should strongly favor a clear
`
`public record.
`
`The Petitioner has previously attempted to withhold purported confidential
`
`information related to RPI determinations from the public record. In RPX Corp. v.
`
`VirnetX, Inc., Petitioner argued unsuccessfully that its client was not an RPI. Later,
`
`on Petitioner’s motion
`
`to expunge “confidential”
`
`information,
`
`the Board
`
`thoughtfully considered each item and whether it should be sealed or redacted.
`
`IPR2014-00171, Paper 62 (September 9, 2014). The Board’s decision resulted in
`
`publication of at least some information that Petitioner had identified as
`
`“confidential.”
`
`Based upon at least Petitioner’s experience in RPX v VirnetX and prior to
`
`filing the three petitions here:
`
` Petitioner was well aware that RPI is an issue in IPRs. (e.g., Ex.
`
`2018).
`
` Petitioner also knew that RPI was likely to be of significance in these
`
`petitions because of its own position relative to its clients. (e.g., RPX
`
`v. VirnetX, Paper 62; Ex. 2018).
`
`
`
`2
`
`
`
` Petitioner knew that its “confidential” relationship with a client/un-
`
`named RPI would likely become public because it would become the
`
`subject of an RPI dispute. (RPX Corp v. VirnetX, Inc., IPR2014-
`
`00171, paper 62).
`
` Petitioner knew that the Board would scrutinize its efforts to keep
`
`information relevant to the RPI issue from the public record. (Id.).
`
`As the Board is aware, the RPI issue is generic – it applies to all inter partes
`
`reviews, covered business method reviews and post grant reviews. The RPI issue
`
`arises often before the Board, yet the precedent on this issue is limited. The dearth
`
`of available precedent suggests that there is a strong public interest in the Board’s
`
`decision on RPI here. The Motion therefore “needs to show that the movant’s need
`
`for confidentiality outweighs the strong public interest in having an open record.”
`
`Microsoft Corp. v Enfish, LLC, Case No. IPR2013-0059 et al, Paper 27, p. 3 (June
`
`17, 2014).
`
`Patent Owner leaves to the Board’s good judgment whether Petitioner would
`
`leave sufficient information in the public record to allow the public to clearly
`
`discern the parties’ arguments. Precedent clearly states, “[t]he thrust of the parties’
`
`arguments must be clearly discernable from the redacted versions of the
`
`documents.” Gnosis S.P.A. v South Alabama Medical Science Foundation,
`
`IPR2013-00116, Paper 29, p. 2 (October 9, 2013). A sealed record of the scope
`
`
`
`3
`
`
`
`sought by Petitioner here will surely deprive the public of an understanding of the
`
`contours of the Board’s reasoning on RPI. Notably, though the parties have filed
`
`redacted versions of various pleadings and exhibits, Petitioner has not moved to
`
`redact. Patent Owner itself has no objection to redacting, just as it has no objection
`
`to sealing, but asks that the strong public interest in public disclosure of
`
`information be respected.
`
`The Motion should be denied to the extent it seeks to keep Petitioner’s
`
`agreement with its RPI client confidential. First Data v Cardsoft, Paper 10 at 4
`
`(denying a petitioner’s motion to seal its agreement with a third party, where the
`
`third party was an un-named RPI). It follows from First Data that, to the extent
`
`that any of the alleged confidential information could be derived from or is the
`
`natural consequence of the Petitioner-client agreement, such information should be
`
`treated the same as the agreement. Similarly, assertions that the publication of an
`
`agreement could prejudice the parties to the agreement in future negotiations of
`
`other, later agreements without more are insufficient reason to hold agreements
`
`confidential, particularly when
`
`those agreements bear on
`
`the ultimate
`
`determination of RPI. Id. at 3-4.
`
`The Board should also consider if the alleged confidential information was
`
`never confidential, or might have been confidential but confidentiality was lost.
`
`Patent Owner’s views on the scope of confidentiality of some information were
`
`
`
`4
`
`
`
`already presented in Paper 40, pp. 9-11. In respect of the public interest, the only
`
`information which might be withheld from the public would be information which
`
`is not relevant to the RPI issue, and which Petitioner demonstrates is both
`
`important and held in confidence.
`
`Lastly, there should be no sympathy for Petitioner’s concerns about losing
`
`confidentiality of important business information. Petitioner either chose to be here
`
`of its own accord (as it claims), or is here on behalf of the un-named RPI (as Patent
`
`Owner contends). In the first case, it is the Petitioner’s own choice that put it in a
`
`position where the strong interest in a full public record may require disclosure of
`
`some of its “confidential” information. In the second case, it is precisely the
`
`Petitioner’s actions on behalf of its un-named RPI that should be made public so
`
`that the Board’s reasoning on RPI can be understood by both the public in these
`
`IPR proceedings and in IPRs, CBMs and Post Grant Reviews still to come. After
`
`its experience in RPX v VirnetX, Petitioner filed the instant petitions knowing full
`
`well the potential that “confidential” information might of necessity be made
`
`public.
`
`Date: February 16, 2016
`
`
`Respectfully submitted,
`
`
`
`/jonathan pearce/
`By:
`Jonathan Pearce (Reg. No. 60,972)
`SoCal IP Law Group LLP
`310 N. Westlake Boulevard, Suite 120
`Westlake Village, CA 91362
`Attorneys for Applications in Internet Time LLC
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S THIRD MOTION TO SEAL AND REDACT
`has been served via email on February 16, 2016, upon the following:
`
`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`
`Rgiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`
`
`
`Dated: February 16, 2016
`
`
`
`
`
`By: /Anneliese Lomonaco/
`
`Anneliese G. Lomonaco
`
`
`
`
`
`6
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