`Tel: 571-272-7822
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`Paper 53
`Entered: March 11, 2016
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`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 IPR2015-01752
`Patent 7,356,482 B2
`
`
`Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`Dismissing Patent Owner’s Motions to Seal
`Granting Petitioner’s Motions to Seal
`37 C.F.R. § 42.14
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`IPR2015-01752
`Patent 7,356,482 B2
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`Patent Owner filed Motions to Seal accompanying its Preliminary
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`Response and its Sur-Reply. See Paper 19 (“PO First Mot.”); Paper 36
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`(“PO Second Mot.”). Petitioner filed Motions to Seal accompanying its
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`Reply and its Motion for Sanctions, as well as an additional Motion to Seal,
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`as authorized in Paper 42. See Paper 27 (“Pet. First Mot.”); Paper 31
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`(“Pet. Second Mot.”); Paper 45 (“Pet. Third Mot.”). As also authorized in
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`Paper 42, Patent Owner filed an Opposition to Petitioner’s Third Motion to
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`Seal. See Paper 49 (“PO Opp. to Third Mot.”). The Default Protective
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`Order previously has been entered in this case. Paper 50; Ex. 1117.
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`The record for an inter partes review shall be made available to the
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`public, except as otherwise ordered, and a document filed with a motion to
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`seal shall be sealed provisionally until the motion is decided. 35 U.S.C.
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`§ 316(a)(1); 37 C.F.R. § 42.14. There is a strong public policy for making
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`all information filed in an inter partes review open to the public. Garmin
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`Int’l v. Cuozzo Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB
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`Mar. 14, 2013) (Paper 34). The standard for granting a motion to seal is “for
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`good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the
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`burden of proof of showing entitlement to the requested relief, and
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`establishing that the information sought to be sealed is confidential
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`information. 37 C.F.R. § 42.20(c).
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`Patent Owner’s Motions to Seal
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`In its first Motion to Seal, Patent Owner seeks to seal Exhibits 2018,
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`2019, and 2022 in their entirety. PO First Mot. 1. Patent Owner also seeks
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`to seal portions of its Preliminary Response (Paper 20) that reference and
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`discuss these exhibits. PO First Mot. 1. Patent Owner has filed a
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`non-confidential, redacted version of its Preliminary Response (Paper 26
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`2
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`IPR2015-01752
`Patent 7,356,482 B2
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`(redacted version)). In its Second Motion to Seal, Patent Owner seeks to
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`seal Exhibits 2025 and 2026 in their entirety. PO Second Mot. 1. Patent
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`Owner also seeks to seal portions of its Sur-Reply (Paper 38) that reference
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`and discuss these exhibits. PO Second Mot. 1. Patent Owner has filed a
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`non-confidential, redacted version of its Sur-Reply (Paper 37 (redacted
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`version)).
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`Patent Owner asserts that the referenced exhibits should be sealed
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`because the exhibits were designated as Protective Order Material by
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`Petitioner, or incorporate information from such documents. PO First
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`Mot. 1; PO Second Mot. 1. Patent Owner also asserts its Preliminary
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`Response and Sur-Reply should be sealed because they refer to and discuss
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`the sealed exhibits. PO First Mot. 1; PO Second Mot. 1. Because the
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`information Patent Owner’s Motions to Seal seek to seal is Petitioner’s
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`confidential information, and because Petitioner filed motions to seal
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`addressing this information, Patent Owner’s Motions to Seal are dismissed
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`as moot.
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`Petitioner’s First Motion to Seal
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`In its first Motion to Seal, Petitioner seeks to seal portions of
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`Exhibit 1119,1 as well as Exhibits 1120–1125 in their entirety. Pet. First
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`Mot. 1–4. Petitioner also seeks to seal portions of the Reply (Paper 28) that
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`reference and discuss these exhibits. Pet. First Mot. 1–4. Petitioner has filed
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`non-confidential, redacted versions of Exhibit 1119 and its Reply (Paper 29
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`(redacted version)).
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`1 Petitioner’s briefing cites to the Exhibit numbers used in IPR2015-01751.
`For convenience, we use the corresponding Exhibit numbers assigned to the
`identical documents in this proceeding.
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`3
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`IPR2015-01752
`Patent 7,356,482 B2
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`According to Petitioner, these exhibits and the Reply “contain highly
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`confidential and extremely sensitive information, including inter alia, highly
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`confidential IPR litigation strategy that RPX employs to pursue its business,
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`and highly confidential agreements and communications records.” Pet. First
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`Mot. 1. Petitioner further asserts that it “guards this information to protect
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`its own business as well as third parties and is contractually obligated to
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`keep certain agreements confidential.” Id. at 1–2.
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`A summary of Petitioner’s assertions regarding each of the exhibits
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`that is the subject of Petitioner’s first Motion to Seal is included in the
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`following table:
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`Exhibit No. Petitioner’s Reasons for Sealing
`1119
`“describes RPX’s IPR litigation strategy” (Pet. First Mot. 2);
`“summarizes confidential communications and agreements”
`(id.)
`1120–1122 “confidential agreements [that] detail confidential aspects of
`business relationships and by their explicit terms require that
`RPX treat them as confidential” (id.)
`1123, 1125 “post-filing confidential communications between RPX and a
`third party that refer to terms of confidential agreements and
`sensitive, improper disclosures of confidential information by
`Patent Owner” (id. at 3)
`“confidential RPX business records that reveal RPX’s IPR
`litigation strategy” (id.)
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`1124
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`Petitioner’s counsel further “certifies that the information sought to be
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`sealed by this motion has not been published or otherwise made public to the
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`best of his knowledge.” Pet. First Mot. 4. Petitioner asserts that it has
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`“tailored the redactions in the Reply and Ex. [1119] as narrowly as
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`possible.” Id. at 3.
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`Patent Owner did not file an opposition to Petitioner’s first Motion to
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`Seal. Upon considering the content of Exhibits 1119–1125 and Petitioner’s
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`4
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`IPR2015-01752
`Patent 7,356,482 B2
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`Reply, along with Petitioner’s representations as to the confidentiality of the
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`information, we determine that Petitioner has shown good cause for sealing
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`Exhibits 1120–1125, as well as the redacted portions of Exhibit 1119 and the
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`Reply. Accordingly, Petitioner’s first Motion to Seal (Paper 27) is granted.
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`Petitioner’s Second Motion to Seal
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`In its Second Motion to Seal, Petitioner seeks to seal Exhibits 1129,
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`1131–1135, 1137–1143, and 1146 in their entirety. Pet. Second Mot. 1–5.
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`Petitioner also seeks to seal portions of its Sanctions Motion (Paper 33) that
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`reference and discuss these exhibits. Pet. Second Mot. 1–5. Petitioner has
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`filed a non-confidential, redacted version of its Sanctions Motion (Paper 32
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`(redacted version)).
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`According to Petitioner, these exhibits and the Sanctions Motion
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`“contain highly confidential and extremely sensitive information, including
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`inter alia, highly confidential IPR litigation strategy that RPX employs to
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`pursue its business, and highly confidential agreements and communications
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`records, and highly sensitive details about how AIT failed to protect RPX’s
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`confidential information.” Pet. Second Mot. 2. Petitioner further asserts that
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`it “guards its confidential information to protect its own business as well as
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`third parties and is contractually obligated to keep certain agreements
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`confidential.” Id.
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`5
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`IPR2015-01752
`Patent 7,356,482 B2
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`A summary of Petitioner’s assertions regarding the exhibits that are
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`the subject of Petitioner’s Second Motion to Seal is included in the
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`following table:
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`Exhibit No.
`1129, 1131–1133,
`1135, 1138, 1139,
`1142, 1143
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`Petitioner’s Reasons for Sealing
`“email exchanges between counsel for RPX and counsel
`for AIT that discuss RPX’s confidential business
`information and include sensitive details about how AIT
`failed to protect RPX’s confidential information” (Pet.
`Second Mot. 3)
`1134, 1137, 1146 “would reveal highly sensitive details about how AIT
`failed to protect RPX’s confidential information in the
`context of the Sanctions Motion and should be sealed in
`these proceedings to safeguard RPX’s confidential
`information” (id.)
`“designated as Protective Order Material by AIT” (id.)
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`1140, 1141
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`Petitioner’s counsel further “certifies that the information sought to be
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`sealed by this motion has not been published or otherwise made public to the
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`best of his knowledge, other than Exhibits [1134], [1137] and [1146] which
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`RPX requests be sealed for the reasons explained above.” Pet. Second
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`Mot. 5. Petitioner asserts that it has “tailored the redactions in the Sanctions
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`Motion as narrowly as possible.” Id. at 4.
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`Patent Owner did not file an opposition to Petitioner’s Second Motion
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`to Seal. Upon considering the content of Exhibits 1129, 1131–1135, 1137–
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`1143, and 1146 and Petitioner’s Sanctions Motion, along with Petitioner’s
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`representations as to the confidentiality of the information, we determine
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`that Petitioner has shown good cause at this stage of the proceeding for
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`sealing Exhibits 1129, 1131–1135, 1137–1143, and 1146, as well as the
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`redacted portions of the Sanctions Motion. Accordingly, Petitioner’s Second
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`Motion to Seal (Paper 31) is granted.
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`6
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`IPR2015-01752
`Patent 7,356,482 B2
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`Petitioner’s Third Motion to Seal
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`In its Third Motion to Seal, Petitioner seeks to seal Paper 20
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`(Preliminary Response); Paper 38 (Sur-Reply); Paper 40 (Sanctions
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`Opposition); the description of Exhibit 2026 in Patent Owner’s Exhibit List
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`(Papers 39, 41); Exhibits 2018, 2019, 2022, 2025, and 2026 in their entirety;
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`and portions of Exhibits 2027 and 2030. Pet. Third Mot. 1–11. Petitioner
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`notes that redacted non-confidential versions of the Preliminary Response
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`(Paper 26) and the Sur-Reply (Paper 37) have been filed by Patent Owner,
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`and that redacted non-confidential versions of the Sanctions Opposition
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`(Paper 48), the Exhibit Lists (Papers 46, 47), and Exhibits 2027 and 2030
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`were filed by Petitioner concurrently with its Motion. Pet. Third Mot. 1–2.
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`According to Petitioner, these documents “contain highly confidential
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`and extremely sensitive information, including inter alia, highly confidential
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`IPR litigation strategy that RPX employs to pursue its business, references to
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`highly confidential agreements and communications records, and sensitive
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`details about how AIT failed to protect RPX’s confidential information.”
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`Pet. Third Mot. 2. Petitioner further asserts that it “guards its confidential
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`information to protect its own business as well as third parties and is
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`contractually obligated to keep certain of this information confidential.” Id.
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`at 2–3.
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`A summary of Petitioner’s assertions regarding exhibits that are the
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`subject of Petitioner’s Third Motion to Seal is included in the following
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`table:
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`Exhibit No.
`2019, 2026
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`Petitioner’s Reasons for Sealing
`“are (or are derived from) confidential RPX business
`records that reveal [details] of the confidential
`agreements in Exhibits [1120]–[1121]” (Pet. Third Mot.
`5)
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`7
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`IPR2015-01752
`Patent 7,356,482 B2
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`Exhibit No.
`2018, 2025
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`2022
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`Paper 48
`(redacted
`portions)
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`Petitioner’s Reasons for Sealing
`“confidential RPX business records that reveal RPX’s
`highly sensitive IPR litigation strategy” (id. at 7)
`“confidential RPX record of business communications”
`(id. at 8)
`“contain[] statements that expose sensitive details about
`how AIT failed to protect RPX’s confidential
`information” (id. at 9)
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`Regarding Papers 20, 38, and 40, as well as Exhibits 2027 and 2030,
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`Petitioner asserts these documents “reference sensitive confidential
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`information from [the documents at issue in the Third Motion] or from other
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`sensitive documents that Petitioner has previously moved to seal in these
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`proceedings,” or include information “RPX is obligated to treat . . . as
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`confidential.” Pet. Third Mot. 3–4, 10. Petitioner further asserts that the
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`redactions to these Papers, as well as to the Exhibit Lists, and to Exhibits
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`2027 and 2030 are narrowly tailored. Id. at 4.
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`Petitioner’s counsel further “certifies that the information sought to be
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`sealed by this motion has not been published or otherwise made public to the
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`best of his knowledge.” Pet. Third Mot. 11. Petitioner further argues that
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`although our Order granting discovery makes reference to Salesforce being
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`an RPX client, this information was provided to the Board by Patent Owner,
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`and was admittedly speculation. Id. (citing Ex. 1135); Pet. First Mot. 4–5.
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`In its Opposition, Patent Owner argues that “[c]onfidential
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`information relied upon in a decision to grant or deny a request to institute
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`ordinarily will be made public.” PO Opp. to Third Mot. 1 (citing Acxiom
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`Corp. v Phoenix Licensing, LLC, Case CBM2015-00134, slip op. at 6
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`(Nov. 19, 2015) (Paper 22)). Patent Owner cites to First Data Corp. v
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`Cardsoft, LLC, Case IPR2014-00715, slip op. at 4 (Oct. 17, 2014)
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`8
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`IPR2015-01752
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`(Paper 10), arguing that any agreements with an un-named real-party-in-
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`interest (“RPI”) client should not be kept confidential. PO Opp. to Third
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`Mot. 4. While we recognize that the “highly fact-dependent question” of
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`whether Petitioner has failed to name an RPI can be a determinative issue in
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`an inter partes review proceeding (Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012)), in this instance, it was
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`not. Instead, in our Decision on Institution, we were not persuaded, at this
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`stage of the proceeding, by Patent Owner’s arguments that Petitioner had
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`failed to name an RPI, and trial was instituted. See Paper 51 (Decision on
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`Institution).
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`Upon considering the content of Exhibits 2018, 2019, 2022, 2025,
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`2026, 2027, and 2030 and the Preliminary Response, the Patent Owner’s
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`Sur-Reply, Patent Owner’s Opposition to the Sanctions Motion, and Patent
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`Owner’s Exhibit Lists, along with Petitioner’s representations as to the
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`confidentiality of the information, we determine that Petitioner has shown
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`good cause for sealing Exhibits 2018, 2019, 2022, 2025, and 2026, as well
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`as the redacted portions of Exhibits 2027 and 2030 and of the Preliminary
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`Response, the Patent Owner’s Sur-Reply, Patent Owner’s Opposition to the
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`Sanctions Motion, and Patent Owner’s Exhibit Lists. Accordingly,
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`Petitioner’s Third Motion to Seal (Paper 45) is granted.
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`Other Documents Filed Under Seal
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`Several documents were filed in this proceeding with a “Parties and
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`Board Only” designation, but are either redacted versions of sealed
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`documents, or were not the subject of a Motion to Seal. Thus, the filing
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`status of these documents will be changed from “Parties and Board Only” to
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`“Public,” and these documents shall be made available to the public, unless
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`9
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`IPR2015-01752
`Patent 7,356,482 B2
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`either party moves to seal the Exhibit or Paper within seven (7) calendar
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`days of this Decision: Paper 21 (previously expunged); Paper 26 (redacted
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`Preliminary Response); Paper 35 (PO’s filing notice re: USPTO power
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`outage); Paper 36 (PO’s Second Motion to Seal); Paper 37 (redacted PO’s
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`Sur-Reply); Paper 45 (Petitioner’s Third Motion to Seal); Paper 46 (redacted
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`Paper 39); Paper 47 (redacted Paper 41); Paper 48 (redacted Sanctions
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`Opposition); Paper 49 (PO’s Opp. to Third Mot. to Seal); Exhibit 2027
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`(redacted version); Exhibit 2028; Exhibit 2029; and Exhibit 2030 (redacted
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`version).
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`Redacted Version of Decision on Institution
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`Our Decision on Institution (Paper 51) referenced several documents
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`designated as “Parties and Board Only,” and, thus, also was entered as
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`“Parties and Board Only” in PRPS. Within ten (10) business days of this
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`Decision, the parties shall jointly submit a proposed redacted version of the
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`Decision on Institution that will be publicly available, taking into account
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`our Decision on the Motions to Seal.
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`Conclusion
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`For the foregoing reasons, Patent Owner’s Motions to Seal are
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`dismissed as moot and Petitioner’s Motions to Seal will be conditionally
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`granted for the duration of this proceeding. If the final written decision
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`substantively relies on any information in a sealed document, the document
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`may be unsealed by an Order of the Board. If any sealed document contains
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`no information substantively relied on in the final written decision, a party
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`may file a motion to expunge confidential information from the record.
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`See 37 C.F.R. § 42.56; Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`10
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`IPR2015-01752
`Patent 7,356,482 B2
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`Accordingly, the following Papers and Exhibits will remain under
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`seal: Paper 20 (Preliminary Response); Paper 28 (Petitioner’s Reply);
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`Paper 33 (Sanctions Motion); Paper 38 (PO’s Sur-Reply); Paper 39 (PO’s
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`Exhibit List); Paper 40 (Sanctions Opposition); Paper 41 (PO’s Exhibit
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`List); and Exhibits 1119–1125, 1129, 1131–1135, 1137–1143, 1146, 2018,
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`2019, 2022, 2025–2027, and 2030.
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`Further, the “Parties and Board Only” designation shall be changed to
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`“Public” for the following documents, and these documents shall be made
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`available to the public, unless either party moves to seal the Exhibit or Paper
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`within seven (7) calendar days of this Decision: Paper 21 (previously
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`expunged); Paper 26 (redacted Preliminary Response); Paper 35 (PO’s filing
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`notice re: USPTO power outage); Paper 36 (PO’s Second Motion to Seal);
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`Paper 37 (redacted PO’s Sur-Reply); Paper 45 (Petitioner’s Third Motion to
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`Seal); Paper 46 (redacted Paper 39); Paper 47 (redacted Paper 41); Paper 48
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`(redacted Sanctions Opposition); Paper 49 (PO’s Opp. to Third Mot. to
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`Seal); Exhibit 2027 (redacted version); Exhibit 2028; Exhibit 2029; and
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`Exhibit 2030 (redacted version).
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`
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`Accordingly, it is:
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`ORDERED that Patent Owner’s Motions to Seal (Paper 19, Paper 36)
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`are dismissed as moot;
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`FURTHER ORDERED that Petitioner’s Motions to Seal (Paper 27,
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`Paper 31, Paper 45) are granted;
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`FURTHER ORDERED that the following Papers and Exhibits shall
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`remain under seal: Paper 20; Paper 28; Paper 33; Paper 38; Paper 39;
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`11
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`IPR2015-01752
`Patent 7,356,482 B2
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`Paper 40; Paper 41; and Exhibits 1119–1125, 1129, 1131–1135, 1137–1143,
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`1146, 2018, 2019, 2022, 2025–2027, and 2030;
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`FURTHER ORDERED that the following Papers and Exhibits will be
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`unsealed and their filing status changed to “Public” unless either party
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`moves to seal these documents within seven (7) calendar days of this
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`Decision: Paper 21; Paper 26; Paper 35; Paper 36; Paper 37; Paper 45;
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`Paper 46; Paper 47; Paper 48; Paper 49; Exhibit 2027 (redacted version);
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`Exhibit 2028; Exhibit 2029; and Exhibit 2030 (redacted version); and
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`FURTHER ORDERED that within ten (10) business days of this
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`Decision, the parties shall jointly submit a proposed redacted version of the
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`Decision on Institution that will be publicly available.
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`12
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`IPR2015-01752
`Patent 7,356,482 B2
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`PETITIONER:
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`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
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`PATENT OWNER:
`
`M. Kala Sarvaiya
`Jonathan Pearce
`SoCal IP Law Group LLP
`ksarvaiya@socalip.com
`jpearce@socalip.com
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`13