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