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`IPR2016-00209
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SONY CORPORATION,
`Petitioner
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`v.
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`RAYTHEON COMPANY,
`Patent Owner
`_______________
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`Case IPR2016-00209
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`Patent 5,591,678
`_______________
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`PATENT OWNER’S UNOPPOSED MOTION
`FOR PRESERVATION OF THE RECORD
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`IPR2016-00209
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`INTRODUCTION
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`The record in this proceeding contains information that is confidential and
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`subject to strict regulations, including the International Traffic in Arms
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`Regulations (“ITAR”), 22 C.F.R. Parts 120-130. Patent Owner is currently
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`considering whether to appeal the Board’s Final Written Decision in this
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`proceeding, and for the reasons stated herein, respectfully moves for an order that
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`the record be preserved pending appeal.
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`I.
`BACKGROUND
`On November 30, 2016, the Board entered Final Written Decisions in
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`IPR2015-001201 and IPR2016-00209, two IPRs that had a consolidated hearing.
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`IPR2015-001201, Paper 59; IPR2016-00209, Paper 45. In both proceedings, the
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`Board entered modified protective orders because, inter alia, Patent Owner filed
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`confidential information, including information governed by ITAR. IPR2015-
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`001201, Paper 19 at pp. 4-5, 11; IPR2016-00209, Paper 39. Patent Owner files the
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`present motion to (1) ensure that the record in this proceeding stays intact for a
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`potential appeal of the IPRs and (2) to ensure that confidential information,
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`including information governed by ITAR, is not released to the public as a result of
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`the Board’s Final Written Decision.
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`II.
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`PATENT OWNER REQUESTS THE RECORD TO BE
`PRESERVED FOR APPEAL
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`2
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`IPR2016-00209
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`Patent Owner respectfully requests that the entire docket in this proceeding
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`be preserved pending a possible appeal, including preservation of all sealed
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`documents in non-public form. Other Board panels have granted similar requests.
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`See International Business Machines Corp. v. Intellectual Ventures II LLC,
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`IPR2014-00587, Paper 59 at 2-3 (P.T.A.B. Nov. 20, 2015); LKQ Corp. v.
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`Clearlamp, LLC, IPR2013-00020, Paper 77 at 2 (P.T.AB. Dec. 19, 2014);
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128, Paper 93
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`at 2-3 (P.T.A.B. Sep. 10, 2014); Illumina, Inc. v. Columbia Univ., IPR2012-00006,
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`Paper 133 at 3-4 (P.T.A.B. April 25, 2014). Petitioner does not oppose.
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`Sealed confidential information subject to a protective order will ordinarily
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`become public 45 days after final judgment in a trial unless a motion to expunge is
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`filed. 77 Fed. Reg. 48761; see also 37 C.F.R. § 42.56. Here, the date 45 days after
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`final judgment was entered is January 14, 2017. However, the Parties have until 63
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`days from the final Board decision, February 1, 2017, to file a notice of appeal. See
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`Paper 59; 37 C.F.R. § 90.3(a)(1) (“The notice of appeal filed pursuant to 35 U.S.C.
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`142 must be filed with the Director of the United States Patent and Trademark
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`Office no later than sixty-three (63) days after the date of the final Board
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`decision.”).
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`IPR2016-00209
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`The Federal Rules of Appellate Procedure and the Federal Circuit Rules
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`require that the record be retained by the Board pending appeal. Specifically,
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`Federal Circuit Rule 17(a) states that “[t]he agency must retain the record.” Federal
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`Circuit Rule 17(d), titled “Access of Parties and Counsel to Original Record” also
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`requires that the parties and their counsel have access to both the sealed and
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`unsealed portions of the record “[w]hen a petition for review or notice of appeal is
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`filed.” No notice of appeal has yet been filed, and the deadline for filing a notice of
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`appeal, as noted above, is February 1, 2017.
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`Moreover, the information that was filed under seal in IPR2015-001201 was
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`discussed at length by the parties in their briefs (see, e.g., Paper 23 at 6-19, 24-31;
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`Paper 50 at 9-30) and was cited to by the Board in its Final Written Decision (see,
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`e.g., Paper 2071 at 15-17, 19-27). If the record is not preserved in its entirety
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`including any sealed portions and an appeal is taken, the Federal Circuit may not
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`be able to fully consider the issues discussed in the Final Written Decision, which
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`would cause prejudice to the Parties.
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`III. ALTERNATIVELY, PATENT OWNER MOVES TO EXPUNGE
`As sealed information is normally released to the public 45 days after final
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`written decision, a motion to expunge should ordinarily be filed before that time.
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`77 Fed. Reg. 48761; 37 C.F.R. § 42.56. In this case, the deadline to file a motion
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`IPR2016-00209
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`to expunge is therefore January 14, 2017. For the reasons stated in section II above,
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`Patent Owner respectfully submits that the proper course of action is to preserve
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`the record pending appeal. However, in an abundance of caution, due to the
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`obligations under ITAR to prevent the public release of government-regulated
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`confidential information, to the extent that the Board denies the motion to preserve,
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`Patent Owner must alternatively move to expunge all sealed portions of the record
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`in this proceeding.
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`Date: January 10, 2017
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`Respectfully submitted
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` /Thomas J. Filarski/
` Thomas J. Filarski
`REG. NO. 31,612
`tfilarski@steptoe.com
`John L. Abramic
`REG. NO. 51,031
`jabramic@steptoe.com
`Daniel S. Stringfield
`REG. NO. 68,677
`dstringfield@steptoe.com
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` STEPTOE & JOHNSON, LLP
`115 S. LaSalle Street, Suite 3100
`Chicago, IL 60603
`TELEPHONE: 312-577-1300
`FACSIMILE: 312-577-1370
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`David L. Hecht
`REG. NO. 61,618
`dhecht@steptoe.com
`5
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`IPR2016-00209
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`STEPTOE & JOHNSON, LLP
`1114 Avenue of the Americas
`New York, NY 10036
`TELEPHONE: 212-506-3905
`FACSIMILE: 212-506-3950
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` Counsel for Raytheon Company
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`Customer Number: 27890
`STEPTOE & JOHNSON LLP
`115 S. LaSalle Street
`Chicago, IL 60603
`TELEPHONE: (312) 577-1252
`FACSIMILE: (312) 577-1370
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`IPR2016-00209
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion, was served
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`in its entirety on January 10, 2017 by filing this document through the Patent
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`Review Processing System as well as by delivering a copy via electronic email to
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`the attorneys of record for the Petitioner as follows:
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`Matthew A. Smith
`Jennifer Seraphine
`Jacob Zweig
`TURNER BOYD LLP
`702 Marshall St., Ste. 640
`Redwood City, CA 94063
`smith@turnerboyd.com
`jseraphine@turnerboyd.com
`zweig@turnerboyd.com
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` Robert Hails
`T. Cy Walker
`Baker Hostetler LLP
`1050 Connecticut Ave, NW, Ste. 1100
`Washington, DC 20036-5304
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
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`Date: January 10, 2017
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`By: /Thomas J. Filarski/
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`Thomas J. Filarski
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`Counsel for Raytheon Company
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