UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
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`Patent Owner.
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`__________________
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`Case IPR2016-00449
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`Patent No. 8,924,506 B2
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`__________________
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`JOINT MOTION TO MAINTAIN DOCUMENTS AS CONFIDENTIAL OR
`EXPUNGE
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`Paper No. 68
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
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`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
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`Patent Owner.
`
`__________________
`
`Case IPR2016-00449
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`Patent No. 8,924,506 B2
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`__________________
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`JOINT MOTION TO MAINTAIN DOCUMENTS AS CONFIDENTIAL OR
`EXPUNGE
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`Paper No. 68
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.56, Petitioner Microsoft Corporation
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`and Patent Owner Bradium Technologies, LLC (collectively the “Parties”) jointly
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`move to (1) maintain under seal, pending the conclusion of any appeal, the
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`confidential documents of both Parties previously ordered sealed by the Board and
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`referenced by the Board in its Final Written Decision, and (2) expunge the
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`confidential documents previously ordered sealed by the Board and not referenced
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`by the Board in its Final Written Decision.
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`The Trial Practice Guide provides that “the rules aim to strike a balance
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`between the public’s interest in maintaining a complete and understandable file
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`history and the parties’ interest in protecting truly sensitive information.” 77 Fed.
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`Reg. 48756 at 48760 (Aug. 14, 2012). The Parties submit that this motion protects
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`sensitive information and the Parties’ need to maintain a complete record for
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`appeal while not significantly impacting the public’s interest in maintaining a
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`complete and understandable record of this proceeding.
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`I.
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`Background
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`On November 11, 2017 and November 15, 2017, the Parties filed separate
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`motions to seal certain documents filed by Patent Owner Bradium in support of its
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`Patent Owner Response. The documents which the Parties requested to seal
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`contain commercially sensitive information for both Parties for the reasons
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`discussed further below. The Board relied on some, but not all, of these documents
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`in its Final Written Decision (Paper 67), which is part of the public record.
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`Concurrently with its Final Written Decision, the Board granted the Parties’
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`motions to seal, finding that both sides had presented good cause to seal the
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`documents, and decided to “maintain the confidentiality of the documents and
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`leave the decision to move to expunge documents not relied upon in the Final
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`Written Decision” up to the Parties. Paper 64 at 3, 5.
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`A. Microsoft Confidential Documents
`Petitioner moved to seal Exhibits 2012-2015 and 2034, which relate to brief
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`discussions in 2005 regarding a potential acquisition by Microsoft of a prior owner
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`of the ’506 Patent, 3DVU. Paper 18. Of these exhibits, the Board referenced Exs.
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`2012, 2013, 2015, and 2034 briefly in its Final Written Decision, but not Ex. 2014.
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`As Petitioner explained in its motion to seal, these documents discuss strategic
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`considerations and factors utilized by Microsoft in making acquisition decisions,
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`including pricing considerations and details of Microsoft’s internal deliberative
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`processes, all of which could be exploited by other Parties to Microsoft’s
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`disadvantage if such information became public.
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`While Patent Owner relied on these documents in support of its secondary
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`indicia of non-obviousness arguments, the Board concluded in its Final Written
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`Decision that Patent Owner had not established a technical nexus between these
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`discussions and the technology embodied in the ’506 Patent. Paper 67 at 69-70.
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`The details of Microsoft’s deliberation process discussed in these documents
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`therefore would not meaningfully aid a member of the public to understand the
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`basis of the Board’s decision.
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`Bradium Confidential Documents
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`B.
`Patent Owner moved to seal Exhibits 2022, 2029, and 2082, as well as
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`portions of Exhibit 2004. See Paper 15; Paper 54. Patent Owner also moved to
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`seal portions of Paper 16 (Patent Owner’s Response), portions of Paper 49
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`(Opposition to Petitioner’s Motion to Exclude), and portions of Paper 55 (Reply to
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude) on the basis that
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`they reference confidential Exhibits or confidential information in Exhibits. See
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`Paper 15; Paper 48, Paper 54.
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`The Board did not cite Exhibits 2022, Exhibit 2029, Exhibit 2082, or the
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`confidential portions of Exhibit 2004 in its Final Written Decision. Paper 64 at 5.
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`These documents would therefore not meaningfully aid a member of the public to
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`understand the basis of the Board’s decision.
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`The confidential version of the Patent Owner Response (Paper 16) reference
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`Microsoft confidential information in Exhibits that the Board previously ordered
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`sealed (Paper 64).
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`Exhibit 2022 is a confidential project report stamped “COMMERCIAL-IN-
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`CONFIDENCE” which contains comprehensive technical information, financial
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`summaries, financial terms, and projected sales information. Paper 15. Exhibit
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`2029 is a confidential license agreement, which imposes a confidentiality
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`requirement with a third party, DENSO, who has requested that Patent Owner
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`maintain Exhibit 2029 as confidential pursuant to a protective order. Paper 15.
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`Exhibit 2004 references confidential information concerning licensing activities,
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`including those relating to Exhibit 2029. See Paper 54. Exhibit 2082 is a
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`confidential letter from DENSO to 3-D-V-U Israel (2000) Ltd. that relates to
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`information for which 3-D-V-U Israel (2000) Ltd. and Bradium are under a
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`confidentiality obligation pursuant to Exhibit 2029. See Paper 54.
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`Paper 49 refers to exhibits 2022 and 2029. See Paper 48. Paper 55
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`references exhibit 2029.
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`II. Discussion
`A.
`The Confidential Documents Cited in the Final Written Decision
`should be Maintained as Confidential
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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. Rule 42.56; see also Comment 172, 77 FED. REG. 48612, 48644. Here, the
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`date 45 days after final judgment was entered is September 9, 2017. Patent Owner
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`has until 63 days from entry of judgment (September 26, 2017) to file a Notice of
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`Appeal.
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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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 “the agency must retain the record.”
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`(Emphasis added.) Federal Circuit Rule 17(d), titled “Access of Parties and
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`Counsel to Original Record” also requires that the Parties and their counsel have
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`access to both the sealed and unsealed portions of the record “when a petition for
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`review or notice of appeal is filed.” (Emphasis added.) Therefore, the documents
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`cited to in the Final Written Decision should be preserved for appellate review in
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`order to enable the Parties to refer to these documents on appeal. Preserving the
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`confidentiality of these documents will allow the Parties to reference them on
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`appeal without the prejudice of public disclosure of confidential material.
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`B.
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`Confidential Materials not Cited in the Final Written Decision Should
`be Expunged
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`The confidential exhibits not cited in the Final Written Decision are
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`necessary neither to preserve the record on appeal nor for a member of the public
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`to understand the basis of the Board’s decision. Therefore, such exhibits should be
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`expunged pursuant to 37 CFR 42.56.
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`III. Conclusion
`Because the Board’s Final Written Decision cites confidential information
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`that was filed under seal, whose disclosure would prejudice the Parties, the
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`Parties respectfully request that the Board maintain the confidential documents
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`cited in the Final Written Decision under seal, while the sealed documents not
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`cited in the Final Written Decision be expunged.
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`If the Board denies the Parties’ motion to maintain documents under seal,
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`the Parties request in the alternative that any documents filed under seal on the
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`IPR docket be expunged. The Board granted the Parties’ Motions to Seal after
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`finding good cause based on the nature of the sealed information and the
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`reasonably limited scope of the protection sought. In order to avoid public
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`disclosure of the same sensitive business information that the Board found good
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`cause to seal, the Parties now respectfully request that such information should be
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`expunged if the Board chooses not to maintain it as confidential.
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`If the Board determines that any information previously filed under seal
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`should be made public, the Parties respectfully request permission to file alternate
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`redacted versions of the documents in question, to ensure that only a minimum
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`amount of confidential information is disclosed.
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`Dated: September 8, 2017
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004
`(212) 425-7200
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`Respectfully submitted,
` /Chun M. Ng/
`Lead Counsel
`Chun M. Ng, Reg. No. 36,878
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`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Patrick J. McKeever, Reg. No. 66,019
`Vinay Sathe, Reg. No. 55,595
`Evan S. Day, Reg. No. 75,992
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`Attorneys for Microsoft Corporation
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` /Chris J. Coulson/
`Lead Counsel
`Chris J. Coulson, Reg. No. 61,771
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`Back-up Counsel
`Michael Zachary (admitted pro hac vice)
`Clifford Ulrich (Reg. No. 42,194)
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`Attorneys for Bradium Technologies LLC
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`PTAB Case IPR2016-00449, Patent 8,924,506 B2
`Joint Motion to Maintain Documents as Confidential
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing JOINT
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`MOTION TO MAINTAIN DOCUMENTS AS CONFIDENTIAL has been served
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`in its entirety this 8th day of September, 2017 by electronic mail on the Patent
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`Owner via its attorneys of record:
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`LEAD COUNSEL
`Christopher J. Coulson
`ccoulson@kenyon.com
`KENYON & KENYON, LLP
`One Broadway
`New York, NY 10004-1007
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`Bradiumiprservice@kenyon.com
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`Dated: September 8, 2017
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`BACK-UP COUNSEL
`Michael N. Zachary
`mzachary@kenyon.com
`KENYON & KENYON, LLP
`1801 Page Mill Road, Ste 210
`Palo Alto, CA 94304
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`Clifford Ulrich
`culrich@kenyon.com
`KENYON & KENYON, LLP
`One Broadway
`New York, NY 10004-1007
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`Respectfully submitted,
` /Chun M. Ng/
`Lead Counsel
`Chun M. Ng, Reg. No. 36,878
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`Back-up Counsel
`Matthew C. Bernstein, Pro Hac Vice
`Patrick J. McKeever, Reg. No. 66,019
`Vinay Sathe, Reg. No. 55,595
`Evan S. Day, Reg. No. 75,992
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`Attorneys for Microsoft Corporation
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`1
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