Case IPR2016-00807
`Patent No. 8,773,356
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
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`AMIT AGARWAL,
`Petitioner,
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`v.
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`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
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`
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`PATENT OWNER’S MOTION TO SEAL
`PURSUANT TO 37 C.F.R. §§ 42.54 AND 42.14
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`9118227
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`Patent No. 8,773,356
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
`
`
`
`PATENT OWNER’S MOTION TO SEAL
`PURSUANT TO 37 C.F.R. §§ 42.54 AND 42.14
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`9118227
`
`
`
`
`
`
`
`
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`I.
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`INTRODUCTION
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`Case IPR2016-00807
`Patent No. 8,773,356
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`Pursuant to 37 C.F.R. §§ 42.54 and 42.14, Patent Owner Immersion Corp.
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`(“Immersion”) hereby moves to seal the transcript of the conference call of May
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`20, 2016 (the “Transcript”), Ex. 2003, filed concurrently with this motion.
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`As per 37 C.F.R. § 42.20 (b), the motion to seal was authorized by the Board
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`in the conference call. See Ex 2003 at 30. Petitioner did not oppose this motion
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`during the conference call. Id.
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`The conference call concerned Immersion’s proposed motion for relief for
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`alleged ethical violations of the Petitioner in connection with his employment at
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`Irell & Manella, the law firm representing Immersion. The Transcript therefore
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`records a discussion of the privileged and confidential communication between
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`Immersion and its counsel at issue on the motion, including communications
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`regarding both its interpretation of the prior art at issue in this proceeding, and the
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`role of this prior art in the context of Immersion’s broader patent strategy.
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`Immersion is discussing this information with the Board (and in the Transcript)
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`only because of the necessity of having to seek authorization to file a motion based
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`in part on Petitioner’s receipt of the confidential information discussed in the
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`Transcript. Good cause therefore exists to seal the Transcript.
`II. GOOD CAUSE EXISTS FOR THIS MOTION TO SEAL
`In deciding whether to seal documents, the Board must find “good cause,”
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`striking “a balance between the public’s interest in maintaining a complete and
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” Garmin v. Cuozzo, IPR2012-00001, Paper 36 (April 5, 2013).
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`Case IPR2016-00807
`Patent No. 8,773,356
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`The Board has acknowledged in previous decisions that good cause to seal
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`exists when material discloses a party’s confidential business information or
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`confidential business strategy. See, e.g., Unified Patents Inc. v. Dragon
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`Intellectual Property, LLC, IPR2014-01252, Paper 40 at 5-6 (February 27, 2015)
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`(granting motion to seal information relevant to business strategy); Wright Med.
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`Tech. v. Biomedical Enter. Inc., IPR2015-00786, Paper 37 (May 3, 2016) (similar);
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`Ameriforge Inc. v. Worldwide Oilfield Machine, Inc., IPR2015-00233, Paper 37 at
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`35-36 (May 16, 2016) (similar).
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`Here, there is good cause to seal the Transcript. The Transcript discusses the
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`subjects of privileged and confidential communications between Immersion and its
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`counsel regarding its interpretation of prior art relevant to multiple patents in its
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`portfolio. These communications took place in the context of strategic discussions
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`regarding Immersion’s patent portfolio and potential claims that Immersion might
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`assert against entities that are not parties to this proceeding. See, e.g., Ex. 2003 at
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`9:7 – 12:5, 16:12 – 19:12, 21:17-20, 21:25 – 23:4, 28:8-21. The communications
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`discussed at length in the Transcript are themselves indisputably confidential,
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`which itself weighs in favor of sealing the Transcript. Cf. Nissan North Am., Inc.,
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`v. Diamond Coating Techs., LLC, IPR2014-01546, Paper 50 at 3-4 (April 20,
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`2016) (granting motion to seal a document, when party filed motion to seal the
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`document “solely” because it discussed materials previously designated
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`confidential).
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`As the discussion in the Transcript does not address either party’s view of
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`Case IPR2016-00807
`Patent No. 8,773,356
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`the merits of the arguments advanced by Petitioner in his petition, the burden on
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`the public from sealing the Transcript is minimal. See, e.g., Masterimage 3D Inc.
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`v. Reald Inc., IPR2015-00040, Paper 85 at 76 (April 14, 2016) (granting motion to
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`seal after balancing “Patent Owner’s assertion of confidentiality with the public’s
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`interest in a sufficiently understandable record with respect to the substantive
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`decisions made regarding patentability”) (emphasis added); see also id. at 75
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`(burden on public “minimal” when reference to sealed materials was not needed
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`“to address the issues” in a final written decision).
`III. CERTIFICATION OF NON-PUBLICATION
`On behalf of Immersion, the undersigned counsel certifies the information
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`sought to be sealed by this motion to seal has not been published or otherwise
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`made public.
`IV. CERTIFICATION OF CONFERENCE WITH OPPOSING PARTY
`PURSUANT TO 37 C.F.R. § 42.54
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`Pursuant to 37 C.F.R. § 42.54, counsel for Immersion sought in good faith to
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`confer with Petitioner regarding a motion to seal the communication between
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`Immersion and its counsel discussed in the Transcript and the corresponding
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`PowerPoint slide deck containing the underlying information, and a proposed
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`protective order, on May 13, 2016. Petitioner responded to the email on May 15,
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`2016 by not opposing such a motion and agreeing to the protective order. During
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`the conference call, Mr. Fleming pointed out that information in the privileged and
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`confidential PowerPoint slide deck was disclosed and discussed. Ex. 2003 at 29.
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`Mr. Fleming requested authorization to file a motion to seal the transcript. Ex.
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`Case IPR2016-00807
`Patent No. 8,773,356
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`2003 at 29-30. In addition, Mr. Fleming pointed out that Petitioner had agreed to
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`the protective order. Id. Petitioner did not object to the motion or the protective
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`order. Id. After hearing the request, the Board granted authorization to file the
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`motion to seal. Id.
`V.
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`PROPOSED PROTECTIVE ORDER
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`Petitioner and Immersion have agreed to entry of the Standing Protective
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`Order found in Appendix B of the Trial Practice Guide, filed concurrently with this
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`motion. Ex. 2002.
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`Respectfully submitted,
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`Dated: May 25, 2016
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`By: /Michael Fleming/
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`9118227
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`IRELL & MANELLA LLP
`Michael R. Fleming (Reg. No. 67,933)
`MFleming@irell.com
`Babak Redjaian (Reg. No. 42,096)
`bredjaian@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
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`Attorneys For Immersion Corporation
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00807
`Patent No. 8,773,356
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 25, 2016,
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`a copy of the foregoing document was served, by electronic mail, as agreed to by
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`the parties, upon the following:
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`Amit Agarwal (ama7386@gmail.com)
`14420 Edinburgh Moor Drive
`Wimaumu, FL 33598
`(310) 351-6569 (tel)
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`/Susan M. Langworthy/
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`9118227
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