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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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`I.M.L. SLU,
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`Petitioner,
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`v.
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`WAG ACQUISITION, LLC,
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`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141
`_________________________
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`PETITIONER I.M.L. SLU’S MOTION TO EXPUNGE
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`IPR2016-01656
`I.M.L. SLU
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`1
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`I.
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` STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.56, Petitioner I.M.L. SLU respectfully requests
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`that all documents in the record that were filed under seal be expunged from the
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`record because they contain sensitive confidential information.
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`Specifically, Petitioner identifies the following materials to be expunged:
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`Paper 7, Paper 9, Paper 10, Paper 23, Paper 24, Paper 36, Paper 39, the unredacted
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`version of Paper 42, Exhibit 2005, Exhibit 2006, Exhibit 2008, Exhibit 2009,
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`Exhibit 2010, and Exhibit 2012.
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`Counsel for Petitioner has conferred with counsel for Patent Owners, who
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`indicated that Patent Owners would oppose this Motion, except for Exhibit 2010.
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`II.
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` STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Procedural background
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` Petitioner filed the Petition in this proceeding on August 22, 2016. Paper 1.
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`Before filing its Preliminary Response, Patent Owner filed a Motion for Discovery
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`under seal on November 30, 2016 related to the question of whether all real parties
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`in interest had been named in the Petition. Paper 7.1 In that Motion for Discovery,
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`Patent Owner noted that the Paper “[r]eferences [i]nformation [s]ubject to
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`1 All of the remaining documents filed under seal also pertain to Patent Owner’s
`real-party-in-interest allegations.
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`IPR2016-01656
`I.M.L. SLU
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`2
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`[p]rotective [o]rder.” Paper 7 at 1. In particular, the Motion for Discovery
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`references documents that were produced pursuant to a protective order (which had
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`not yet been entered in this PTAB action) in a related action in the United States
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`District Court for the District of New Jersey. Paper 7 at 2--5. Petitioner I.M.L.
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`opposed the Motion for Discovery and similarly filed its Paper under seal because
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`it also referred to materials subject to a protective order. See e.g. Paper 9 at 1, 4-5.
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`On February 27, 2017, the Board issued a Decision to Institute inter partes
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`review. Paper 11. The Decision to Institute did not rely on any of the sealed
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`confidential information, and thus, Petitioner is not requesting to expunge that
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`Decision. The Parties then agreed to Petitioner’s Unopposed Motion for Entry of
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`Protective Order, which stated that for documents to be appropriately filed under
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`seal, they must contain the “confidential and business-sensitive details of the
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`Petitioner’s organizational structure, business processes, financing, and corporate
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`and legal operations.” Paper 14 at 1. All of the subsequent filings under seal (and
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`documents produced) were filed and produced subject to the Unopposed Protective
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`Order.
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`WAG eventually filed another Motion for Discovery under seal referencing
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`material subject to the protective order (See Paper 23 at 1) along with various
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`exhibits (Exhibits 2005-2008). WAG simultaneously filed a Motion to Seal,
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`IPR2016-01656
`I.M.L. SLU
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`3
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`noting that the there was good cause to seal the confidential documents included in
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`its filing and that “[t]o the best of Patent Owner’s knowledge, and based on
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`statements by Petitioner about its own information, the confidential information
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`contained in the Discovery Motion has not been made publicly available.” Paper
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`22 at 2. Indeed, WAG’s Motion for Discovery refers at length to documents
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`produced under the protective order. See e.g. Paper 23 at 1-3. Similary, I.M.L’s
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`Brief in Opposition specifically cites these documents. See Paper 24. The Board
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`held Oral Argument on November 30, 2017, with both a public and non-public
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`session. The non-public session discussed the real-party-in-interest issues, and the
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`parties submitted proposed redactions to that transcript (Paper 36) on January 10,
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`2018, which are currently under review by the Board.
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`In response to the Board’s comments at the Oral Argument, Petitioner I.M.L.
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`SLU Requested Adverse Judgment (Paper 38) and Patent Owner submitted (again
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`under seal) a Motion in Opposition (Paper 39) with Exhibits (Exhibits 2009-2012).
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`WAG’s Opposition Motion cites portions of the non-public hearing transcript,
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`documents produced pursuant to the Protective Order, and even the single exhibit
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`WAG now agrees should remain confidential (Exhibit 2010). See e.g. Paper 39 at
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`8-9. Finally, On February 26, 2018, the Board issued a Termination Decision.
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`IPR2016-01656
`I.M.L. SLU
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`4
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`Paper 42. That decision cites the transcript of the non-public portion of the Oral
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`Argument. Paper 42 at 6.
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`B. Applicable legal standards
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`The Office Patent Trial Practice Guide provides that “the rules aim to strike
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`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.” 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). Under the Board’s
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`Rules, “confidential information [is identified] in a manner consistent with Federal
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`Rule of Civil Procedure 26(c)(1)(G), which provides for protective orders for trade
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`secret or other confidential research, development, or commercial information.” Id.
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`(citing 37 C.F.R. § 42.54).
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`The default rule in trial proceedings is that such confidential information
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`will become public ordinarily 45 days after a final judgment in a trial. See 77 Fed.
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`Reg. 48,756, 48,761 (Section I.E.6.) (Aug. 14, 2012). “A party seeking to maintain
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`the confidentiality of the information, however, may file a motion to expunge the
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`information from the record prior to the information becoming public.” Id. Under
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`37 C.F.R. § 42.56, “[a]fter denial of a petition to institute a trial or after final
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`judgment in a trial, a party may file a motion to expunge confidential information
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`in the record.”
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`IPR2016-01656
`I.M.L. SLU
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`5
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`The materials that Petitioners request be expunged from the record in this
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`proceeding contain confidential and business-sensitive details of the organizational
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`structure, business processes, financing, and corporate and legal operations. The
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`Petitioner has a strong interest in maintaining the confidentiality of this
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`information. Conversely, there is no countervailing interest that would counsel
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`against expunging the sealed materials from the record. The sealed information
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`has nothing to do with the underlying substantive patent matters in this proceeding.
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`Therefore, granting the present motion will have no effect on the public’s
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`interest in “maintaining a complete and understandable file history.” 77 Fed. Reg.
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`at 48,760. On the contrary, the sealed materials relate only to the non-public
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`internal operations of the Petitioner, which remain highly confidential.
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`III.
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` CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that all documents
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`in the record that were filed under seal be expunged from the record—i.e., Paper 7,
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`Paper 9, Paper 10, Paper 23, Paper 24, Paper 36, Paper 39, the unredacted version
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`of Paper 42, Exhibit 2005, Exhibit 2006, Exhibit 2008, Exhibit 2009, Exhibit 2010,
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`and Exhibit 2012.
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`
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`Dated: April 12, 2018
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`
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`
`
`/Steven Yovits/
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`
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`IPR2016-01656
`I.M.L. SLU
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`6
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`Steven Yovits
`Reg. No. 48,055
`
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
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`
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`IPR2016-01656
`I.M.L. SLU
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`7
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`CERTIFICATE OF SERVICE
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`I certify that, on April 12, 2018, I caused to be served true and correct copies of
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`the foregoing “PETITIONER I.M.L. SLU’S MOTION TO EXPUNGE” on
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`Patent Owner by filing through the PTAB E2E System and by electronic mail on
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`the following attorneys, as authorized in Patent Owner’s Mandatory Notices:
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`Ronald Abramson
`David G. Liston
`Ari J. Jaffess
`M. Michael Lewis
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`ronald.abramson@LBKMLAW.com
`David.Liston@LBKMLAW.com
`Ari.jaffess@LBKMLAW.com
`Michael.lewis@LBKMLAW.com
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`
`
`/Steven Yovits/
`Steven Yovits
`Reg. No. 48,055
`
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
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`Ernest D. Buff
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
`ebuff@edbuff.com
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`
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`Dated: April 12, 2018
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`IPR2016-01656
`I.M.L. SLU
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`8
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