Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 64
`Date: September 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
`Cases IPR2017-00700, IPR2017-00701,
`and IPR2017-00728 (Patent 7,421,032 B2)1
`_______________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Granting-in-Part Petitioner’s Motion to Seal and
`Entry of Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 64
`Date: September 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
`Cases IPR2017-00700, IPR2017-00701,
`and IPR2017-00728 (Patent 7,421,032 B2)1
`_______________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Granting-in-Part Petitioner’s Motion to Seal and
`Entry of Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`Petitioner filed, in each of the above-captioned cases, a motion to seal
`
`Petitioner’s Reply, a deposition transcript, and certain other exhibits.
`IPR2017-00210, Paper 47; IPR2017-00219, Paper 46; IPR2017-00700,
`Paper 44; IPR2017-00701, Paper 44; and IPR2017-00728, Paper 44.
`Petitioner also filed in each case a proposed Protective Order along with an
`exhibit showing the proposed modifications from the Board’s Default
`Protective Order. E.g., IPR2017-00210, Exhibits 1069, 1070.2 Petitioner
`represents that the parties have conferred and agree to the provisions of the
`modified version of the Default Protective Order. IPR2017-00210,
`Paper 47, 1.
`
`There is a strong public policy in favor of making information filed in
`an inter partes review open to the public, especially because the proceeding
`determines the patentability of claims in an issued patent and, therefore,
`affects the rights of the public. See Garmin Int’l, Inc. v. Cuozzo Speed
`Techs. LLC, Case IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013)
`(Paper 34). Under 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default
`rule is that all papers filed in an inter partes review are open and available
`for access by the public; however, a party may file a concurrent motion to
`seal and the information at issue is sealed pending the outcome of the
`motion. It is only “confidential information” that is protected from
`disclosure. 35 U.S.C. § 316(a)(7); see Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a
`motion to seal is “good cause.” 37 C.F.R. § 42.54(a). The party moving to
`
`
`2 Unless otherwise indicated, we refer to the papers and exhibits filed in
`IPR2017-00210. Petitioner filed substantively the same or similar papers
`and exhibits in the other cases listed in the caption.
`
`2
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`seal bears the burden of proof in showing entitlement to the requested relief
`and must explain why the information sought to be sealed constitutes
`confidential information. See 37 C.F.R. § 42.20(c). As set forth in the Trial
`Practice Guide (77 Fed. Reg. at 48,761), there is an expectation that
`information will be made public if identified in the Final Written Decision.
`
`Petitioner explains that it seeks to seal in each case Petitioner’s Reply
`because it contains information designated as confidential by Patent Owner
`and claimed by Patent Owner to be confidential research, development, or
`commercial information pursuant to Federal Rule of Civil Procedure
`26(c)(1)(G). Paper 47, 2–3. Petitioner further explains that Exhibits 1050–
`1054 are source code files with associated metadata, Exhibit 1055 is an
`excerpt from the deposition transcript of Dr. Hui Jin in a district court
`litigation, and Exhibit 1063 is a transcript of the deposition of Dr. Jin taken
`in these cases. Id. at 1, 3–4. Petitioner states that these exhibits contain
`what Patent Owner claims to be confidential research, development, or
`commercial information. Id. at 3–4. Petitioner has provided redacted
`versions of the Reply (Paper 45) and of the deposition transcript of Dr. Jin
`taken in these cases (Ex. 1063).
`
`We determine that Petitioner has demonstrated good cause for sealing
`portions of Petitioner’s Reply in IPR2017-00210 and IPR2017-00219 and
`portions of the deposition transcript and the other identified exhibits filed in
`all the captioned cases.
`
`However, Petitioner has not demonstrated good cause for sealing
`portions of Petitioner’s Reply in IPR2017-00700, IPR2017-00701, and
`IPR2017-00728. From our review of the public version of the Reply filed in
`each of those cases, the only information that appears to have been redacted
`
`3
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`is a group of exhibit numbers in a citation. See IPR2017-00700, Paper 46,
`18 n.5; IPR2017-00701, Paper 46, 21 n.5; IPR2017-00728, Paper 46, 17 n.4.
`We do not find the exhibit numbers to constitute, on the facts of these cases,
`confidential information.
`
`Additionally, we have reviewed the modified version of the Default
`Protective Order and find it acceptable.
`
`We remind the parties that confidential information that is subject to a
`protective order ordinarily would become public after final judgment in a
`trial. See 37 C.F.R. § 42.14; Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,761. The parties may move to expunge confidential information
`from the record after final judgment (and appeals, if any). 37 C.F.R.
`§ 42.56.
`
`Accordingly, it is
`
`ORDERED that Petitioner’s Motions to Seal in IPR2017-00210
`(Paper 47) and IPR2017-00219 (Paper 46) are granted;
`
`FURTHER ORDERED that Petitioner’s Motions to Seal in IPR2017-
`00700 (Paper 44), IPR2017-00701 (Paper 44), and IPR2017-00728 (Paper
`44) are denied as to the request to seal the Reply brief filed in each of those
`cases and granted as to the request to seal the exhibits identified in each
`respective motion (1000-series exhibits with exhibit numbers ending in 50,
`51, 52, 53, 54, 55 and 63);
`
`FURTHER ORDERED that the Protective Orders submitted by
`Petitioner (IPR2017-00210, Ex. 1069; IPR2017-00219, Exhibit 1269;
`IPR2017-00700, Exhibit 1069; IPR2017-00701, Exhibit 1169; and IPR2017-
`00728, Exhibit 1269) are hereby entered.
`
`
`
`4
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`For PETITIONER:
`
`Richard Goldenberg
`Dominic E. Massa
`Michael Smith
`James M. Dowd
`Mark D. Selwyn
`Kelvin Chan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`james.dowd@wilmerhale.com
`mark.selwyn@wilmerhale.com
`kelvin.chan@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
