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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`UNIFIED PATENTS, LLC
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`Petitioner
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`- vs. -
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`FALL LINE PATENTS, LLC
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`Patent Owner
`———————
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`IPR2018-00043
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`U.S. Patent 9,454,748
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`PETITIONER’S RENEWED MOTION TO EXPUNGE
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Pursuant to 37 C.F.R. § 42.56, Petitioner, Unified Patents, LLC (“Unified”
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`or “Petitioner”), hereby renews its request that certain confidential information in
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`the record be expunged. This motion is timely filed within 20 days after the
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`conclusion of Patent Owner’s appeal of the Final Written Decision. See Paper 44,
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`p. 3 (“Petitioner may file another motion to expunge within twenty days after …
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`(ii) the termination of any appeal in this proceeding if a notice of appeal is filed”);
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`EX1030 (Federal Circuit decision entered December 19, 2022 affirming Board’s
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`final written decision); 37 C.F.R. § 1.7(a). For the reasons set forth below,
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`Petitioner respectfully requests that the following documents be expunged from the
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`record, as these pleadings and exhibits contain Petitioner’s highly confidential
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`business information: (i) Paper 30, Patent Owner’s RPI Observations; (ii) Paper 31,
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`Petitioner’s Response to Patent Owner’s Observations; and (iii) Exhibit 2009, the
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`transcript of the deposition of Kevin Jakel (collectively, the “Confidential
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`Documents”).
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`I. Applicable Legal Standards
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`37 C.F.R. § 42.56 provides that “[a]fter … final judgment in a trial, a party
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`may file a motion to expunge confidential information in the record.” Likewise, the
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`Trial Practice Guide states, in pertinent part, that “[t]here is an expectation that
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`information will be made public where the existence of the information is referred
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`to . . . in a final written decision following a trial. A party seeking to maintain the
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`1
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`
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`confidentiality of information, however, may file a motion to expunge the
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`information from the record prior to the information becoming public.”
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`Consolidated TPG at 22. A party seeking expungement from the record must show
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`good cause by demonstrating “that any information sought to be expunged
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`constitutes confidential information, and that Petitioner’s interest in expunging it
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`outweighs the public’s interest in maintaining a complete and understandable
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`history of this inter partes review.” Atlanta Gas Light Co. v. Bennett Regulator
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`Guards, Inc., IPR2013-00453, Paper 97 at 2 (P.T.A.B. Apr. 15, 2015).
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`II. Reasons for Relief Requested
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`A. Procedural Background
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`Two unopposed Motions to Seal were filed in this proceeding (Paper 29 and
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`Paper 32), requesting that the Board maintain the Confidential Documents under
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`seal. As indicated in the Motions to Seal, the Confidential Documents contain
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`confidential, sensitive business information that has not been published or made
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`public. See Paper 29 at 2, Paper 32 at 2–3. The Confidential Documents contain,
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`inter alia, Petitioner’s members’ identities, Petitioner’s membership terms and
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`business strategy; and Petitioner’s financial information. The Board granted the
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`Motions to Seal. See Paper 43, p. 4.
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`Petitioner filed a Motion to Expunge (Paper 40) seeking to expunge the
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`Confidential Documents. The Board denied Petitioner’s motion “because the time
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`2
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`period for filing a notice to appeal has not expired, and the record for this
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`proceeding should be fully preserved in the event of an appeal.” Paper 44, p. 2.
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`A. Good Cause Exists for Expunging the Confidential Documents
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`All of the Confidential Documents contain Petitioner’s highly confidential
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`business information, which Petitioner guards in order to protect its own business
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`as well as its members. Disclosure of this information would adversely harm
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`Petitioner. Specifically, the Confidential Documents contain closely held
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`information relating to Petitioner’s membership list, its membership terms and
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`business strategy, Petitioner’s financial information, and other such confidential
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`business information. The Board granted Motions to Seal the Confidential
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`Documents based at least in part on its acknowledgment that “the parties had
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`represented that the papers and exhibits they sought to seal contain confidential,
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`sensitive business information that has not been published or made public” and
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`because neither Motion to Seal was opposed. Paper 43, pp. 1–2.
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`In its Order denying Petitioner’s first Motion to Expunge (Paper 44), the
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`Board instructed that a renewed motion to expunge “should address the merits of
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`expunging Papers 30 and 31 and Exhibit 2009 in light of the appellate record (if
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`any) as well as the current record.” Paper 44, p. 2. Regarding the appellate record,
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`although certain elements of the Confidential Documents were relied upon in the
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`parties’ briefing, the Federal Circuit ultimately did not refer to or rely on any of the
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`3
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`
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Confidential Documents in reaching its decision to reject Patent Owner’s appeal
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`regarding sufficiency of the Petition under 35 U.S.C. § 312(a)(2). See Fall Line
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`Patents, LLC v. Unified Patents, LLC, 818 Fed. Appx. 1014 (Fed. Cir. 2020) (non-
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`precedential). Nor did the Federal Circuit rely on the Confidential Documents in
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`its subsequent decision rejecting Patent Owner’s constitutional challenge. See Fall
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`Line Patents, LLC v. Unified Patents, LLC, Appeal No. 19-1956, slip op. (Fed. Cir.
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`Dec. 19, 2022) (non-precedential) (EX1030). Thus, there is no public interest in
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`making the Confidential Documents publicly available, as the Federal Circuit’s
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`decisions are clear and understandable without reference thereto.
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`Regarding the proceedings before the Board, the Board did not specifically
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`rely on any of the sealed Confidential Documents in its Final Written Decision
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`(See Paper 34), so there is no public interest in making the Confidential
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`Documents publicly available. First, the Board’s Final Written Decision
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`“decline[d] to consider” “Patent Owner’s belated challenge regarding Petitioner’s
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`real party in interest [certification].” Paper 34, p. 18. Second, the Board’s Final
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`Written Decision found that did not “identify any third party that should be named”
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`and had not “produced any evidence to support such an argument.” Id. at 20.
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`Given these findings, which did not rely specifically on any of the information
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`contained in the Confidential Documents, good cause exists to expunge the
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`Confidential Documents.
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`4
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
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`III. Conclusion
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`Because the Board granted the parties’ Motions to Seal, and because the
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`Federal Circuit and the Board did not rely on the Confidential Documents in their
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`decisions, Petitioner respectfully requests that the Board protect Petitioner’s highly
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`confidential business information and expunge the Confidential Documents
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`pursuant to 37 C.F.R. § 42.56.
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`January 9, 2023
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`Respectfully submitted,
`
`
`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
`HAYNES AND BOONE, LLP
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`5
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`
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`PETITIONER’S EXHIBIT LIST
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`EX1001
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`U.S. Patent 9,454,748 to J. David Payne
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`EX1002
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`Prosecution File History of U.S. Patent 9,454,748 (“’748 PH”)
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`EX1003
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`Prosecution File History of U.S. Patent 7,822,816 (“’816 PH”)
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`EX1004
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`U.S. Patent 7,822,816 to J. David Payne
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`EX1005
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`Declaration of A.L. Narasimha Reddy
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`EX1006
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`U.S. Patent 6,154,745 to Kari et al. (“Kari”)
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`EX1007
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`HTML 4 Unleashed by Darnell et al. (“Darnell”)
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`EX1008
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`Declaration of David Bader
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`EX1009
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`U.S. Patent 6,380,928 to Todd (“Todd”)
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`EX1010
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`U.S. Patent 6,381,603 to Chan et al. (“Chan”)
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`EX1011 Memorandum Opinion and Order, Macrosolve, Inc. v. Antenna
`Software, Inc. et al., 6:11-cv-287 MHS-KNM (E.D. Tex. Jan. 21,
`2014) (“’816 Markman Order”)
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`EX1012
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`Institution Decision, IPR2014-00140 (“’816 Institution”)
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`EX1013 Microsoft Computer Dictionary, 5th ed. (excerpt)
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`EX1014
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`U.S. Patent 6,222,483 to Twitchell et al. (“Twitchell”)
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`EX1015
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`U.S. Patent 5,043,736 to Darnell et al. (“Darnell ’736”)
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`EX1016
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`Dictionary of Computer Science (excerpt)
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`EX1017
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`Dictionary of Scientific and Technical Terms, 4th ed. (excerpt)
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`EX1018
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`Goran M. Djuknic & Robert E. Richton, Geolocation and Assisted
`GPS, IEEE Computer, Vol. 34 no. 2, 123-125 (Feb. 2001)
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`6
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`EX1019
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`EX1020
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`Robert S. Anthony, The Ultimate Personal Peripheral, PC Magazine,
`Vol. 17 no. 5, 100-124 (Mar. 10, 1998)
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`Johan Hjelm, Creating Location Services for the Wireless Web:
`Professional Developer’s Guide (2002).
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`EX1021
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`Reply Declaration of A.L. Narasimha Reddy (“Reddy Reply Decl.”)
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`EX1022
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`EX1023
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`Ira Kalb, Wireless in Europe, May 2001, available at
`https://web.archive.org/web/20011215142247/http://www-
`106.ibm.com/developerworks/library/wi-eur/index.html, last retrieved
`August 16, 2018 (“Kalb”).
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`HTML 4.0 Guidelines for Mobile Access, W3C Note – 15 March
`1999, https://web.archive.org/web/20000823062148/
`http://www.w3.org:80/TR/1999/NOTE-html40-mobile-19990315/,
`last retrieved September 6, 2018 (“HTML 4.0 Note”).
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`EX1024
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`Timothy Berners-Lee, Hypertext Markup Language – 2.0, RFC 1866,
`https://tools.ietf.org/pdf/rfc1866.pdf, last retrieved September 6, 2018
`(“RFC 1866”).
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`EX1025
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`Reddy Declaration in IPR2014-00140.
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`EX1026
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`Declaration of Kevin Jakel
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`EX1027
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`Unified Patents Voluntary Interrogatories
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`EX1028
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`Jakel Deposition Transcript Errata Sheet
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`EX1029
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`Redacted Version of Exhibit 2009 (Jakel Deposition Transcript)
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`EX1030
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`Fall Line Patents, LLC v. Unified Patents, LLC, Appeal No. 19-1956,
`slip op. (Fed. Cir. Dec. 19, 2022)
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`7
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`Petitioner’s Renewed Motion to Expunge
`IPR2018-00043 (U.S. Patent 9,454,748)
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Unified Patents, LLC
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`Petitioner
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`§
`§
`§
`§
`§
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`Petition for Inter Partes Review
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`IPR2018-00043
`U.S. Patent No. 9,454,748
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service January 9, 2023
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`Manner of service Electronic Service by E-Mail
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`Documents served Petitioner’s Renewed Motion to Expunge
`Exhibit 1030
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`Persons served Terry L. Watt (terry.watt@crowedunlevy.com)
`Matthew J. Antonelli (matt@ahtlawfirm)
`Michael E. Ellis (michael@ahtlawfirm.com)
`Larry D. Thompson, Jr. (larry@ahtlawfirm.com)
`Zachariah Harrington (zac@ahtlawfirm.com)
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`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
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`8
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