IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`UNIFIED PATENTS INC.
`Petitioner
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________________
`CASE IPR2018-00043
`PATENT 9,454,748
`________________________
`
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S RENEWED MOTION TO EXPUNGE
`
`
`U.S. PATENT 9,454,748
`__________________________________________________________________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`UNIFIED PATENTS INC.
`Petitioner
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`__________________________
`CASE IPR2018-00043
`PATENT 9,454,748
`________________________
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S RENEWED MOTION TO EXPUNGE
`
`
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`IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
`
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`The Board should deny Petitioner’s motion to expunge for multiple,
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`independent reasons on the merits. Alternatively, the Board should deny it as
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`premature because Patent Owner’s time to seek review from the Supreme Court
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`has not yet run.
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`
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`First, much of what Petitioner seeks to expunge has already been made
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`public in filings before the Federal Circuit. See Non-Confidential Joint Appendix,
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`Fall Line Patents, LLC v. Unified Patents, LLC, Case No. 2019-1956, Dtk. No. 66
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`at Appx548-556 (redacted version of Paper No. 30); Appx557-566 (Paper No. 31);
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`Appx4769-4957 (redacted version of Ex. 2009). Petitioner simply ignores this in
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`its renewed motion—despite the Board’s express instruction that any renewed
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`motion “should address the merits of expunging Papers 30 and 31 and Exhibit
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`2009 in light of the appellate record (if any) as well as the current record.” Paper
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`44 at 2. There is no possible basis for Petitioner’s request that the Board expunge
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`from its records of this IPR proceeding documents (or parts of documents) that
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`have been made public during the Federal Circuit proceedings.
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`
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`Second, Petitioner has not met its burden to show expungement is
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`appropriate. Petitioner argues that expungement is appropriate based only on
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`general, conclusory assertions that it keeps certain information, such as the identity
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`of its members, confidential and that disclosure of that information would harm
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`1
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`IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
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`Petitioner. See Renewed Motion at 3. But those general, unsupported assertions
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`are insufficient to overcome the presumption of public access. See Edwards
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`Lifesciences Corp. v. Boston Scientific Scimed, Inc., IPR2017-00060, Paper 56 at 7
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`(P.T.A.B. Feb. 9, 2018) (“One sentence statements arguing in a conclusory manner
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`that the document is ‘highly confidential’ and contains ‘competitively sensitive
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`information’ is, on its face, insufficient to support sealing of exhibits in their
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`entirety.”); Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol
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`Ltd., IPR2014-00309, Paper 92 at 4-5 (P.T.A.B. Oct. 2, 2015) (“We are not
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`persuaded that Saint-Gobain’s interest in concealing the names of its customers
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`outweighs the public interest in the record in a complete and understandable record
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`of this proceeding.”). Moreover, they are inconsistent with the fact that Petitioner
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`itself proudly advertises its members on its own website. See
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`https://www.unifiedpatents.com/members. Indeed, Petitioner has previously made
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`the same conclusory assertion with respect to a specific member—Samsung—only
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`to abandon it before the Federal Circuit. See Brief of Appellee, American Patents
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`LLC v. Unified Patents, LLC, Case No. 2021-1635, Dkt. No. 16 at 5 (Fed. Cir.
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`Sept. 1, 2021).
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`
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`Third, Patent Owner has not waived its objections to expungement.
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`Petitioner argues that expungement is appropriate because the Court previously
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`2
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`IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
`
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`granted motions to temporarily seal the documents, which were unopposed. See
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`Renewed Motion at 3. But Patent Owner did not oppose the initial motions to seal
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`only because the protective order entered by the Board required materials
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`designated by Petitioner as confidential to be filed under seal. Patent Owner never
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`agreed that the documents were in fact confidential and properly sealed. In any
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`event, even if Patent Owner’s failure to oppose the initial motions to seal waived
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`its objections to the temporary sealing of Petitioner’s documents, that would not
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`mean that Patent Owner waived its objections to their permanent expungement.
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`
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`Fourth, the public is entitled to the full record that led to the ultimate
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`decision in this IPR: Commissioner Hirshfeld’s order denying Patent Owner’s
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`motion for director rehearing. Petitioner argues that the the documents it seeks to
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`expunge were not relied on by the Board in its final written decision. Renewed
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`Motion at 3-4. But Petitioner ignores that Commissioner Hirshfeld’s decision
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`denying Patent Owner’s petition for director rehearing did not explain the basis for
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`the denial at all. See 12/6/21 Order (Paper No. 49). Accordingly, Petitioner’s
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`arguments that the documents it seeks to expunge are not relevant to the decisions
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`in this matter have no support.
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`
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`If the Board does not deny Petitioner’s motion on the merits, it should deny
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`it as premature. The Board denied Petitioner’s earlier motion to expunge as
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`3
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`IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
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`premature because Patent Owner’s time to appeal had not yet expired. See 5/16/19
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`Order at 2 (Paper 44) (“We deny Petitioner’s motion to expunge (Paper 40)
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`because the time period for filing a notice to appeal has not expired, and the record
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`for this proceeding should be fully preserved in the event of an appeal.”). Patent
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`Owner’s time to file a petition seeking the Supreme Court’s review has not yet
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`expired. Patent Owner intends to file a petition, just as the Arthrex patent owner
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`did in its case, challenging Commissioner Hirshfeld’s authority to provide the
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`director review that the Supreme Court ruled was required under the Constitution.
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`See Petition For A Writ Of Certiorari, Arthrex, Inc. v. Smith & Nephew, Inc., et al.,
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`Case No. 22-639 (January 6, 2023). Patent Owner has at least until March 17 to
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`file its petition. Obviously, “the record for this proceeding should be fully
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`preserved” until all appeals have been exhausted. See 5/16/19 Order at 2 (Paper
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`44).
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`
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`For the foregoing reasons, the Board should deny Petitioner’s motion.
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`2/7/2023
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`Respectfully submitted,
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`/s/Matthew J. Antonelli
`Matthew J. Antonelli
`Registration No. 45,973
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`4
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`IPR2018-00043
`U.S. PATENT 9,454,748
`__________________________________________________________________
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, and
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`pursuant to Petitioner’s consent to electronic service, that service of a true and
`accurate coopy of the forgoing Patent Owner’s Petition for Director Rehearing was
`made via email on the Petitioner as follows:
`Lead Counsel
`Manner of service: Email: david.obrien.ipr@haynesboone.com
`Documents served: Patent Owner’s Mandatory Disclosure
`Persons served: David W. O’Brien
`Phone: 512-8967-8457
`
`
`
`
`Haynes & Boone, LLP
`
`
`
`2323 Victory Ave. Suite 700 Fax: 214-2000-0853
`
`
`
`Dallas, TX
`
`
`
`
`Back-up Counsel (via email)
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Roshan Mansinghani
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`
`
`
`
`
`
`Phone: 512 867-8520
`raghav.bajaj.ipr@haynesboone.com
`USPTO Reg. No. 66,630
`
`
`214-945-0200
`Phone:
`roshan@unifiedpatents.com
`USPTO Reg. No. 62,429
`
`
`214-651-5533
`Phone:
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`
`
`650-999-0455
`Phone:
`jonathan@unifiedpatents.com
`USPTO Reg. No. 72,518
`
`/s/ Matthew J. Antonelli
`Matthew J. Antonelli
`
`5
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