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`IPR2018-00067
`U.S. Patent 8,577,813
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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 INC.
`Petitioner
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`v.
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`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
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`____________
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`IPR2018-00067
`Patent 8,577,813
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` ____________
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`PETITIONER’S MOTION TO EXPUNGE CONFIDENTIAL
`INFORMATION
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`Pursuant to 37 C.F.R. § 42.56, Petitioner, Unified Patents Inc. (“Unified” or
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`“Petitioner”), hereby requests that certain confidential information in the record be
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`expunged. Specifically, Petitioner respectfully submits that: (i) Paper 28, Patent
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`Owner’s Response Pursuant To 37 CFR § 42.120 (Confidential Version); (ii) Paper
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`39, Petitioner’s Reply (Confidential Version); (iii) Paper 48, Confidential Corrected
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`Patent Owner’s Response; (iv) Paper 49, Confidential Corrected Patent Owner’s
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`Response (Redline); (v) Paper 54, Final Written Decision (Confidential Version);
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`(vi) Exhibit 2011, Membership Agreement; (vii) Exhibit 2012, Subscription Fees;
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`(viii) Exhibit 2017, Patent Owner’s Oral Hearing Demonstratives (Confidential
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`Version); (ix) Exhibit 1036, Declaration of Kevin Jakel (Confidential Version); and
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`(x) Exhibit 1037, Deposition Transcript of Kevin Jakel (Confidential Version)
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`(collectively, the “Confidential Documents”) should be expunged from the record as
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`these pleadings and exhibits contain Petitioner’s highly confidential business
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`information.
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`This motion is being timely filed within 45 days from the Final Written
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`Decision. See Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed.
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`Reg. 48756, 48761 (Aug. 14, 2012). For the reasons set forth below, Petitioner
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`requests that the Confidential Documents be expunged. Patent Owner’s counsel
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`indicated that while Patent Owner does not believe the information to be
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`confidential, Patent Owner does not intend to file an opposition.
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`1
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`I.
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`Applicable Legal Standards
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`37 C.F.R. § 42.56 provides that “after final judgment in a trial, a party may
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`file a motion to expunge confidential information in the record.” Likewise, the Trial
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`Practice Guide states:
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`There is an expectation that information will be made public where the
`existence of the information is referred to . . . in a final written decision
`following a trial. A party seeking to maintain the confidentiality of
`information, however, may file a motion to expunge the information
`from the record prior to the information becoming public.
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`Trial Practice Guide, 77 Fed. Reg. at 48761. A party seeking expungement from
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`the record must show good cause by demonstrating “that any information sought
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`to be expunged constitutes confidential information, and that Petitioner’s interest in
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`expunging it outweighs the public’s interest in maintaining a complete and
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`understandable history of this inter partes review.” Atlanta Gas Light Co. v. Bennett
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`Regulator Guards, Inc., IPR2013-00453, Paper 97 at 2 (P.T.A.B. Apr. 15, 2015).
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`II. Reasons for Relief Requested
`A.
`Procedural Background
`The Board granted the parties’ Joint Motion for Entry of a Protective Order.
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`Paper 55 (Order granting Joint Motion); Paper 24 (Joint Motion); Ex. 2001
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`(Protective Order). Two unopposed Motions to Seal have been filed in this
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`proceeding (Paper 37 and Paper 55), collectively requesting that the Board maintain
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`2
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`the Confidential Documents under seal. As indicated in the Motions to Seal, the
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`Confidential Documents contain confidential, sensitive business information that
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`has not been published or made public. See Paper 37 at 1; Paper 55 at 4-10. The
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`Confidential Documents contain, inter alia, Petitioner’s highly confidential
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`members’ identities, Petitioner’s highly confidential agreements, membership terms,
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`and business strategy; and Petitioner’s highly confidential financial information. See
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`id.
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`The Board granted Petitioner’s Motion to Seal (Paper 55), ordering that the
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`Confidential Documents that were filed by the parties remain under seal with
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`restricted, non-public access. Paper 58. The Board also authorized the parties’
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`filings of the following redacted, publicly-available versions of certain Confidential
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`Documents: Paper 38 (Redacted Version of Reply, Paper 39); Paper 27 (Redacted
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`Version of Patent Owner Response, Paper 28); Paper 50 (Redacted Version of
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`Corrected Patent Owner Response, Papers 48 and 49); Exhibit 1043 (Redacted
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`Version of Exhibit 1036); Exhibit 1044 (Redacted Version of Exhibit 1037).1 See
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`1 The only Confidential Documents for which a corresponding public, redacted version
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`was not filed were Exhibits 2011 and 2012, which contained highly confidential and
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`sensitive information in their entirety and which Petitioner moved to seal in their entirety.
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`3
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`Paper 58. The Board also filed a redacted, public version (Paper 59) of the
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`confidential version (Paper 54) of the Final Written Decision, removing certain
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`highly confidential information, including information regarding the highly
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`confidential membership status of certain members. See Paper 59.
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`B. Good Cause Exists for Expunging the Confidential Documents
`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 as
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`well as its members. Specifically, the Confidential Documents contain highly
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`confidential and sensitive business information regarding the identity of certain of
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`Petitioner’s members that is non-public and could cause competitive business injury
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`to Petitioner and expose Petitioner to potential breach of contractual obligations by
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`Petitioner if publicly disseminated. Paper 55 at 4-10. The Confidential Documents
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`also contain highly confidential information regarding Petitioner’s internal business
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`operations, business plans, business strategy, financial information, membership
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`information, and other sensitive business information that is non-public and could
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`cause competitive business injury to and potential breach of contractual obligations
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`by Petitioner if publicly disseminated. Id. The Confidential Documents also include
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`See Paper 55. The Board granted Petitioner’s request to seal these two exhibits in their
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`entirety. See Paper 58.
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`4
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`or contain discussion of certain highly confidential agreements that could similarly
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`cause competitive business injury to and potential breach of contractual obligations
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`by Petitioner if publicly disseminated. Id. As discussed, public, redacted versions
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`of certain of the Confidential Documents have been filed that redact only the
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`confidential and sensitive portions; and the Board found that the redactions were
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`appropriately limited by granting Petitioner’s Motion to Seal. Paper 58. The Board
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`also filed a redacted, public version of the Final Written Decision removing certain
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`highly confidential information, including information regarding the highly
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`confidential membership status of certain members. See Paper 59.
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`For the reasons set forth in Petitioner’s Motion to Seal, which the Board
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`granted, the portions of the Confidential Documents that have been redacted from
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`the public record of this proceeding are not necessary to understanding the
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`underlying arguments or the Board’s findings, analysis, or conclusions. See Paper
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`55 at 6-10. And public, redacted versions of certain Confidential Documents have
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`been filed.2 Further, the confidential information sought to be expunged address
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`2 Exhibits 2011 and 2012 were only filed in confidential form, as discussed. But, as
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`explained in Petitioner’s Motion to Seal (Paper 55, at 9), the Final Written Decision cites
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`to these exhibits only for the purpose of summarizing Patent Owner’s argument, and the
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`5
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`only real-party-in-interest issues and do not bear on the unpatentability of the claims.
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`Thus, the public, redacted versions maintain the “essence” of the arguments and
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`evidence in this proceeding and do not prevent the public from “maintaining a
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`complete and understandable history” of this proceeding. Atlanta Gas Light, Paper
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`97 at 2, 3. The public interest, therefore, is served in not now making the
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`Confidential Documents publicly available.
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`As to the Final Written Decision (Paper 54, redacted version Paper 59), the
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`redactions of confidential information were minimal and do not inhibit the public’s
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`ability to completely understand the file history of this proceeding. Thus, the
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`redacted version of the Final Written Decision (Paper 59) “strik[es] an appropriate
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`balance between the public policy for an open record and the legitimate need to
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`protect confidential information from disclosure.” Atlanta Gas Light, Paper 97 at 4
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`(citing RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 62 at 4–5) (P.T.A.B. Sept.
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`9, 2014)). Like the redactions to the other Confidential Documents filed by the
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`parties, the redactions in the Final Written Decision address real-party-in-interest
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`issues and do not bear on the unpatentability of the claims. Finally, the Board has
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`previously relied on sealed confidential information in a final written decision
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`Final Written Decision does not otherwise cite to or rely on Exhibits 2011 and 2012 to
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`support its findings, analysis, or conclusions.
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`6
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`without publicly disclosing that confidential information. See, e.g., Petrol. Geo-
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`Services Inc. v. WesternGeco LLC, IPR2014-01477, Paper 71 at 62-68 (P.T.A.B.
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`Jul. 11, 2016) (final written decision redacting confidential information and finding
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`no privity between Petitioner and third-party defendant in litigation).
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`Good cause, therefore, exists to expunge the Confidential Documents,
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`including the confidential version of the Final Written Decision (Paper 54).
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`III. Conclusion
`For all of the foregoing reasons, Petitioner respectfully requests that the Board
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`protect Petitioner’s highly confidential business information and expunge the
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`Confidential Documents pursuant to 37 C.F.R. § 42.56.
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`IV. Request for Conference Call with the Board
`Should the Board not be inclined to grant the present Motion to Expunge
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`Confidential Information, Petitioner hereby respectfully requests a conference call
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`with the Board to discuss any concerns prior to the Board issuing a decision on the
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`Motion.
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`Respectfully submitted,
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`BY: /s/ Jason R. Mudd
`Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`Roshan Mansinghani, Reg. No. 62,429
`Jonathan Stroud, Reg. No. 72,518
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`ATTORNEYS FOR PETITIONER
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`7
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`IPR2018-00067
`U.S. Patent No. 8,577,813
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 17,
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`2019, the foregoing Petitioner’s Motion to Expunge Confidential Information was
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`served via electronic service on the following counsel of record for Patent Owner:
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`
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`• jimglass@quinnemanuel.com
`• nimahefazi@quinnemanuel.com
`• tigranguledjian@quinnemanuel.com
`• halbarza@quinnemanuel.com
`• jordankaericher@quinnemanuel.com
`• qe-usr-ipr@quinnemanuel.com
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`Dated: June 17, 2019
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`BY: /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
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`ATTORNEY FOR PETITIONER
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`8
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