IPR2018-00199
`2211726-00152US1
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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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`
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`Unified Patents Inc.
`Petitioner
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`v.
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`Uniloc Luxembourg S.A. & Uniloc USA,
`Patent Owner
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`
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`IPR2018-00199
`Patent 7,092,671
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`
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`MOTION TO SEAL TRANSCRIPT OF ORAL HEARING AND PATENT
`OWNER RESPONSE
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`
`2211726-00152US1
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Unified Patents Inc.
`Petitioner
`
`v.
`
`Uniloc Luxembourg S.A. & Uniloc USA,
`Patent Owner
`
`
`
`
`IPR2018-00199
`Patent 7,092,671
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`
`
`MOTION TO SEAL TRANSCRIPT OF ORAL HEARING AND PATENT
`OWNER RESPONSE
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`
`
`Introduction
`Petitioner requests that the confidential version of the Transcript of Oral
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`IPR2018-00199
`U.S. Patent 7,092,671
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`I.
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`Hearing (filed as Paper 30) be sealed under 37 C.F.R. § 42.54 and the Default Standing
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`Protective Order (filed as Exhibit 1017), and that the redactions to confidential
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`information in the public version of the Transcript of Oral Hearing (filed as Paper 31)
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`are maintained. Petitioner also requests that the redacted version of the Patent Owner
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`Response containing inadequately redacted confidential information (filed as Paper
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`13) be sealed and that redactions to confidential information in the public version of
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`the Patent Owner Response (“POR”) (filed as Paper 32) be maintained. Good cause
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`exists to seal the confidential versions of the Transcript of Oral Hearing and the POR
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`and maintain the redactions of confidential information from the public versions of
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`these papers because these papers contain Petitioner’s sensitive, non-public
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`information that was voluntarily produced under the terms of the Protective Order in
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`this proceeding.
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`Patent Owner has indicated that it will oppose the present Motion to Seal.
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`II. Background and Procedural History
`A. Transcript of Oral Hearing
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`The Oral Hearing in this proceeding took place on February 28, 2019. At the
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`request of Petitioner, the Oral Hearing was closed to the public due to the likely
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`discussion of confidential business information, which indeed occurred. Accordingly,
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` 1
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`when the Board filed the Transcript of Oral Hearing (Paper 30), it was marked “NON-
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`IPR2018-00199
`U.S. Patent 7,092,671
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`PUBLIC VERSION – PROTECTIVE ORDER MATERIAL.” Petitioner submitted a
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`version of the Transcript of Oral Hearing that redacts Petitioner’s confidential
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`information (Paper 32).
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`B. Patent Owner Response
` On August 8, 2018, two months after institution of this proceeding, Patent
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`Owner asked Petitioner to provide additional discovery relating to real party-in-
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`interest (“RPI”) and privity. Petitioner agreed to voluntarily produce items that
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`contained Petitioner’s confidential business information, including separately
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`produced documents detailing Petitioner’s non-public business model, membership
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`agreements, and trade secret information. The parties agreed to use the Board’s
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`Default Protective Order to protect Petitioner’s confidential business information.
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`Exhibit 1017 is the Default Protective Order with a Standard Acknowledgement
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`executed by Patent Owner’s counsel, Brett Mangrum. The documents were produced
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`under the Protective Order and marked “PROTECTIVE ORDER MATERIAL.”
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`Patent Owner filed its POR on September 21, 2018, without conferring with
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`Petitioner regarding redactions to Petitioner’s confidential information, and without
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`the required accompanying motion to seal. Instead, Patent Owner unilaterally filed an
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`inadequately redacted version of the POR (Paper 13) that revealed Petitioner’s
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`confidential information, and filed an unredacted version of the POR under seal. In
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`IPR2018-00199
`U.S. Patent 7,092,671
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`its POR, Patent Owner cited a limited number of Petitioner’s voluntarily produced
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`confidential and highly sensitive documents, which were provided by Petitioner as
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`seventeen (17) separate documents. However, Patent Owner compiled Petitioner’s
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`separately produced confidential documents into a single document that Patent Owner
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`filed as Exhibit 2005. Exhibit 2005 includes membership agreements, subscription
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`forms, and other items that contain only Petitioner’s confidential and sensitive
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`business information. Petitioner filed its Opposed Motion to Seal Exhibit 2005 and
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`maintain the unredacted POR under seal. See Paper 16. At that time, Petitioner
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`focused its motion to seal on Exhibit 2005 and the unredacted POR due to the
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`substantial amount of confidential business information at issue, and inadvertently did
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`not propose additional redactions to the improperly redacted POR publicly filed by
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`Patent Owner (Paper 13). In particular, Petitioner inadvertently did not propose
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`redacting the name of an entity that is a confidential member of Petitioner in the
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`improperly redacted POR filed by Patent Owner (Paper 13). Petitioner did not intend
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`to reveal any confidential information related to the status of membership of any third-
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`party entity (as the case may be) in the improperly redacted POR (Paper 13), and did
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`not waive the disclosure of its confidential information due to the unilateral actions
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`taken by Patent Owner in filing Paper 13.
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`In subsequent papers filed by Petitioner, Petitioner continued to redact its
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`confidential information, including the name of a confidential member of Petitioner
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` 3
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`IPR2018-00199
`U.S. Patent 7,092,671
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`that was improperly not redacted by Patent Owner in the POR. See Petitioner’s Reply
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`(Paper 21), Redacted Transcript of Oral Hearing (Paper 31). Thus, at all times
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`throughout this proceeding, Petitioner has protected its confidential information in its
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`own papers.
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`Petitioner was recently made aware of third parties citing to the confidential
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`information included in the improperly redacted POR in this proceeding. See
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`IPR2019-00482, Patent Owner Preliminary Response (Paper 9) (citing one of the two
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`confidential member names revealed in Patent Owner’s improperly redacted POR
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`(Paper 13)).1 Upon learning of the third party’s citation to Petitioner’s confidential
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`information in the improperly redacted POR filed by Patent Owner (Paper 13),
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`Petitioner moved to remove Paper 13 from public accessibility and replace it with a
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`version that properly redacts Petitioner’s confidential information. Thereafter, the
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`Board removed Paper 13 from public accessibility and replaced it with a properly
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`redacted version of the POR, filed as Paper 32.
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`Subsequently, Petitioner became aware that in another proceeding before the
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`Board, Apple Inc. (“Apple”) did not redact its membership in Petitioner Unified
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`1 In IPR2019-00482, the Board required Patent Owner to refile its Preliminary
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`Response to include redactions to Petitioner’s confidential information. See
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`IPR2019-00482, Redacted Patent Owner Preliminary Response (Paper 10).
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` 4
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Patents in papers before the Office in another IPR proceeding involving the same
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`
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`patent challenged in this proceeding. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-
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`00282, Paper 30 (PTAB Jun. 4, 2018) (Final Written Decision filed identifying
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`Apple’s membership in Petitioner). Petitioner therefore informed the Board of this
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`development by email and indicated to the Board that this development did not impact
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`the confidentiality of any other confidential information identified by Petitioner in the
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`present case. In an email, the Board instructed the parties to “coordinate so Patent
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`Owner can file a new redacted version that can be marked public” but also clarified
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`that “the parties do not need to refile any already-filed redacted documents with
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`updated redactions” for any papers or documents other than the POR. Petitioner
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`hereby certifies that the parties have conferred as to the corrected redactions to the
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`POR.
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`Patent Owner has informed Petitioner that it will file the corrected redacted
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`version of the POR.
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`III. Good Cause Exists to Seal the Confidential Transcript of Oral Hearing
`and Patent Owner Response, and Maintain the Redactions of
`Confidential Information in the Public Versions of the Transcript of Oral
`Hearing and Patent Owner Response
`The Office’s Trial Practice Guide provides that “the rules aim to strike a
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`balance between the public’s interest in maintaining a complete and understandable
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`file history and the parties’ interest in protecting truly sensitive information.” 77
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`FED. REG. 48756, 48760 (Aug. 14, 2012). Further, those rules “identify
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`confidential information in a manner consistent with Federal Rule of Civil
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Procedure 26(c)(1)(G), which provides for protective orders for trade secret or other
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`confidential research, development, or commercial information.” Id. (citing 37
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`C.F.R. § 42.54). Good cause exists to seal the confidential information in the papers
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`at issue in this motion. See Garmin v. Cuozzo, IPR2012-00001, Paper 36 and 37
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`C.F.R. § 42.54(a) (setting forth the good cause standard).
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`Both the POR and Transcript of Oral Hearing contain Petitioner’s voluntarily
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`provided confidential material. Such confidential information should be redacted in
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`the public versions of the papers (Papers 31 and 32), and the confidential versions of
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`the POR and Transcript of Oral Hearing (Papers 13 and 30) should be sealed in their
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`entireties. The confidential material includes highly sensitive business information
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`that has not been published or otherwise been made public by Petitioner.
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`Regarding the POR, Patent Owner unilaterally made Petitioner’s confidential
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`information public without Petitioner’s consent. The originally filed and
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`inadequately redacted Patent Owner Response (Paper 13) contains Petitioner’s
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`confidential information, and improperly divulged Petitioner’s confidential
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`membership information that was voluntarily disclosed to Patent Owner under the
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`terms of the Protective order. Regardless of when Petitioner raised these issues,
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`Patent Owner did not take “reasonable care to maintain the confidentiality” of
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`Petitioner’s voluntarily produced confidential information that Patent Owner
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` 6
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`included in its Patent Owner Response. 77 FED. REG. 48756, 48770 (Aug. 14,
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`IPR2018-00199
`U.S. Patent 7,092,671
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`2012). Patent Owner did not confer with Petitioner regarding redactions needed in
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`the original public version of the Patent Owner Response (Paper 13) to ensure that
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`Petitioner’s confidential information was properly treated and confidentiality was
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`maintained. Instead, Patent Owner filed a redacted version of its Patent Owner
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`Response (Paper 13) that failed to redact all of Petitioner’s confidential business
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`information, improperly making Petitioner’s confidential information publicly
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`available without Petitioner’s consent.
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`The Transcript of Oral Hearing and POR include reference to a specific third
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`party that is or is not a private member of Petitioner Unified Patents (as the case may
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`be). Whether or not this specific third party is, in fact, a member of Petitioner is a
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`matter of non-public information that Petitioner maintains as confidential
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`information, has not publicly disclosed, and has not agreed to allow Patent Owner
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`to publicly disclose.
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`Additionally, the Transcript of Oral Hearing and POR include statements
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`from, summaries of, and citations to the confidential and highly sensitive
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`Membership Agreements included in Exhibit 2005. Exhibit 2005 contains only
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`confidential material that was produced voluntarily by Petitioner under the terms of
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`the Protective Order in response to Patent Owner’s discovery requests. Petitioner
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`has previously identified Exhibit 2005 as containing only confidential information.
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`See Opposed Motion to Seal (Paper 16) at 3. Because the Membership Agreements
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`IPR2018-00199
`U.S. Patent 7,092,671
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`included in Exhibit 2005 include only confidential information, any statement from,
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`summary of, or citation to the contents of the Membership Agreement is confidential
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`information and should be sealed. The Board, in a separate proceeding, has
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`previously found that such information related to Petitioner’s business is
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`confidential and should be sealed. See Unified Patents v. Uniloc 2017 LLC,
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`IPR2017-02148, Paper 76 at 7-10, 12-14 (P.T.A.B. Apr. 12, 2019) (finding that
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`Petitioner’s membership terms, business strategy, and business practices is
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`confidential information and sealing the same).
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`The material redacted in the public versions of the Transcript of Oral Hearing
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`(Paper 31) and the Patent Owner Response (Paper 32) also includes confidential,
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`sensitive commercial information, including closely held information related to
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`Petitioner’s core business, membership, membership terms, and business strategy
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`and constitutes highly confidential business information, as well as trade secrets.
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`Disclosure of Petitioner’s highly confidential business information would provide
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`Petitioner’s competitors and would-be business rivals with a roadmap for replicating
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`Petitioner’s unique, valuable business model and would reveal contractual business
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`information between two parties produced voluntarily under a protective order.
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`Additionally, were confidential information produced voluntarily under a protective
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`order to be disclosed publicly, a producing party would have little incentive to
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`engage in voluntary discovery of confidential information. As such, the public
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`IPR2018-00199
`U.S. Patent 7,092,671
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`interest would also be served by maintaining the confidentiality of Petitioner’s
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`sensitive business information.
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`Thus, the confidential information contained in the public Transcript of Oral
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`Hearing (Paper 31) and Patent Owner Response (Paper 32) should remain redacted,
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`and the unredacted version of the Transcript of Oral Hearing and improperly
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`redacted version of the Patent Owner Response (Paper 13) should be sealed in their
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`entireties.
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`IV. Conclusion
`For the above reasons, Petitioner requests that the confidential versions of the
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`Transcript of Oral Hearing (Paper 30) and the Patent Owner Response (Paper 13)
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`remain under seal and that the confidential information reflected in the public versions
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`of the Transcript of Oral Hearing (Paper 31) and Patent Owner Response (Paper 32)
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`remain redacted.
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`Unified Patents Inc.
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`By:/Daniel V. Williams/
`
`David L. Cavanaugh
`Registration No. 36,476
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`Roshan Mansinghani,
`Registration No. 62,429
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`Jonathan Stroud
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Registration No. 72,518
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`Jonathan Bowser
`Registration No. 54,574
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`Daniel V. Williams
`Registration No. 45,221
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`Ellyar Y. Barazesh,
`Registration No. 74,096
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`10
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`CERTIFICATE OF SERVICE
`I hereby certify that on July 2, 2019, I caused a true and correct copy of the
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`IPR2018-00199
`U.S. Patent 7,092,671
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`foregoing Motion to Seal Transcript of Oral Hearing and Patent Owner Response
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`to be served via electronic mail to the attorneys of record at the following email
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`addresses:
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`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Sean D. Burdick
`Travis Richens (pro hac vice)
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`Emails:
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`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`sean.burdick@unilocusa.com
`travis@etheridgelaw.com
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`Respectfully submitted,
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`/ Jonathan E Robe /
`Jonathan E. Robe, Reg. No. 76,033
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Fax: (202) 663-6363
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