IPR2018-00199
`2211726-00152US1
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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
`
`
`
`MOTION TO SEAL PATENT OWNER REQUEST FOR REHEARING
`
`
`2211726-00152US1
`
`
`
`
`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
`
`
`
`MOTION TO SEAL PATENT OWNER REQUEST FOR REHEARING
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`
`I.
`
`Introduction
`Petitioner requests that the confidential version of Patent Owner’s Request for
`
`Rehearing (Paper 38) be sealed under 37 C.F.R. § 42.54 and the Default Standing
`
`Protective Order (filed as Exhibit 1017).1 Petitioner hereby moves to seal the
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`confidential version of Patent Owner’s Request for Rehearing and redact the
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`confidential information contained therein from the public version of Patent Owner’s
`
`Request for Rehearing (filed by Petitioner herewith as Exhibit 1026).
`
`The parties have met and conferred as to the redactions in the public version of
`
`Patent Owner’s Request for Rehearing. Petitioner submits that good cause exists to seal
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`the confidential information reflected in the confidential version of Patent Owner’s
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`Request for Rehearing because that information is sensitive, non-public information.
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`Patent Owner has indicated that it will oppose the present Motion to Seal.
`
`II. Good Cause Exists for Sealing Certain Confidential Information
`Reflected in Patent Owner’s Request for Rehearing
`The Office Patent 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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`1 Petitioner notes that Patent Owner’s Request for Rehearing (Paper 38) is nearly 18
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`pages long, 3 pages in excess of the 15-page limit set by the rules governing practice
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`before the Board. See 37. C.F.R. § 42.24(a)(1)(v).
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`1
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`file history and the parties’ interest in protecting truly sensitive information.” 77
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`IPR2018-00199
`U.S. Patent 7,092,671
`
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`Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). Further, those rules “identify confidential
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`information in a manner consistent with Federal Rule of Civil Procedure
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`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).
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`There must be “good cause” to seal a document in a proceeding before the
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`Board. Garmin v. Cuozzo, IPR2012-00001, Paper 36 (PTAB Apr. 5, 2013) and 37
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`C.F.R. § 42.54(a). Good cause is established by demonstrating that the balance of
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`the following factors favors sealing the material: whether (1) the information sought
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`to be sealed is truly confidential, (2) a concrete harm would result upon public
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`disclosure, (3) there exists a genuine need to rely in the trial on the specific
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`information sought to be sealed, and (4), on balance, an interest in maintaining
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`confidentiality outweighs the strong public interest in having an open record.
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`Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4
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`(PTAB Jan. 19, 2018) (informative); see also Corning Optical Commc’ns RF, LLC,
`
`v. PPC Broadband, Inc., IPR2014-00440, Paper 47 at 3 (PTAB Apr. 14, 2015). The
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`balance of these factors favors sealing the confidential information reflected in
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`Patent Owner’s Request for Rehearing.
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`2
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`Patent Owner correctly filed its Request for Rehearing (Paper 38) under seal
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`IPR2018-00199
`U.S. Patent 7,092,671
`
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`because Patent Owner’s Request for Rehearing contains information that Petitioner
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`has identified as confidential business information. The confidential version of
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`Patent Owner’s Request for Rehearing includes sensitive business information
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`which has not been published or otherwise been made public.
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`Specifically, for example, Patent Owner’s Request for Rehearing includes
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`statements from, summaries of, and citations to Exhibit 2005 produced voluntarily
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`by Petitioner in response to requests from Patent Owner under the agreed-to Default
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`Protective Order governing this case. Petitioner has previously identified Exhibit
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`2005 as containing only confidential information. See Opposed Motion to Seal
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`(Paper 16) at 3. Because Exhibit 2005 includes only confidential information, any
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`statement from, summary of, or citation to the contents of Exhibit 2005 is
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`confidential information and should be sealed.
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`Additionally, Patent Owner’s Request for Rehearing references additional
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`information that is confidential, sensitive commercial information, including closely
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`held information, related to Petitioner’s core business, membership terms, and
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`business strategy and constitutes highly confidential business information, as well
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`as trade secrets. As a specific, non-exhaustive example, Patent Owner’s Request for
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`Rehearing includes reference to a specific third party that is a private member of
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`Petitioner Unified Patents. Whether or not this specific third party is, in fact, a
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`3
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`
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`member of Petitioner is a matter of non-public information that Petitioner maintains
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`IPR2018-00199
`U.S. Patent 7,092,671
`
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`as confidential information and is contractually obligated to maintain as
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`confidential. As another specific, non-exhaustive example, Patent Owner’s Request
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`for Rehearing includes specific details pertaining to the terms of membership of
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`another third party that Petitioner has previously identified as a public member of
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`Petitioner Unified Patents. See Paper 36 at 4-5. However, the specific details
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`pertaining to the membership of that public member remain confidential, including
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`details about the amount of the membership fee paid by that public member.
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`Disclosure of Petitioner’s highly confidential business information would
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`provide Petitioner’s competitors and would-be business rivals with a roadmap for
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`replicating Petitioner’s unique, valuable business model and would reveal
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`contractual business information between two parties produced voluntarily under a
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`joint protective order. Additionally, were confidential information produced
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`voluntarily under a joint protective order to be disclosed publicly, a producing party
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`would have little incentive to engage in voluntary discovery of confidential
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`information. Furthermore, Petitioner is contractually bound to third parties to
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`maintain the confidentiality of the confidential information contained within Patent
`
`Owner’s Request for Rehearing. Accordingly, the public interest would be served
`
`by maintaining the confidentiality of this information. Thus, the confidential
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`information contained in Patent Owner’s Request for Rehearing (Paper 38) should
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`4
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`be redacted, and the unredacted version of Patent Owner’s Request for Rehearing
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`IPR2018-00199
`U.S. Patent 7,092,671
`
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`(filed herewith as Exhibit 1026) should be sealed in its entirety.
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`III. Conclusion
`For the above reasons, Petitioner requests that the confidential version of Patent
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`Owner’s Request for Rehearing (Paper 38) be sealed and that the confidential
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`information reflected in Patent Owner’s Request for Rehearing should be redacted in
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`the public version of Patent Owner’s Request for Rehearing submitted herewith
`
`(Exhibit 1026).
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`IV. Request for Conference Call with the Board
`Should the Board not be inclined to grant the present Motion to Seal,
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`Petitioner hereby requests a conference call with the Board to discuss any concerns
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`prior to the Board issuing a decision on the Motion.
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`Unified Patents Inc.
`
`
`
`By: /Daniel V. Williams/
`
`David L. Cavanaugh
`Registration No. 36,476
`
`Roshan Mansinghani,
`Registration No. 62,429
`
`Jonathan Stroud
`Registration No. 72,518
`
`Jonathan Bowser
`Registration No. 54,574
`
`
`
`5
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`IPR2018-00199
`U.S. Patent 7,092,671
`
`
`
`Daniel V. Williams
`Registration No. 45,221
`
`Ellyar Y. Barazesh,
`Registration No. 74,096
`
`
`
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`6
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Exhibit List
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`Description
`U.S. Patent No. 7,092,671
`U.S. Patent No. 6,084,949 (“Yun”) (filed on June 5, 1997;
`published on July 4, 2000)
`U.K. Patent Application Publication No. GB 2318703
`(“Langlois”) (published on April 29, 1998)
`U.S. Patent No. 5,428,671 (“Dykes”) (filed on November 9,
`1992; published on June 27, 1995)
`U.S. Patent No. 6,738,643 (“Harris”) (filed on October 31,
`2000; published on May 18, 2004)
`U.S. Patent No. 7,577,910 (“Husemann”) (filed on July 10,
`2000; published on August 18, 2009)
`Declaration of Herbert Cohen
`File History, ’727 application, Office Action (10/09/2003)
`File History, ’727 application, Response (12/18/2003)
`File History, ’727 application, Office Action (03/12/2004)
`File History, ’727 application, Response (06/17/2004)
`File History, ’727 application, Office Action (11/26/2004)
`File History, ’727 application, Response (05/27/2005)
`File History, ’727 application, Office Action (08/12/2005)
`File History, ’727 application, Response (02/21/2006)
`File History, ’727 application, Notice of Allowance
`(03/23/2006)
`Email chain of discovery negotiations
`Default Protective Order with Standard Acknowledgement
`signed by Brett Mangrum
`Email regarding claw back and instruction to dispose of
`confidential information
`Email and share site access providing Unified’s produced
`documents under the terms of the Protective Order to Patent
`Owner’s counsel and attorney
`Second Declaration of Herbert Cohen
`Declaration of Kevin Jackel
`The American Heritage College Dictionary, Third Edition,
`1993, pp. 62, 1242, 1243.
`International Telecommunication Union (ITU), ITU-T
`7
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`Exhibit
`1001
`1002
`
`1003
`
`1004
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`1005
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`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
`
`1020
`
`1021
`1022
`1023
`1024
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Telecommunication Standardization Sector of ITU, V.250
`(05/1999), Series V: Data Communication Over the
`Telephone Network, Control Procedures, Serial
`Asynchronous Automatic Dialing and Control
`3G TS 27.007, v3.1.0 (1999-07), 3rd Generation Partnership
`Project; Technical Specification Group Terminals; AT
`command set for 3GPP User Equipment (UE) (3G TS 27.007
`version 3.1.0)
`Patent Owner’s Request for Rehearing (redacted)
`
`1025
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`1026
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`8
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`IPR2018-00199
`U.S. Patent 7,092,671
`
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`CERTIFICATE OF SERVICE
`I hereby certify that on July 12, 2019, I caused a true and correct copy of:
` the foregoing Motion to Seal Patent Owner’s Request for Rehearing;
`and
` Exhibit 1026- Patent Owner’s Request for Rehearing (redacted)
` an updated exhibit list
`
`to be served via electronic mail to the attorneys of record at the following email
`addresses:
`
`Ryan Loveless
`Brett Mangrum
`Travis Richins (pro hac vice)
`James Etheridge
`Jeffrey Huang
`
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`Emails:
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`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`travis@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
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`Respectfully submitted,
`
` /
`
` 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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`i
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