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`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.
`
`Uniloc Luxembourg S.A. & Uniloc USA,
`Patent Owner
`
`
`
`IPR2018-00199
`Patent 7,092,671
`
`
`
`MOTION TO EXPUNGE CONFIDENTIAL INFORMATION
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`
`
`Introduction
`Pursuant to 37 C.F.R. § 42.56, Petitioner, Unified Patents Inc. (“Petitioner”),
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`IPR2018-00199
`2211726-00152US1
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`I.
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`hereby requests that certain confidential information in the record be expunged. This
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`motion is timely filed within 45 days (excluding federal holidays) of entry of the Final
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`Written Decision. See Office Patent Trial Practice Guide (“Trial Practice Guide”), 77
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`Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). For the reasons set forth below, Petitioner
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`respectfully requests that certain papers and documents be expunged.
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`Specifically, Petitioner requests that the following documents currently under
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`seal be expunged from the record as these documents contain Petitioner’s highly
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`confidential business information:
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`• Exhibit 1022 Declaration of Kevin Jakel (confidential version)
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`• Exhibit 2005 Sample Unified Membership Agreements and
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`Subscription Forms, membership lists, invoices, and Subscription Fee
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`Schedules
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`• Paper 12 Patent Owner Response to Petition (confidential version);
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`• Paper 13 Patent Owner Response to Petition (improperly redacted
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`version)
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`• Paper 20 Petitioner’s Reply (confidential version);
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`• Paper 30 Hearing Transcript (confidential version);
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`• Paper 33 Final Written Decision (confidential version);
`1
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`
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`• Paper 34 Patent Owner’s Request for Rehearing (confidential version).
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`IPR2018-00199
`2211726-00152US1
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`II. Applicable Legal Standards
`37 CFR § 42.56 provides that following “denial of a petition to institute a trial
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`or after final judgment in a trial, a party may file a motion to expunge confidential
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`information from the record.” Similarly, the Trial Practice Guide states that “[t]here
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`is an expectation that information will be made public where the existence of the
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`information is referred to in a decision to grant or deny a request to institute a review
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`or is identified in a final written decision following a trial.” Trial Practice Guide, 77
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`Fed. Reg. at 48,761. However, the Trial Practice Guide also states that a party
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`“seeking to maintain the confidentiality of information . . . may file a motion to
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`expunge the information from the record prior to the information becoming public.”
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`A party seeking expungement from the record must show good cause by
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`demonstrating “that any information sought to be expunged constitutes confidential
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`information, and that Petitioner’s interest in expunging it outweighs the public’s
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`interest in maintaining a complete and understandable history of this inter partes
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`review.” Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
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`Paper 97 at 2 (P.T.A.B. Apr. 15, 2015).
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`III. Good Cause Exists for Expunging the Confidential Papers and
`Documents
`In this proceeding, the Board has not yet acted on Petitioner’s pending
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`Motions to Seal. See Paper 16 (requesting that the Board seal the confidential
`2
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`
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`
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`version of Exhibit 2005 in its entirety and seal the unredacted Patent Owner
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`IPR2018-00199
`2211726-00152US1
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`Response (Paper 12) because of the confidential information contained therein);
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`Paper 19 (requesting that the Board seal the unredacted Petitioner’s Reply (Paper
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`20) and the unredacted Exhibit 1022 (Declaration of Kevin Jakel)). Petitioner has
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`also filed Motions to Seal the following papers: the improperly redacted version of
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`the Patent Owner Response (Paper 13) and the confidential version of the Transcript
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`of Oral Hearing, see Paper 36; the confidential version of the Final Written Decision
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`(Paper 33), see Paper 35; and the confidential version of Patent Owner’s Request
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`for Rehearing (Paper 34), see Paper 38.
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`Redacted versions of the documents containing confidential information have
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`been filed in this proceeding. The following table summarizes the confidential
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`documents (left column), with the corresponding redacted versions (right column):
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`
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`3
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`
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`Redacted Version of Document
`Sealed Document
`Exhibit 1022 Declaration of Kevin Jakel Exhibit 1022 Declaration of Kevin Jakel
`(Redacted)
`Exhibit
`2005
`Sample
`Unified
`Membership
`Agreements
`and
`Subscription Forms, membership lists,
`invoices,
`and
`Subscription
`Fee
`Schedules
`Paper 12 Patent Owner Response to
`Petition
`Paper 13 Patent Owner Response to
`Petition (redacted)
`Paper 20 Petitioner’s Reply
`Paper 30 Transcript of Oral Hearing
`
`contains
`Exhibit
`information1
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`only
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`confidential
`
`Paper 32 Patent Owner Response
`(Redacted) to Petition
`
`Paper 21 Petitioner’s Reply
`Paper 31 Redacted Transcript
`Paper TBD Final Written Decision
`(redacted)2 (provided via email to the
`Board on July 2, 2019)
`Exhibit 1026 Patent Owner’s Request for
`Rehearing (redacted)
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`
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`IPR2018-00199
`2211726-00152US1
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`Paper 33 Final Written Decision
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`Paper 34 Patent Owner’s Request for
`Rehearing
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`
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`1 Petitioner has explained that Exhibit 2005 “contains sample Unified Membership
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`Agreements and Subscription Forms that contain only confidential and sensitive
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`business, commercial, and financial information,” “invoices with sensitive financial
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`information and the identity of Unified members, Subscription Fee Schedules with
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`sensitive financial and commercial information,” and “non-public lists of Unified
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`members and contact information for individuals at those entities.” Paper 16 at 3.
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`2 Petitioner provided a redacted version of the Final Written Decision to the Board
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`via an email dated July 2, 2019.
`
`
`
`4
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`
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`As set forth in the Motions to Seal (Papers 16, 19, 35, 36, and 38), the
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`IPR2018-00199
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`confidential documents contain Petitioner’s confidential and highly sensitive
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`information, disclosure of which would adversely harm Petitioner. The information
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`reflected in the documents is confidential, sensitive commercial information,
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`including closely held
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`information, related
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`to Petitioner’s core business,
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`membership terms, and business strategy and constitutes highly confidential
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`business information, as well as trade secrets. Disclosure of Petitioner’s highly
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`confidential business information would provide Petitioner’s competitors and
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`would-be business rivals with a roadmap for replicating Petitioner’s unique,
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`valuable business model and would reveal contractual business information between
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`two parties produced voluntarily under a joint protective order. Were confidential
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`information produced voluntarily under a joint protective order to be disclosed
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`publicly, a producing party would have little incentive to engage in voluntary
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`discovery of confidential information in proceedings before the Board.
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`Additionally, redacted versions of these confidential documents have been
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`filed publicly in the present proceeding.3 These redacted versions “maintain the
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`essence” of non-confidential material contained within each of the papers and
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`3 As noted above, the only exception is Exhibit 2005, which should be sealed in the
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`entirety. See supra at 4, fn. 1.
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`
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`5
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`
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`documents and thus allow the public to “maintain[] a complete and understandable
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`IPR2018-00199
`2211726-00152US1
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`history” of the present proceeding. Atlanta Gas Light, Paper 97 at 2, 3.
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`Accordingly, the public interest would be served by maintaining the confidentiality
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`of this information.
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`As to the Final Written Decision (Paper 33, redacted version submitted to the
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`Board via an email dated July 2, 2019), redactions of confidential information are
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`minimal and do not inhibit the public’s ability to completely understand the file
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`history of this proceeding. Thus, the redacted version of the Final Written Decision
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`(Paper 33) “strik[es] an appropriate balance between the public policy for an open
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`record and the legitimate need to protect confidential information from disclosure.”
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`Atlanta Gas Light, Paper 97 at 4 (citing RPX Corp. v. VirnetX Inc., IPR2014-00171,
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`Paper 62 at 4–5) (P.T.A.B. Sept. 9, 2014)). The redactions in the Final Written
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`Decision address real-party-in-interest issues and do not bear on the unpatentability
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`of the claims. Indeed, the Board has previously relied on sealed confidential
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`information in a final written decision without publicly disclosing that confidential
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`information. See, e.g., Petrol. Geo-Services Inc. v. WesternGeco LLC, IPR2014-
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`01477, Paper 71 at 62-68 (P.T.A.B. Jul. 11, 2016) (final written decision redacting
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`confidential information and finding no privity between Petitioner and third-party
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`defendant in litigation).
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`
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`6
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`Accordingly, good cause exists to expunge the confidential papers and
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`IPR2018-00199
`2211726-00152US1
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`documents, as well as the confidential version of the Final Written Decision (Paper
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`74).
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`IV. Conclusion
`For the above reasons, Petitioner respectfully requests that the Board protect
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`Petitioner’s highly confidential business information and expunge the confidential
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`documents pursuant to 37 C.F.R. § 42.56.
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`V. Request for Conference Call with the Board
`Should the Board not be inclined to grant the present Motion to Expunge,
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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.
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`
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`By: /Daniel V. Williams/
`
`
`David L. Cavanaugh
`Registration No. 36,476
`
`Roshan Mansinghani,
`Registration No. 62,429
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`Jonathan Stroud
`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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`7
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`Ellyar Y. Barazesh,
`Registration No. 74,096
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`IPR2018-00199
`2211726-00152US1
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`8
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`IPR2018-00199
`2211726-00152US1
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`CERTIFICATE OF SERVICE
`I hereby certify that on July 15, 2019, I caused a true and correct copy of:
`• the foregoing Motion to Expunge Confidential Information
`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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