IPR2018-00199
`U.S. Patent 7,092,671
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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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`UNIFIED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2017-00199
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO
`PETITIONER’S MOTION TO SEAL
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`1
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`U.S. Patent 7,092,671
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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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`UNIFIED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2017-00199
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO
`PETITIONER’S MOTION TO SEAL
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`
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`1
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Petitioner’s November 16, 2018 motion to seal (Paper 16), seeking to seal the
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`entirety of Exhibit 2005 and the unredacted Patent Owner Response, should be
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`denied because Petitioner does not show good cause for sealing the entirety of
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`Exhibit 2005, does not show good cause for sealing the redacted portions of the
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`Patent Owner Response, and has waived the alleged confidentiality of the
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`information it seeks to seal.
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`There is a “strong public policy for making all information filed in a
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`quasi-judicial administrative proceeding open to the public . . .” See Garmin Int'l,
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`Inc. et al. Petitioner, IPR2012-00001 (JL), 2013 WL 8149381, at *1 (Apr. 5, 2013).
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`The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54.
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`The moving party has the burden of proof in showing entitlement to the requested
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`relief. 37 C.F.R. § 42.20(c). It must demonstrate to the Board “why the information
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`sought to be sealed constitutes confidential information.” Garmin Int’l, Inc.,
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`IPR2012-00001 (JL), 2013 WL 8149381, at *2 (emphasis added).
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`1. Petitioner does not show good cause to seal the entirety of Exhibit
`2005.
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`Petitioner’s motion should be denied because Petitioner does not allege, much
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`less show, that the entirety of Exhibit 2005 is confidential. The Practice Guide
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`encourages parties to redact sensitive information rather than seeking to seal entire
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`documents. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48, 761 (Aug. 14,
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`2012) (“The rule encourages parties to redact sensitive information, where possible,
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`rather than seeking to seal entire documents.”). Consistent with this policy, the
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`2
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Board recently denied a motion to seal filed by the same Petitioner in another IPR
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`where (as here) Petitioner sought to seal entire exhibits even though it did not “assert
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`that any exhibit contained only confidential information.” See Unified Patents, Inc.
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`v. Uniloc Luxembourg, S.A., IPR2017-02148, Paper 34 (PTAB Sept. 7, 2018)
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`(requiring Petitioner to refile and either demonstrate why the entire contents of the
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`exhibits were confidential or submit redacted versions and show good cause why the
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`redactions were confidential).
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`Here, Petitioner claims
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`that “Unified Membership Agreements and
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`Subscription Forms” contain only confidential information (a dubious claim2) but
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`does not allege, much less show, that the other documents included in Exhibit 2005
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`contain only confidential information.
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`Petitioner’s argument concerning the alleged confidentiality of its information
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`focuses almost exclusively on Petitioner’s desire to maintain the confidentiality of
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`the identity of its members. The identity of Petitioner’s members is highly relevant
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`to the RPI analysis. Further, in IPR2017-2148, Paper 34, the Board already pointed
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`to the identity of a Unified Patent Member – Square Enix – as a specific example of
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`what appeared to be publicly-known nonconfidential information Unified Patent
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`sought to seal. Even assuming the identity of its members is confidential, Unified
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`Patent can redact the identity of its members without sealing the entire contents of
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`Exhibit 2005.
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` 2
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` In IPR2017-02148, Paper 34, the Board noted that similar documents appeared to
`contain non-confidential information, noting for example that it is public
`information that Square Enix is a member of Unified Patents.
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`3
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Aside from arguing that the identity of its members is confidential, Petitioner
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`only vaguely argues that the contract terms in its agreements are highly sensitive.
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`Petitioner’s business model is well known. It cannot be plausibly argued that every
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`word and every term within its member agreements is confidential. Even assuming
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`certain terms are confidential, Petitioner can redact those without sealing the entire
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`contents of Exhibit 2005.
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`2. Petitioner has not shown good cause to seal the redacted portions of
`the Patent Owner Response.
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`Petitioner also fails to show good cause to seal the redacted portions of the
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`Patent Owner Response. Petitioner alleges the Patent Owner Response “directly
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`quotes, references, and cites to confidential information” but does not show good
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`cause why the specific information referenced or quoted in the Patent Owner
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`Response is confidential.
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`3. Petitioner waived the alleged confidentiality of the information it seeks
`to seal.
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`Petitioner waived the alleged confidentiality of all Petitioner’s produced
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`documents on September 11, 2018 by twice voluntarily sending the entire production
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`(77 pages in total) not only to Brett Mangrum – who signed the acknowledgement
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`of the PTAB’s default protective order in that matter – but also to those who did not
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`sign an acknowledgment of the default protective order, including in-house counsel
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`for Uniloc and counsel who is not of record. EX2012. Petitioner made no attempt
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`to recall either of its waivers until two weeks later, on September 25, after Uniloc
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`identified the waiver in its Patent Owner Response filed on September 21.
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`There is no claw-back provision in the default protective order governing this
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`4
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`IPR2018-00199
`U.S. Patent 7,092,671
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`IPR. The Practice Guide comments note that a claw back provision was deliberately
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`omitted from the default protective order. See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,644 (Aug. 14, 2012) (“Practice Guide”) (Comment 164 and response,
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`noting the deliberate absence of a claw back provision in the default protective order
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`and stating that “should the parties desire more or less protection than that provided
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`by the default order, the parties are always free to stipulate to other protective order
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`terms”).
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`Petitioner misleadingly argues the “Parties” entered the Default Protective
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`Order filed by Petitioner as Exhibit 1017. Exhibit 1017 is not an agreement entered
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`by the parties and the signature. It is instead, two separate documents presented by
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`Petitioner as if they are one. At the end of a (paginated) copy of the Default
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`Protective Order, evidently taken from the Practice Guide, Petitioner attached a
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`“Standard Acknowledgment of Access to Protective Order Material” signed by Brett
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`Mangrum. The Standard Acknowledgment is not part of a protective order signed
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`by the parties (they entered none) and is not signed by Patent Owner. It is, on its
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`face, signed by Brett Mangrum in his individual capacity, in which he acknowledged
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`that he is “personally responsible for the requirements of the terms of the Default
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`Protective Order.” To Uniloc’s knowledge, Petitioner created the Default Protective
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`Order attached to its motion after Mr. Mangrum signed the acknowledgment.
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`Petitioner misconstrues the language of the Default Protective Order, arguing
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`Mr. Richins, “an attorney for Patent Owner,” was allowed access to the information.
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`The Default Protective Order specifically limits access to “[r]epresentatives of
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`record for a party in the proceeding.” Mr. Richins is not a representative of record
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`5
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`IPR2018-00199
`U.S. Patent 7,092,671
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`for a party in the proceedings and it is therefore misleading to describe him as “an
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`attorney for Patent Owner.” Recognizing this, Petitioner argues Mr. Richins is
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`allowed access to confidential information because the Default Protective Order
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`allows “[e]mployees, consultants, or other persons performing work for a party” to
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`access the information. But Mr. Richins is not an employee or consultant for Patent
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`Owner. He is an attorney who represents Uniloc in other matters but who is not an
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`attorney of record in this matter. To conclude he is allowed access to confidential
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`information under the Default Protective Order because he “performs work” as an
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`attorney for Uniloc renders meaningless the provision of the Default Protective
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`Order limiting access to “[r]epresentatives of record for a party in the proceeding.”
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`Such an interpretation would also open a wide gate to the number of people allowed
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`access to confidential information under the Default Protective Order.
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`Petitioner’s argument that every person who “performs work” for Uniloc is
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`allowed access to the alleged confidential information is also inconsistent with
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`Petitioner’s prior conduct. Because there was no agreed protective order, prior to
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`producing documents, Petitioner insisted that only individuals who signed the
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`Standard Acknowledgement of Access to Protective Order Material be allowed to
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`see the alleged confidential information. Mr. Mangrum signed the acknowledgement
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`and meticulously avoided disclosing Petitioner’s alleged confidential information to
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`anyone, including Mr. Richins.3
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` 3
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` Aside from one staff person reasonably necessary to assist Mr. Mangrum in this
`proceeding.
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`6
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Petitioner argues that if there was disclosure of confidential information, there
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`should still be no waiver because its disclosure was allegedly inadvertent and
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`“inadvertent disclosure of confidential information does not constitute waiver when
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`the holder of such information promptly takes reasonable steps to correct the
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`inadvertent disclosure.” But Petitioner did not promptly take reasonable steps to
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`correct its disclosure. It disclosed the allegedly confidential documents on
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`September 11 but did nothing until September 25 – two weeks after the disclosure
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`and four days after Uniloc notified Petitioner of the waiver. Further, as note above,
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`there is no claw-back provision in the Default Protective Oder.
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`4. There is public interest in having access to the information Petitioner
`seeks to conceal.
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`There is public interest in having access to the information Petitioner seeks to
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`conceal. In Garmin, the Board granted a motion to seal a named inventor’s driving
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`record, a cashier’s check remitted by a named inventor, a copy of a personal check,
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`and an unimportant business agreement between the named inventor and a
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`corporation regarding commercializing and patenting the disclosed invention. Id.
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`The board reasoned that these exhibits had nothing to do with the merits of the case
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`and disclosure of the bank account number, if revealed, could potentially “cause
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`harm effected via criminal means.” Id. It denied the motion to seal a communication
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`between a corporation and an attorney who performed an initial patentability search
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`and a formal patentability search report because these were material to the
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`patentability the patent at issue and because, despite clear attorney-client privilege,
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`the movant had waived confidentiality by filing the exhibits in support of its
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`7
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`IPR2018-00199
`U.S. Patent 7,092,671
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`contention that its claims were patentable over the cited prior art. Id.
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`Here, the information Petitioner seeks to conceal is relevant to whether
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`Petitioner has identified all real parties in interest. This information is not immaterial
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`or inconsequential. Petitioner has a statutory obligation to identify all real parties in
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`interest. This requirement serves the public interest by assisting “members of the
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`Board in identifying potential conflicts” and assures “proper application of the
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`statutory estoppel provisions.” Trial Practice Guide, 77 F.R. 48,759 (Aug. 14, 2012).
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`The latter reason “seeks to protect patent owners from harassment via successive
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`petitions by the same or related parties, to prevent parties from having a ‘second bite
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`at the apple,’ and to protect the integrity of both the USPTO and Federal Courts by
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`assuring that all issues are promptly raised and vetted.” Id.
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`Petitioner is an organization formed in 2012 for the overtly-advertised
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`purpose of filing and conducting patent challenges before the USPTO for the benefit
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`of its subscribing members. This questionable business model is intended to allow
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`members to benefit from inter partes review of patents without becoming the ‘real
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`parties-in-interest’ in the review. Hiding behind their proxy Unified, these fee-
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`paying clients can then seek to avoid the estoppel provisions of 35 U.S.C. § 315, in
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`contravention of the express intent of Congress.
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`In short, whether Petitioner has disclosed all real parties in interest is not
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`unimportant or a mere technicality. See Applications in Internet Time, LLC v. RPX
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`Corp., 897 F.3d 1336, 1339, 1358 (Fed. Cir. 2018) (vacating final written decisions
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`and remanding for further proceedings because they “applied an unduly restrictive
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`test for determining whether a person or entity is a ‘real party in interest’ within the
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`8
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`IPR2018-00199
`U.S. Patent 7,092,671
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`meaning of § 315(b) and failed to consider the entirety of the evidentiary record in
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`assessing whether § 315(b) barred institution of [the] IPRs.”). Rather, a petitioner’s
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`failure to name all real parties in interest is significant enough that it could warrant
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`denial of a petition. Id. It is of particular public interest here because Petitioner is a
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`serial filer of IPRs whose business model revolves around concealing real parties in
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`interest.
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`For at least the reasons set forth above, Uniloc respectfully requests that the
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`Board deny Petitioner’s motion to seal.
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`9
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`Date: November 30, 2018
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`Respectfully submitted,
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`IPR2018-00199
`U.S. Patent 7,092,671
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R.
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`§ 42.120 was served, along with any accompanying exhibits not previously served,
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`via the Patent Review Processing System (PRPS) and/or e-mail to Petitioner’s
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`counsel at the following addresses identified in the Petition’s consent to electronic
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`service:
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`David Cavanaugh David.cavanaugh@wilmerhale.com
`Roshan Mansinghani roshan@unifiedpatents.com
`Jonathan Stroud jonathan@unifiedpatents.com
`Michael Van Handel Michael.vanhandel@wilmerhale.com
`Ellyar Barazesh ellyar.barazesh@wilmerhale.com
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`10
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