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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`IPR2018-00199
`Patent 7,092,671
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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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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`IPR2018-00199
`Patent 7,092,671
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S MOTION TO SEAL
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`IPR2018-00199
`Patent 7,092,671
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`Introduction
`The competitively sensitive information voluntarily produced by Petitioner
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`I.
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`(“Unified”) should be sealed. After accepting discovery under the Default Protective
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`Order, Patent Owner (“Uniloc”) attempts to publicly disclose the confidential details
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`of Unified’s closely guarded business model and private member identity. Good
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`cause exists to seal the entirety of Ex. 2005, which contains Unified’s Member
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`Agreements and related documents, and the unredacted Patent Owner Response
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`(“POR”). Unified has not “waived” confidentiality by providing appropriately
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`designated documents to Uniloc’s counsel. The Motion to Seal should be granted.
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`II. Argument
`A. There is Good Cause to Seal Exhibit 2005 in its Entirety
`Good cause exists to seal Ex. 2005 in its entirety. Paper 16, 4-10. Uniloc
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`incorrectly argues that Ex. 2005 should not be sealed because Unified does not allege
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`or show that the entirety of the exhibit is confidential. Paper 17, 3. Unified
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`voluntarily produced the documents in Ex. 2005 as separate documents, each marked
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`as confidential, under the terms of the Default Protective Order. Ex. 1019. Despite
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`citing to only a small subset of Unified’s individually produced documents, Uniloc
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`compiled the separate documents and filed Unified’s entire production as a single
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`exhibit, Ex. 2005. Uniloc relies on Ex. 2005 only for limited purposes in its POR,
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`and, as evidenced by the redactions in its POR, Uniloc recognizes the confidentiality
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`1
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`of the material it quotes or describes from Ex. 2005. Paper 13, 4-5, 10-12, 19.
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`IPR2018-00199
`Patent 7,092,671
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`Uniloc incorrectly alleges that Unified’s arguments regarding confidentiality
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`“focus almost exclusively” on protecting the identity of Unified’s members, some
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`of which “appeared to be publicly-known,” and that Unified’s business model is well
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`known.1 Paper 17, 3. Although some of Unified’s members are publicly known, the
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`membership, or lack thereof, of those entities put at issue by Uniloc in this IPR is
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`not public information. In fact, Unified is contractually obligated to many of its
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`private members to maintain the confidentiality of their identities. Paper 16, 7.
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`Uniloc points to Square Enix, a public Unified member, as an example of alleged
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`nonconfidential information in documents sought to be sealed in an unrelated
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`proceeding (IPR2017-02148). Paper 17, 3. Uniloc, however, points to no specific
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`information in Ex. 2005 of this IPR that it alleges to not be confidential.
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`Unified’s motion demonstrates that the information in Ex. 2005 reflects the
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`details of Unified’s closely guarded business strategies and trade secrets. Paper 16,
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`5-7. Uniloc’s argument that they are mere “contract terms” ignores their substance.
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`Paper 17, 4. Among others, Ex. 2005 contains agreements with confidentiality
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`provisions reflecting Unified’s and its members’ intentions and duties to keep the
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`terms of the contract confidential. Paper 16, 7. Unified has shown good cause.
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`1 Uniloc’s assertions are attorney argument void of any supporting evidence.
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`2
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`B.
`There is Good Cause to Seal the Unredacted POR
`The POR contains quotations and/or descriptions of Unified’s confidential
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`IPR2018-00199
`Patent 7,092,671
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`information provided under the Protective Order. The material Unified seeks to
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`maintain under seal relates directly to the details of the confidential information
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`contained in Ex. 2005. For at least the same reasons described above for Ex. 2005,
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`good cause exists for sealing the unredacted POR.
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`C. The Balance is Heavily Weighted in Favor of Protecting Unified’s
`Highly Confidential Business Information
`Uniloc argues that because Unified’s confidential information relates to
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`certification of RPI, the public interest requires public disclosure. Paper 17, 8-9.
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`This ignores the balancing required by Garmin and Argentum, which favor
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`protecting confidential business information. Without an assurance that its
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`confidential information would be protected, Unified would have had little reason to
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`participate in voluntary discovery in this proceeding.
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`Ex. 2005 contains the same type of information that the Board sealed in
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`Garmin, such as Unified’s bank account and routing numbers. Ex. 2005, UP-
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`000007. The Board has repeatedly found that equivalent or substantially similar
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`information produced by Unified (e.g., members, membership terms, business
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`strategy, and finances) should be sealed in other proceedings. Paper 16, 5-6. If
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`Unified’s confidential information is relied upon in determining RPI, the Board has
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`3
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`IPR2018-00199
`Patent 7,092,671
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`demonstrated in numerous proceedings that it can adequately disclose the basis for
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`its decision while maintaining confidential information under seal. Paper 16, 8-9.
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`Disclosure of the confidential information in Ex. 2005 to competitors would
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`harm Unified’s business. Id. at 7. This would disincentivize free exchange of
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`information and chill voluntary disclosure in Office proceedings. Thus, the public
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`interest is well-served by sealing Unified’s confidential information.
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`D. Unified Did Not Waive Confidentiality in this Proceeding
`Uniloc’s extreme position that waiver resulted from Unified providing its
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`documents to Uniloc’s counsel (including Mr. Richins), not all of which had signed
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`the Acknowledgement of the Protective Order, is incorrect. Paper 17, 4-6.
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`Uniloc acknowledges that it is represented by Mr. Richins, yet alleges that he
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`is not “an employee or consultant for” Uniloc in this IPR but “an attorney who
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`represents Uniloc in other matters but who is not … of record in this matter.” Paper
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`17, 6. Contrary to its assertion, Uniloc repeatedly included Mr. Richins in email
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`correspondence between the parties, including negotiation of the terms of voluntary
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`discovery. Paper 16, 11. Following notice of Uniloc’s waiver allegation, Unified
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`removed Mr. Richins from further correspondence between the parties; however,
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`Uniloc re-copied Mr. Richins on subsequent correspondence between the parties and
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`indicated that he is “counsel” that should have been included in communications
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`relating to this proceeding. Ex. 1020. Further, upon receiving Uniloc’s delayed and
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`4
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`IPR2018-00199
`Patent 7,092,671
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`indirect notice regarding the alleged waiver, Unified promptly took reasonable steps
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`to correct the alleged inadvertent disclosure. Paper 16, 12-13. Uniloc’s arguments
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`regarding lack of an express “claw-back” provision in the Protective Order fail to
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`overcome the Board’s decisions and the Office’s rules regarding notice and
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`correction of, and lack of waiver due to, inadvertent disclosure. Paper 16, 12-13.
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`The Board’s Default Protective Order governs this proceeding. Paper 16, 10
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`and TPG, 77 Fed. Reg. 48,769 (absent an agreement on a stipulated protective order,
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`the default protective order will be automatically entered). Unified relied on
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`Uniloc’s representations, including the Acknowledgement signed by Uniloc’s
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`counsel, that it agreed to the Default Protective Order and at all times designated the
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`relevant documents as confidential under the Protective Order. Paper 16, 10. Uniloc
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`argues that the Acknowledgement is not part of a protective order signed by the
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`parties and the parties have no protective order in place. Paper 17, 5. Uniloc’s
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`attempt to undermine Unified’s good-faith effort of voluntarily providing
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`confidential information under the Protective Order by having its counsel sign the
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`Acknowledgement and then turn around and deny that a Protective Order applies is
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`unavailing. The Board has rejected similar attempts in the past to skirt Protective
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`Order obligations, and should do the same here. Paper 16, 11.
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`Unified Patents Inc.
`By:/ David L. Cavanaugh /
`David L. Cavanaugh, Registration No. 36,476
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`5
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`
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`Exhibit
`1001
`1002
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`1003
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`1004
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`1005
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`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
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`1017
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`1018
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`1019
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`1020
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`IPR2018-00199
`Patent 7,092,671
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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)
`Default Protective Order with Standard Acknowledgement
`signed by Patent Owner’s counsel
`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
`Email from Uniloc copying Mr. Richins as counsel in the
`proceeding
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`CERTIFICATE OF SERVICE
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`IPR2018-00199
`Patent 7,092,671
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`I hereby certify that on December 7, 2018, I caused a true and correct copy
`of each of the following to be served via electronic mail to the attorneys of record
`at the following email addresses:
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` Petitioner’s Reply to Patent Owner’s Response to Petitioner’s
`Motion to Seal
` Exhibit 1020
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`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`Sean D. Burdick
`Uniloc USA, Inc.
`7160 Dallas Parkway, Ste. 380
`Plano, TX 75024
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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
`Respectfully submitted,
`
`/Christopher M. Cherry/
`Christopher M. Cherry, Reg. No. 65,356
`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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