Trials@uspto.gov
`571-272-7822
`
` Paper 15
`Date: September 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`FIRSTFACE CO., LTD.,
`Patent Owner.
`
`IPR2019-00611
`Patent 8,831,557 B2
`
`
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`
`
`
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Expunge
`37 C.F.R. § 42.56
`
`Apple Inc. (“Apple”), Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc. (collectively, “Petitioner”) filed a Petition
`(Paper 3) requesting inter partes review of claims 1, 8, 9, and 15 of
`U.S. Patent No. 8,831,557 B2 (Ex. 1001). Petitioner also filed both public
`(redacted) and sealed (unredacted) versions of Exhibits 1004 and 1031 along
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`IPR2019-00611
`Patent 8,831,557 B2
`with a Motion to Seal as to the redacted portions, which we granted. See
`Papers 7, 10. We subsequently denied institution of inter partes review, and
`did not refer to any of the sealed material in the Decision. See Paper 11, 2
`n.1. Petitioner later filed a Motion to Expunge (Paper 14, “Mot.”) the
`unredacted versions of Exhibits 1004 and 1031 from the record. Petitioner
`argues that “[t]hese documents include confidential and commercially
`sensitive business information of Apple,” “[t]he Board’s decision denying
`institution in this proceeding does not cite or discuss Exhibits 1004 or
`1031,” and “the record already contains publicly-available versions of
`Exhibits 1004 and 1031 that have not been excessively redacted.” Mot. 1.
`Petitioner states that Patent Owner does not oppose the Motion. Id. at 3–4.
`“After denial of a petition to institute a trial or after final judgment in
`a trial, a party may file a motion to expunge confidential information from
`the record.” 37 C.F.R. § 42.56. “The moving party has the burden of proof
`to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20.
`The Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019), 21–22, available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated, provides:
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`is an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
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`IPR2019-00611
`Patent 8,831,557 B2
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`We are persuaded that expunging the unredacted versions of Exhibits
`1004 and 1031 is appropriate under the circumstances. We previously found
`that the redacted portions constituted confidential information of Apple and
`were narrowly tailored to only confidential information. See Paper 10, 5.
`Further, we did not cite or rely on anything in the documents in rendering
`our Decision denying institution of inter partes review. Accordingly, the
`record of the proceeding and Decision remain understandable in the absence
`of the redacted materials.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Expunge (Paper 14) is
`granted; and
`FURTHER ORDERED that the unredacted versions of Exhibits 1004
`and 1031 filed under seal are expunged from the record of this proceeding.
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`IPR2019-00611
`Patent 8,831,557 B2
`For PETITIONER:
`
`Gabrielle E. Higgins
`Scott A. McKeown
`Christopher M. Bonny
`Victor Cheung
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`scott.mckeown@ropesgray.com
`christopher.bonny@ropesgray.com
`victor.cheung@ropesgray.com
`
`
`For PATENT OWNER:
`
`Barry J. Bumgardner
`Matthew C. Juren
`Thomas C. Cecil
`NELSON BUMGARDNER ALBRITTON P.C.
`barry@nelbum.com
`matthew@nelbum.com
`tom@nelbum.com
`
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