IPR2019-00612
`U.S. Patent No. 8,831,557
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`and
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`Petitioners,
`
`v.
`
`FIRSTFACE CO., LTD,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-00612
`
`U.S. Patent No. 8,831,557
`
`____________
`
`PETITIONER APPLE’S UNOPPOSED MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION UNDER SEAL
`
`
`U.S. Patent No. 8,831,557
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`and
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`Petitioners,
`
`v.
`
`FIRSTFACE CO., LTD,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-00612
`
`U.S. Patent No. 8,831,557
`
`____________
`
`PETITIONER APPLE’S UNOPPOSED MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION UNDER SEAL
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`Pursuant to 37 C.F.R. § 42.56 and authorization received from the Board in
`
`its September 15, 2020 Order (Paper 27), Petitioner Apple Inc. (“Apple”) hereby
`
`moves for an order expunging protected documents filed under seal in IPR2019-
`
`00612, namely the under seal “Board Only” versions of the Declaration of Michael
`
`Hulse (Ex. 1004) and the Declaration of Yosh Moriarty (Ex. 1031). These
`
`documents include confidential and commercially sensitive business information of
`
`Apple. The Board’s Final Written Decision 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. In
`
`addition, Exhibits 1004 and 1031 were not cited by the parties or the Federal Circuit
`
`on appeal, and the appeal has now concluded. Accordingly, Apple hereby moves to
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`expunge the confidential information currently under seal.1
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`If the Board is not inclined to grant this Motion, Apple respectfully requests
`
`a conference call with the Board to discuss the issues raised in this Motion before
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`any information becomes irreversibly public.
`
`
`
`
`1 The Board previously granted Apple’s motion to expunge the same exhibits in a
`
`related IPR proceeding. Apple Inc. v. FirstFace Co., Ltd., IPR2019-00611, Paper
`
`15 (Sept. 24, 2020).
`
`1
`
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`I. BACKGROUND
`
`Exhibits 1004 and 1031 were filed January 23, 2019 in publicly-available
`
`versions (redacted) and versions under seal (not-redacted; for “Board Only”
`
`viewing). Apple filed a motion to seal (Paper 7) the confidential “Board Only”
`
`versions of Exhibits 1004 and 1031 because these exhibits contain confidential and
`
`commercially sensitive business information of Apple. The Board granted Apple’s
`
`motion to seal (Paper 10), finding good cause exists for sealing the confidential
`
`information. On July 31, 2020, the Board issued a Final Written Decision (Paper
`
`26), which does not cite or discuss Exhibits 1004 or 1031.
`
`On September 15, 2020, the Board ordered that the record of IPR2019-00612
`
`will be maintained undisturbed until 14 days after the conclusion of any appeal taken
`
`from the Final Written Decision. Paper 27 at 2. The Board further ordered that, at
`
`the conclusion of any appeal proceeding, Petitioner may file a motion to expunge
`
`the sealed materials from the record pursuant to 37 C.F.R. § 42.56. Id.
`
`Patent Owner FirstFace Co., Ltd. (“FirstFace”) filed a notice of appeal (Paper
`
`28) on September 29, 2020. The Federal Circuit heard the appeal (Case 20-2347)
`
`and issued an opinion and judgment on September 13, 2021 affirming the Board’s
`
`decision. The Federal Circuit issued its formal mandate on October 20, 2021.
`
`II. CONFIDENTIAL DOCUMENTS SHOULD BE EXPUNGED
`
`Apple requests that the under seal “Board Only” versions of Exhibits 1004
`2
`
`
`
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`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`and 1031 in IPR2019-00612 be expunged from the record.
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`“A party seeking to maintain the confidentiality of information … may file a
`
`motion to expunge the information from the record prior to the information
`
`becoming public.” PTAB Consolidated Trial Practice Guide, November 2019
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`(“Practice Guide”) at 22; 37 CFR § 42.56. “There is an expectation that information
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`will be made public where the existence of the information is referred to in a decision
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`to grant or deny a request to institute a review or is identified in a final written
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`decision following a trial.” Id. Conversely, where a decision does not rely (or only
`
`minimally relies) on the confidential information, the Board has granted motions to
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`expunge, finding that there is limited public interest in the confidential information
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`and the record is minimally affected. See, e.g., Apple, IPR2019-00611, Paper 15
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`(granting motion to expunge because the Board did not cite or rely on anything in
`
`the documents in rendering its decision and “the record of the proceeding and
`
`Decision remain understandable in the absence of redacted materials”). “The rule
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`encourages parties to redact sensitive information, where possible, rather than
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`seeking to seal entire documents.” Practice Guide at 22.
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`In this proceeding, the Board previously found that good cause exists to seal
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`the versions of Exhibits 1004 and 1031 filed as “Board Only” in view of the
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`confidential nature of the information contained in the exhibits. Paper 10 at 5. The
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`Board’s subsequent Final Written Decision does not refer to Apple’s confidential
`3
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`
`
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`IPR2019-00612
`U.S. Patent No. 8,831,557
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`information, and indeed does not refer to any version of Exhibits 1004 and 1031
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`(including the publicly-available redacted versions). Similarly, Exhibits 1004 and
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`1031 were not cited by the parties or the Federal Circuit on appeal, and were not
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`included in the Joint Appendix. In addition, the record in this IPR proceeding
`
`contains publicly-available versions of Exhibits 1004 and 1031 that have not been
`
`excessively redacted. Paper 10 at 5 (“We also note that the redacted portions of the
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`materials appear to be tailored narrowly to only confidential information.”).
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`Accordingly, the public’s interest in having access to Apple’s confidential
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`information is very minimal, and such information should be expunged for good
`
`cause. Apple, IPR2019-00611, Paper 15 (granting motion to expunge the same
`
`exhibits).
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`Apple respectfully submits that good cause exists here and thus requests that
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`the Board expunge the under seal “Board Only” versions of Exhibits 1004 and 1031
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`in IPR2019-00612 due to the confidential and commercially sensitive nature of the
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`information in those documents. Apple has conferred with Petitioners Samsung
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`Electronics Co., Ltd., and Samsung Electronics America, Inc. and Patent Owner
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`FirstFace, who have indicated that they do not oppose this Motion.
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`III. CONCLUSION
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`For the reasons set forth above, Petitioner Apple respectfully requests that its
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`Unopposed Motion to Expunge Confidential Information Under Seal be granted.
`4
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`
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`
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`Dated: November 3, 2021
`
`
`
`
`
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`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`By: /Christopher M. Bonny/
`Christopher M. Bonny
`Reg. No. 63,307
`ROPES & GRAY LLP
`
`Counsel for Petitioners APPLE INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC
`
`
`
`
`5
`
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER
`
`APPLE’S UNOPPOSED MOTION TO EXPUNGE CONFIDENTIAL
`
`INFORMATION UNDER SEAL was served in its entirety by causing the
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`aforementioned document to be electronically mailed, pursuant to the parties’
`
`agreement to the following attorneys of record for the Patent Owner listed below:
`
`Barry J. Bumgardner
`barry@nbafirm.com
`Matthew C. Juren
`matthew@nbafirm.com
`Thomas C. Cecil
`tom@nbafirm.com
`
`NELSON BUMGARDNER ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3494
`
`Counsel for Patent Owner FIRSTFACE CO., LTD.
`
`
`
`
`
`
`
`Dated: November 3, 2021
`
`
`ROPES & GRAY LLP
`
`By: /Dara Del Rosario/
`Name: Dara Del Rosario
`
`
`
`
`
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