`U.S. Patent No. 9,633,373
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-006131
`
`U.S. Patent No. 9,633,373
`
`____________
`
`PETITIONER APPLE’S UNOPPOSED MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION UNDER SEAL
`
`
`1 Case IPR2019-01011 has been consolidated with this proceeding. Unless
`
`otherwise indicated, all citations to a “Paper” are to IPR2019-00613.
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`Pursuant to 37 C.F.R. § 42.56 and authorization received from the Board in
`
`its September 15, 2020 Order (Paper 28; IPR2019-01011, Paper 11), Petitioner
`
`Apple Inc. (“Apple”) hereby moves for an order expunging protected documents
`
`filed under seal in IPR2019-00613 and IPR2019-01011, 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 these consolidated proceedings 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 expunge the
`
`confidential information currently under seal.2
`
`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
`
`any information becomes irreversibly public.
`
`
`2 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
`
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`I. BACKGROUND
`
`Exhibits 1004 and 1031 were filed January 23, 2019 in IPR2019-00613 and
`
`April 24, 2019 in IPR2019-01011 in publicly-available versions (redacted) and
`
`versions under seal (not-redacted; for “Board Only” viewing). Apple filed motions
`
`to seal (Paper 6; IPR2019-01011, Paper 6) 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
`
`motions to seal (Paper 9; IPR2019-01011, Paper 8), finding good cause exists for
`
`sealing the confidential information. On October 28, 2019, the Board ordered that
`
`IPR2019-00613 and IPR2019-01011 are consolidated, and that all further filings
`
`shall be made in IPR2019-00613. Paper 14 at 23; IPR2019-01011, Paper 9 at 23.
`
`On July 31, 2020, the Board issued a Final Written Decision (Paper 27; IPR2019-
`
`01011, Paper 10), which does not cite or discuss Exhibits 1004 or 1031.
`
`On September 15, 2020, the Board ordered that the record of IPR2019-00613
`
`and IPR2019-01011 will be maintained undisturbed until 14 days after the
`
`conclusion of any appeal taken from the Final Written Decision. Paper 28; IPR2019-
`
`01011, Paper 11. 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.
`
`Apple filed a notice of appeal (Paper 29) on September 29, 2020. The Federal
`2
`
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`Circuit heard the appeal (Case 21-1001) 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
`
`and 1031 in IPR2019-00613 and IPR2019-01011 be expunged from the record.
`
`“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
`
`(“Practice Guide”) at 22; 37 CFR § 42.56. “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.” Id. Conversely, where a decision does not rely (or only
`
`minimally relies) on the confidential information, the Board has granted motions to
`
`expunge, finding that there is limited public interest in the confidential information
`
`and the record is minimally affected. See, e.g., Apple, IPR2019-00611, Paper 15
`
`(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
`
`encourages parties to redact sensitive information, where possible, rather than
`3
`
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`seeking to seal entire documents.” Practice Guide at 22.
`
`In these proceedings, the Board previously found that good cause exists to
`
`seal the versions of Exhibits 1004 and 1031 filed as “Board Only” in view of the
`
`confidential nature of the information contained in the exhibits. Paper 9 at 5;
`
`IPR2019-01011, Paper 8 at 5. The Board’s subsequent Final Written Decision does
`
`not refer to Apple’s confidential information, and indeed does not refer to any
`
`version of Exhibits 1004 and 1031 (including the publicly-available redacted
`
`versions). Similarly, Exhibits 1004 and 1031 were not cited by the parties or the
`
`Federal Circuit on appeal, and were not included in the Joint Appendix. In addition,
`
`the record in these IPR proceedings contains publicly-available versions of Exhibits
`
`1004 and 1031 that have not been excessively redacted. Paper 9 at 5 (“We also note
`
`that the redacted portions of the materials appear to be tailored narrowly to only
`
`confidential information.”); see also IPR2019-01011, Paper 8 at 5. Accordingly, the
`
`public’s interest in having access to Apple’s confidential 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).
`
`Apple respectfully submits that good cause exists here and thus requests that
`
`the Board expunge the under seal “Board Only” versions of Exhibits 1004 and 1031
`
`in IPR2019-00613 and IPR2019-01011 due to the confidential and commercially
`
`sensitive nature of the information in those documents. Apple has conferred with
`4
`
`
`
`
`Patent Owner FirstFace Co., Ltd., who has indicated that it does not oppose this
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`Motion.
`
`III. CONCLUSION
`
`For the reasons set forth above, Petitioner Apple respectfully requests that its
`
`Unopposed Motion to Expunge Confidential Information Under Seal be granted.
`
`
`
`Dated: November 3, 2021
`
`
`
`
`
`
`By: /Christopher M. Bonny/
`Christopher M. Bonny
`Reg. No. 63,307
`ROPES & GRAY LLP
`
`Counsel for Petitioner APPLE INC.
`
`
`
`
`5
`
`
`
`
`IPR2019-00613
`U.S. Patent No. 9,633,373
`
`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
`
`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
`
`
`
`