Trials@uspto.gov
`571-272-7822
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`Paper No. 18
`Date: April 16, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
` IPR2020-00037 (Patent No. 8,457,228 B2)1
`____________
`
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`DECISION
`Terminating Due to Settlement Prior to Institution and
`Granting Petitioner’s Motion to Expunge
`37 C.F.R. §§ 42.74, 42.56
`
`
`1 This Decision addresses issues that are the same in all identified
`proceedings. We exercise our discretion to issue one Decision to be filed in
`each proceeding. The parties, however, are not authorized to use this style
`heading in subsequent papers.
`
`
`
`

`

`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as “the Parties”)
`have requested that the above-identified inter partes review proceedings be
`terminated pursuant to a settlement. On March 23, 2020, we authorized the
`Parties to file joint motions to terminate the above-identified proceedings.
`On March 30, 2020, the Parties filed Joint Motions to Terminate the above-
`identified proceedings. Paper 15 (“Joint Motions”), 1.2 Along with the Joint
`Motions, the Parties filed a Settlement and a License Agreement. Paper 16
`(“Settlement Agreement”).3, 4 The Parties request that the Settlement
`Agreement be treated as Business Confidential Information pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 15, 1.
`Petitioner also filed a Motion to Seal (Paper 4, “Mot. Seal”)
`Exhibit 1033 and a version of the Petition containing confidential
`information (Paper 3) on November 5, 2019. The Parties filed a Joint
`Stipulation Requesting Entry of Default Protective Order on December 27,
`2019. Paper 9. With the Joint Motions, Petitioner also filed an unopposed
`Motion to Expunge Information Under Seal, in which it moves us to
`expunge Exhibit 1033 and the confidential version of the Petition. Paper 17
`
`2 Most citations are to IPR2020-00033 with the understanding that the other
`proceedings include papers having substantially the same substantive
`content.
`3 The Parties filed the Settlement Agreement as a paper. We deem this to be
`harmless error, however, the Parties are reminded that evidence must be
`filed as an exhibit. See 37 C.F.R. § 42.63(a) (“Evidence consists of
`affidavits, transcripts of depositions, documents, and things. All evidence
`must be filed in the form of an exhibit.”).
`4 The Settlement Agreement is: Paper 16 in IPR2020-00034; Paper 17 in
`IPR2020-00036; and Paper 18 in IPR2020-00037.
`
`2
`
`

`

`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`(“Mot. Expunge”); see fn.2. In the IPR2020-00036 and IPR2020-00037
`proceedings, we granted Petitioner’s Motion to Seal and Request for Entry
`of Default Protective Order. IPR2020-00036, Paper 10; IPR2020-00037,
`Paper 10.
`
`II. DISCUSSION
`A. Motions to Terminate
`In the Joint Motions, the Parties represent that they have reached an
`agreement to terminate the above-identified inter partes review proceedings,
`and that the filed copy of the Settlement Agreement is a true and complete
`copy. Paper 15, 1–2. The Parties further represent that their Settlement
`Agreement resolves all currently pending matters before the U.S. Patent and
`Trademark Office and District Court proceedings between the Parties
`involving the involving the above-identified patents at issue. Id at 2.
`The above-identified proceedings are at an early stage, and we have
`not yet decided whether to institute trials in the proceedings. In view of the
`early stage of the proceedings and the settlement between the Parties, we
`determine that good cause exists to dismiss the petitions and terminate the
`proceedings with respect to the Parties.
`The Parties also request that the Settlement Agreement be treated as
`business confidential information and be kept separate from the files of the
`patents involved in these inter partes proceedings. Paper 15, 1. After
`reviewing the Settlement Agreement between Petitioner and Patent Owner,
`we find that the Settlement Agreement contains confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat the Settlement Agreement between Petitioner and Patent
`
`3
`
`

`

`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`Owner as business confidential information pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c).
`B. Motions to Seal
`“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.” Trial Practice Guide, 77 Fed. Reg. at 48,761;
`see 37 C.F.R. § 42.56. The moving party has the burden to establish that it
`is entitled to the requested relief. 37 C.F.R. § 42.20(c). “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.” See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,761 (Aug. 14, 2012). This is because “[t]here 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.
`Petitioner takes the position that good cause is met to expunge the
`requested documents because “the public’s interest in having access to such
`information is very minimal.” Mot. Expunge 3. Petitioner supports its
`position by arguing “there has been no decision on institution, thus, the
`confidential information has not been discussed in a Board decision.” Id.
`Petitioner further argues that “Patent Owner has not referenced Exhibit 1033
`or the limited portion of [the] Petition discussing the contents of Exhibit
`1033 in any of Patent Owner’s submissions.” Id.
`Exhibit 1033 comprises letters between Petitioner and a third party.
`According to Petitioner, these letters, as well as the portion of the Petition
`
`4
`
`

`

`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`that discusses Exhibit 1033, disclose “information about the third party’s
`procedures for interacting with Apple.” Mot. Seal 1–2. Petitioner asserts
`there is good cause to seal Exhibit 1033 and the portion of the Petition that
`discusses Exhibit 1033, because “[p]ublic disclosure of this information
`would cause commercial harm to Apple and the third party by revealing
`competitive information, and potentially affect the business relationship
`between those companies, as well as between each company and other
`companies with which they transact business.” Id. at 2.
`In both the IPR2020-00036 and IPR2020-00037 proceedings, we were
`persuaded that there was confidential information in the respective exhibits
`and petitions5 and that there was good cause for sealing these documents.
`IPR2020-00036, Paper 10, 3; IPR2020-00037, Paper 10, 3; see 35 U.S.C.
`§ 316(a)(7) (“providing for protective orders governing the exchange and
`submission of confidential information”); see 37 C.F.R. § 42.2 (defining
`confidential information as “trade secret or other confidential research,
`development, or commercial information”). We reach a similar conclusion
`regarding confidential information in the respective exhibits and petitions4 of
`the IPR2020-00033 and IPR2020-00034 for substantially the same reasons.
`See fn.4.
`
`As Petitioner correctly noted, we have granted a motion to expunge a
`document containing confidential information in the case where a final
`decision did not rely on the document. Mot. Expunge 2; see Unverferth
`
`5 In IPR2020-00033 and IPR2020-00036, the documents containing
`confidential information are Exhibit 1033 and Paper 3. In IPR2020-00034
`and IPR2020-00037, the documents containing confidential information are
`Exhibit 1133 and Paper 3.
`
`5
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`

`

`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`Mfg. Co. v. J&M Mfg. Co., IPR2014-00758, Paper 29, 2 (PTAB Sept. 30,
`2015) (granting Patent Owner’s motion to expunge Exhibit 1017 because the
`final decision “did not rely upon Exhibit 1017,” and “[t]he file and decision
`remain understandable in the absence of Exhibit 1017”). Here, no institution
`decision has issued and hence, no decision relied on the documents
`containing confidential information. We determine that the record would
`not be less understandable if the requested documents were expunged. We
`are thus persuaded that “the public’s interest in having access to such
`information is very minimal,” as Petitioner argues, and is outweighed by the
`potential for commercial harm to Petitioner and the third party if the
`confidential information was publicly disclosed. See Mot. Expunge 2–3. As
`such, we grant Petitioner’s Motion to Expunge.
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motions to Terminate are granted, the
`petitions in IPR2020-00033, IPR2020-00034, IPR2020-00036, and
`IPR2020-00037 are dismissed, and the proceedings are terminated;
`
`FURTHER ORDERED that the Parties’ request to Treat the
`Settlement Agreement as Business Confidential Information is granted, and
`Paper 16 in IPR2020-00033;
`Paper 16 in IPR2020-00034;
`Paper 17 in IPR2020-00036; and
`Paper 18 in IPR2020-00037
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`6
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`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`shall be kept separate from the files of Patent No. 8,023,580 B2 and Patent
`No. 8,457,228 B2 and made available only to Federal Government agencies
`on written request, or to any person on a showing of good cause, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`
`FURTHER ORDERED that Petitioner’s Motions to Expunge
`Information Under Seal are granted and all copies of the following are
`expunged from the record:
`Exhibit 1033 and Paper 3 in IPR2020-00033;
`Exhibit 1133 and Paper 3 in IPR2020-00034;
`Exhibit 1033 and Paper 3 in IPR2020-00036; and
`Exhibit 1133 and Paper 3 in IPR2020-00037.
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`7
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`

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`IPR2020-00033 (Patent No. 8,023,580 B2)
`IPR2020-00034 (Patent No. 8,023,580 B2)
`IPR2020-00036 (Patent No. 8,457,228 B2)
`IPR2020-00037 (Patent No. 8,457,228 B2)
`
`For PETITIONER:
`Mark Rowland
`Gabrielle Higgins
`ROPES & GRAY LLP
`mark.rowland@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason Shapiro
`Mark DeBoy
`EDELL, SHAPIRO, AND FINNAN, LLC
`js@usiplaw.com
`mjd@usiplaw.com
`
`Nancy Linck
`nlinck@rfem.com
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`8
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