`
`
`Filed: March 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`LG ELECTRONICS, INC.,
`
`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-00319
`U.S. Patent No. 7,039,435
`___________________
`
`
`PATENT OWNER’S MOTION TO SEAL
`UNDER 37 C.F.R. § 42.54
`
`
`
`I.
`
` INTRODUCTION
`Pursuant to 37 CFR § 42.54, Patent Owner, Bell Northern Research, LLC,
`
`respectfully submits this Motion to Seal Exhibit 2016 and a portion Patent Owner’s
`
`Preliminary Response that refers to the contents of that exhibit. Patent Owner
`
`submits that good cause exists for placing this exhibit and the corresponding
`
`portion of the Response under seal.
`
`II. APPLICABLE LEGAL PRINCIPLES FOR SEALING
`CONFIDENTIAL INFORMATION
`There is a strong public policy for making all information filed in a
`
`quasijudicial administrative proceeding open to the public, especially in an inter
`
`partes review which determines the patentability of claims in a patent and
`
`therefore affects the rights of the public. See St. Jude Medical, Cardiology
`
`Division, Inc. v. Volcano Corp., IPR2013-00258, Paper 28 at 2 (PTAB Aug. 12,
`
`2013). Under 35 U.S.C. § 316(a)(1), the default rule is that all papers filed in an
`
`inter partes review are open and available for access by the public; and a party
`
`may file a concurrent motion to seal and the information at issue is sealed pending
`
`the outcome of the motion. Id.
`
`However, the Board permits the protection of certain “confidential
`
`information”. See 35 U.S.C. § 316(a)(7) (“The Director shall prescribe regulations
`
`-- … providing for protective orders governing the exchange and submission of
`
`
`
`
`
`confidential information”). Id. In that regard, the Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), provides:
`
`The rules aim to strike a balance between the public’s interest in
`maintaining a complete and understandable file history and the
`parties’ interest in protecting truly sensitive information.
`* * *
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
`See also Trial Practice Guide (2019 Update) at 6 (“A party may file a motion to
`
`seal where the motion contains a proposed protective order, such as the default
`
`protective order in Appendix B… , protective orders may be issued for good cause
`
`by the Board to protect a party from disclosing confidential information”).
`
`The standard for granting a motion to seal is “for good cause.” 37 C.F.R. §
`
`42.54.
`
`III. GOOD CAUSE EXISTS FOR SEALING EXHIBIT 2016
`Exhibit 2016 is the Declaration of Afzal Dean, President of Patent Owner
`
`BNR. Mr. Dean testifies regarding the contents of a license agreement between the
`
`Petitioner and LSI Corporation that was learned during in connection with BNR’s
`
`acquisition of certain patents. The terms of the license are confidential business
`
`information that now belongs to third party Broadcom Inc. and have been protected
`
`
`
`
`
`as such throughout this proceeding and all related proceedings of which BNR is
`
`aware. Good cause exists to seal the declaration because public disclosure of the
`
`information contained in Mr. Dean’s declarationrisks harming each of the
`
`licensees/counterparties to the underlying agreement. The confidential portions of
`
`the agreements details about what the companies agreed to license that could
`
`adversely impact the business of these companies; for example, in these
`
`companies’ ongoing or future licensing negotiations with other entities.
`
`IV. CERTIFICATION OF NON-PUBLICATION
`On behalf of Patent Owner, the undersigned counsel certifies the information
`
`sought to be sealed has not been published or otherwise made public. Further, the
`
`confidentiality of this information has been consistently maintained by the Patent
`
`Owner during this proceeding, and any related proceedings.
`
`V. CERTIFICATION OF CONFERENCE WITH OPPOSING PARTY
`PURSUANT TO 37 C.F.R. § 42.54
`Patent Owner has conferred in good faith with Petitioner and the parties
`
`have agreed to use the default protective order set forth in the Office Patent Trial
`
`Practice Guide to govern the treatment of confidential information in this
`
`proceeding at this stage.
`
`VI. PROPOSED PROTECTIVE ORDER
`The Protective Order attached hereto as Appendix A corresponds to the
`
`default protective order set forth in the Office Patent Trial Practice Guide. Patent
`
`
`
`
`
`Owner and Petitioner have agreed to use the attached protective order to govern the
`
`handling of confidential information in this proceeding. Per agreement of the
`
`parties, confidential information will be designated “IPR Protective Order
`
`Material.” Accordingly, Patent Owner respectfully requests entry of the Proposed
`
`Protective Order.
`
`VII. CONCLUSION
`For the above reasons, Patent Owner, Bell Northern Research, LLC,
`
`respectfully requests that Exhibit 2016 and the portion of Patent Owner’s
`
`Preliminary Response referencing its contents be treated as confidential
`
`information and be placed under seal.
`
`
`
`
`
`
`
`
`
`
`
`Dated: March 23, 2020
`
`
`Respectfully Submitted,
`
`/Alexander E. Gasser/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
`
`Motion to Seal Under 37 C.F.R. § 42.54, by electronic means on March 23, 2020 at
`
`Respectfully Submitted,
`
`/Alexander E. Gasser/
`Alexander E. Gasser (Reg. No. 48,760)
`Back-Up Counsel for Patent Owner
`
`
`
`
`
`the following addresses of record:
`
`Timothy W. Riffe
`riffe@fr.com
`Christopher C. Hoff
`hoff@fr.com
`R. Andrew Schwentker
`schwentker@fr.com
`PTABInbound@fr.com
`IPR18768-0183IP1@fr.com
`
`
`Dated: March 23, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`APPENDIX A
`
`APPENDIX A
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`LG ELECTRONICS, INC.,
`
`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-00319
`U.S. Patent No. 7,039,435
`___________________
`
`
`PROTECTIVE ORDER
`
`
`
`This standing protective order governs the treatment and filing of
`
`confidential information, including documents and testimony.
`
`
`
`
`
`
`
`1.
`
`Confidential information shall be clearly marked “IPR PROTECTIVE
`
`ORDER MATERIAL.”
`
`2.
`
`Access to confidential information is limited to the following
`
`individuals who have executed the acknowledgment appended to this order:
`
`a.
`
`Parties. Persons who are owners of a patent involved in the proceeding
`
`and other persons who are named parties to the proceeding.
`
`b.
`
`Party Representatives. Representatives of record for a party in the
`
`proceeding.
`
`c.
`
`Experts. Retained experts of a party in the proceeding who further
`
`certify in the Acknowledgement that they are not a competitor to any party, or a
`
`consultant for, or employed by, such a competitor with respect to the subject matter
`
`of the proceeding.
`
`d.
`
`e.
`
`In-house counsel. In-house counsel of a party.
`
`Support Personnel. Administrative assistants, clerical staff, court
`
`reporters and other support personnel of the foregoing persons who are reasonably
`
`necessary to assist those persons in the proceeding. Such support personnel shall not
`
`be required to sign an Acknowledgement, but shall be informed of the terms and
`
`requirements of the Protective Order by the person they are supporting who receives
`
`confidential information.
`
`
`
`
`
`f.
`
`The Office. Employees and representatives of the U.S. Patent and
`
`Trademark Office who have a need for access to the confidential information shall
`
`have such access without the requirement to sign an Acknowledgement. Such
`
`employees and representatives shall include the Director, members of the Board and
`
`staff, other Office support personnel, court reporters, and other persons acting on
`
`behalf of the Office.
`
`3.
`
`Employees (e.g., corporate officers), consultants, or other persons
`
`performing work for a party, other than those persons identified above, shall be
`
`extended access to confidential information only upon agreement of the parties or
`
`by order of the Board upon a motion brought by the party seeking to disclose
`
`confidential information to that person and after signing the Acknowledgment. The
`
`party opposing disclosure to that person shall have the burden of proving that such
`
`person should be restricted from access to confidential information.
`
`4.
`
`Protection of Confidential Information. Persons receiving confidential
`
`information shall use reasonable efforts to maintain the confidentiality of the
`
`information, including:
`
`a. Maintaining such information in a secure location to which persons not
`
`authorized to receive the information shall not have access;
`
`
`
`
`
`b.
`
`Otherwise using reasonable efforts to maintain the confidentiality of the
`
`information, which efforts shall be no less rigorous than those the recipient uses to
`
`maintain the confidentiality of information not received from the disclosing party;
`
`c.
`
`Ensuring that support personnel of the recipient who have access to the
`
`confidential information understand and abide by the obligation to maintain the
`
`confidentiality of information received that is designated as confidential; and
`
`d.
`
`Limiting the copying of confidential information to a reasonable
`
`number of copies needed to conduct the proceeding and maintaining a record of the
`
`locations of such copies, which similarly must be kept secure.
`
`5.
`
`Treatment of Confidential Information. Persons receiving confidential
`
`information shall use the following procedures to maintain confidentiality of
`
`documents and other information:
`
`a.
`
`Documents and Information Filed With the Board.
`
`i.
`
`A party may file documents or information with the Board along with
`
`a Motion to Seal. The Motion to Seal should provide a non-confidential description
`
`of the nature of the confidential information that is under seal, and set forth the
`
`reasons why the information is confidential, or if the information has been
`
`designated as confidential by the opposing party, that party shall set forth the reasons
`
`why the information redacted is confidential and should not be made available to the
`
`public. A party may challenge the confidentiality of the information by opposing the
`
`
`
`
`
`Motion to Seal. The documents or information shall remain under seal unless the
`
`Board determines that some or all of it does not qualify for confidential treatment.
`
`ii.
`
`Where confidentiality is alleged as to some but not all of the
`
`information submitted to the Board, the submitting party shall file confidential and
`
`non-confidential versions of its submission, together with a Motion to Seal the
`
`confidential version setting forth the reasons why the information redacted from the
`
`non-confidential version is confidential, or if the information has been designated as
`
`confidential by the opposing party, that party shall set forth the reasons why the
`
`information redacted is confidential and should not be made publicly available. A
`
`party may challenge the confidentiality of the information by opposing the Motion
`
`to Seal. The non-confidential version of the submission shall clearly indicate the
`
`locations of information that has been redacted. The confidential version of the
`
`submission shall be filed under seal. The redacted information shall remain under
`
`seal, unless the Board determines that some or all of the redacted information does
`
`not qualify for confidential treatment.
`
`b.
`
`Documents and Information Exchanged Among the Parties. Documents
`
`(including deposition transcripts) and other information designated as confidential
`
`that are disclosed to another party during discovery or other proceedings before the
`
`Board shall be clearly marked as “IPR PROTECTIVE ORDER MATERIAL” and
`
`shall be produced in a manner that maintains its confidentiality.
`
`
`
`
`
`6. Within 60 days after the final disposition of this action, including the
`
`121 exhaustion of all appeals and motions, each party receiving confidential
`
`information must return, or certify the destruction of, all copies of the confidential
`
`information to the producing party. Other Restrictions Imposed By the Board. In
`
`addition to the foregoing, the Board may, in its discretion, include other terms and
`
`conditions in a Protective Order it enters in any proceeding.
`
`7.
`
`Standard Acknowledgement of Protective Order. he following form
`
`may be used to acknowledge a protective order and gain access to information
`
`covered by the protective order:
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`LG ELECTRONICS, INC.,
`
`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-00319
`U.S. Patent No. 7,039,435
`___________________
`
`Standard Acknowledgment for Access to
`Protective Order Material
`
`
`I __________________________________________, affirm that I have read
`
`the Protective Order; that I will abide by its terms; that I will use the confidential
`
`information only in connection with this proceeding and for no other purpose; that I
`
`will only allow access to support staff who are reasonably necessary to assist me in
`
`this proceeding; that prior to any disclosure to such support staff I informed or will
`
`inform them of the requirements of the Protective Order; that I am personally
`
`
`
`
`
`responsible for the requirements of the terms of the Protective Order and I agree to
`
`submit to the jurisdiction of the Office and the United States District Court for the
`
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`
`Order and providing remedies for its breach.
`
`
`
`Signed ____________________________________________
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
