UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`
`
`
` Case IPR2020-00861
` U.S. Patent No. 10,230,898
`
`
`
`
`
`
`PATENT OWNER’S CORRECTED MOTION TO FILE UNDER SEAL
`
`Pursuant to the Board’s email guidance on December 23, 2021, Patent Owner
`
`Corephotonics Ltd. respectfully files this revised motion under 37 C.F.R. §§ 42.14
`
`and 42.54 to re-file under seal the following documents and exhibits listed below,
`
`which were previously filed in conjunction with Patent Owner’s March 2, 2021
`
`Motion to File Under Seal.
`
`I.
`
`PATENT OWNER’S PAPERS AND EXHIBITS
`
`This Corrected Motion to File Under Seal is filed pursuant to the Board’s
`
`email guidance, and Patent Owner’s proposed redactions to the documents and
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`
`
`
` Case IPR2020-00861
` U.S. Patent No. 10,230,898
`
`
`
`
`
`
`PATENT OWNER’S CORRECTED MOTION TO FILE UNDER SEAL
`
`Pursuant to the Board’s email guidance on December 23, 2021, Patent Owner
`
`Corephotonics Ltd. respectfully files this revised motion under 37 C.F.R. §§ 42.14
`
`and 42.54 to re-file under seal the following documents and exhibits listed below,
`
`which were previously filed in conjunction with Patent Owner’s March 2, 2021
`
`Motion to File Under Seal.
`
`I.
`
`PATENT OWNER’S PAPERS AND EXHIBITS
`
`This Corrected Motion to File Under Seal is filed pursuant to the Board’s
`
`email guidance, and Patent Owner’s proposed redactions to the documents and
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`
`exhibits discussed in the following list in this section replaces Patent Owner’s
`
`redactions proposed in connection with its March 2, 2021 Motion to File Under Seal.
`
`Replacement “public” and “board and parties” versions of the documents and
`
`exhibits discussed in this section are being filed concurrently herewith for
`
`convenience.
`
`1.
`
`2.
`
`Certain highlighted portions of Patent Owner’s Response;
`
`Certain highlighted portions of Ex. 2001, the Declaration of John C.
`
`Hart;
`
`3.
`
`Certain highlighted portions of Ex. 2006, a document titled “Dual
`
`Aperture
`
`Image Fusion Technology, Proposed Engagement
`
`Framework” and dated June 22, 2014;
`
`4.
`
`Certain highlighted portions of Ex. 2007, an email chain with emails
`
`dating from July and August 2014;
`
`5.
`
`Certain highlighted portions of Ex. 2008, an email chain with emails
`
`dating from March 2015;
`
`6.
`
`7.
`
`8.
`
`9.
`
`The second page of Ex. 2009, an email dated December 21, 2015;
`
`Certain highlighted portions of Ex. 2010;
`
`Certain highlighted portions of Ex. 2011, an email dated May 23, 2013;
`
`Certain highlighted portions of Ex, 2012, an email dated May 23, 2013;
`
`10. Certain highlighted portions of Ex. 2013, the Declaration of Eran Kali;
`
`
`
`2
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`In support of this motion, Patent Owner provides with particularity the reasons
`
`why the redacted information is confidential and why the harm from its disclosure
`
`outweighs the strong public interest in maintaining an open record, Patent Owner
`
`states as follows.
`
`Certain Highlighted Portions of Patent Owner’s Response
`
`• Page 62 (highlighted portion of the bullet point beginning with “Ex.
`
`2010 is …”); page 62-63 (highlighted portions following “Petitioner
`
`specifically asked Patent Owner for…” and “Petitioner’s years-long
`
`effort in studying Patent Owner’s patented technology…”): Both Patent
`
`Owner and Petitioner believe that the highlighted portions, which are
`
`descriptions and quotations of Ex. 2010, is subject to a non-disclosure
`
`agreement (“Confidentiality Agreement”) to which Patent Owner and
`
`Petitioner have been parties since 2012. Petitioner believes the entirety
`
`of Ex. 2010 is subject to the Confidentiality Agreement. At Petitioner’s
`
`request and out of an abundance of caution, and to avoid breaching the
`
`Confidentiality Agreement, Patent Owner proposes that the highlighted
`
`material be sealed. To the extent Petitioner believes there are additional
`
`reasons why the highlighted portion should be sealed, Patent Owner
`
`expects Petitioner to advise the Board of those reasons as appropriate.
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`• Pages 63-64 (names of entities following the sentence: “Other
`
`companies who have taken licenses to Corephotonics technology
`
`include….”): The highlighted portions reflect identities of licensees to
`
`Patent Owner’s technology and whose licenses to Patent Owner’s
`
`technology are not public information. Patent Owner believes the
`
`public disclosure of that material would harm to the interests of both
`
`Patent Owner and its non-public licensees.
`
`Certain highlighted portions of Ex. 2001, the Declaration of John C. Hart
`
`• Pages 70-71 (highlighted portions): Both Patent Owner and Petitioner
`
`believe that the highlighted portions, which are descriptions and
`
`quotations of Ex. 2010, is subject to a Confidentiality Agreement to
`
`which Patent Owner and Petitioner have been parties since 2012. Out
`
`of an abundance of caution and to avoid breaching the Confidentiality
`
`Agreement, Patent Owner proposes that the highlighted material be
`
`sealed. To the extent Petitioner believes there are additional reasons
`
`why the highlighted portion should be sealed, Patent Owner expects
`
`Petitioner to advise the Board of those reasons as appropriate.
`
`• Page 72 (highlighted portion following “licenses to Corephotonics’s
`
`technology include…”): The highlighted portions reflect identities of
`
`licensees to Patent Owner’s technology and whose licenses to Patent
`
`4
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`Owner’s technology are not public information. Patent Owner believes
`
`the public disclosure of that material would harm to the interests of both
`
`Patent Owner and its non-public licensees.
`
`Certain highlighted portions of Ex. 2006
`
`• The highlighted portion of Ex. 2006 (beginning on page 2 of the
`
`document) reflects confidential licensing and royalty terms offered by
`
`Patent Owner to Petitioner. Public disclosure of such competitive
`
`information would irreparably harm Patent Owner, whose business
`
`involves licensing its technology to its customers.
`
`Certain highlighted portions of Ex. 2007
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The cell phone number (beginning with “+972”) appearing on page 2
`
`is the personal cell phone number of a Patent Owner employee. Public
`
`disclosure of that information would harm Corephotonics as well as the
`
`Corephotonics employee in question. Good cause exists to keep that
`
`information sealed per the Board’s guidance on filing documents
`
`5
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`containing non-useful personal confidential
`
`information. See
`
`https://www.uspto.gov/patents/ptab/ptab-e2e-frequently-asked-
`
`questions (Question G7).
`
`• The highlighted portion at the bottom of page 2 (under the paragraph
`
`beginning with “CP to send telephoto samples to Apple…”) contains
`
`the identity of the manufacturer of Patent Owner’s lenses. The identity
`
`of Patent Owner’s manufacturer is non-public information, the
`
`disclosure of which would harm the interests of Patent Owner and its
`
`manufacturing partner.
`
`Certain highlighted portions of Ex. 2008
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The highlighted hyperlink in Ex. 2008 is a hyperlink to a shared folder
`
`hosted by Dropbox, which was provided to Petitioner by Patent Owner
`
`on a confidential basis. The folder contains technical samples of videos
`
`captured using Patent Owner’s image processing algorithms and
`
`reference videos for comparison. Public disclosure of the hyperlink,
`
`6
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`which is still accessible, is a disclosure of the technical samples hosted
`
`at the Dropbox folder. Public disclosure of such technical information
`
`would irreparably harm Patent Owner.
`
`The second page of Ex. 2009
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The second page of Ex. 2009 is a screenshot of a confidential Patent
`
`Owner presentation reflecting details of the development timeline and
`
`technical details of Patent Owner’s camera designs. Patent Owner’s
`
`technology development timeline, as well as the corresponding specific
`
`technical details of particular milestones in the development timeline,
`
`reflect historical milestones in Patent Owner’s technology development
`
`as well as Patent Owner’s future plans to develop its technology as of
`
`the date of Ex. 2009 (December 2015). Public disclosure of such
`
`information would irreparably harm Patent Owner.
`
`Highlighted portions of Ex. 2010
`
`7
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The cell phone number (beginning with “+972”) appearing on pages 2
`
`and 3 is the personal cell phone number of a Patent Owner employee
`
`and has been redacted in both public and “board and parties” only
`
`versions of Ex. 2010. Public disclosure of that information would harm
`
`Corephotonics as well as the Corephotonics employee in question.
`
`Good cause exists to keep that information sealed per the Board’s
`
`guidance on filing documents containing non-useful personal
`
`confidential information. See https://www.uspto.gov/patents/ptab/ptab-
`
`e2e-frequently-asked-questions (Question G7).
`
`• Patent Owner believes that the substantive portions of Ex. 2010 are
`
`subject to a Confidentiality Agreement to which Patent Owner and
`
`Petitioner have been parties since 2012. Petitioner has informed Patent
`
`Owner it believes the entirety of Ex. 2010 is subject to the
`
`Confidentiality Agreement. Out of an abundance of caution and to
`
`avoid breaching the Confidentiality Agreement, Patent Owner proposes
`
`8
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`that the highlighted material in Ex. 2010 be sealed. To the extent
`
`Petitioner believes there are additional reasons why the highlighted
`
`portion should be sealed, Patent Owner expects Petitioner to advise the
`
`Board of those reasons as appropriate.
`
`Certain highlighted portions of Ex. 2012
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The cell phone number (beginning with “+972”) appearing on page 2
`
`is the personal cell phone number of a Patent Owner employee. Public
`
`disclosure of that information would harm Corephotonics as well as the
`
`Corephotonics employee in question. Good cause exists to keep that
`
`information sealed per the Board’s guidance on filing documents
`
`containing non-useful personal confidential
`
`information. See
`
`https://www.uspto.gov/patents/ptab/ptab-e2e-frequently-asked-
`
`questions (Question G7).
`
`Certain highlighted portions of Ex. 2013, the Declaration of Eran Kali
`
`9
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`• Certain names, email addresses and parts of email addresses, and other
`
`contact information of Petitioner’s employees have been proposed for
`
`redaction at Petitioner’s request. Patent Owner understands that
`
`Petitioner will advise the Board of the reasons supporting sealing of
`
`that information.
`
`• The highlighted portions on pages 4 and 5, paragraphs 12-16, reflect
`
`the identities of licensees to Patent Owner’s technology and whose
`
`licenses to Patent Owner’s technology is not public information. The
`
`highlighted portions also reflect the confidential terms of licenses
`
`reached by Patent Owner with its licensees as well as the acquisition
`
`price Samsung Electronics Benelux BV paid to acquire Patent Owner.
`
`Patent Owner believes the public disclosure of that material would
`
`harm to the interests of both Patent Owner and its licensees, including
`
`because Patent Owner’s business involves licensing its technology to
`
`its customers.
`
`• The highlighted portion on page 8 (in paragraph 25) contains discussion
`
`of and quotations from Ex. 2010, which both Patent Owner and
`
`Petitioner believe is subject to an Confidentiality Agreement to which
`
`Patent Owner and Petitioner have been parties since 2012. Out of an
`
`abundance of caution and to avoid breaching the Confidentiality
`
`10
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`Agreement, Patent Owner proposes that the highlighted material be
`
`sealed. To the extent Petitioner believes there are additional reasons
`
`why the highlighted portion should be sealed, Patent Owner expects
`
`Petitioner to advise the Board of those reasons as appropriate.
`
`II. PETITIONER’S PAPERS AND EXHIBITS
`
`Patent Owner further provides reasons for sealing the following portions of
`
`certain of Petitioner’s papers and exhibits.
`
`APP-1040, the Declaration of Fredo Durand, Ph.D. in Support of
`
`Petitioner’s Reply.
`
`• The portion of paragraph 133 proposed for redaction contains the identities
`
`of three of Patent Owner’s licensees, two of whom have not been publicly
`
`identified as licensees. The public disclosure of the identities of those three
`
`licensees, in conjunction with the rest of the paragraph, would reveal highly
`
`sensitive, non-public information such as the terms of Patent Owner’s
`
`licenses and the identities of its nonpublic licensees.
`
`For the foregoing reasons, Patent Owner requests that this corrected motion
`
`to file under seal be granted.
`
`
`
`Dated: February 1, 2022
`
`
`
`
`
` / Neil A. Rubin /
`
`Respectfully submitted,
`
`
`
`11
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`Neil A. Rubin
`Reg. No. 67,030
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
`
`
`
`12
`
`
`
`
`
`
`
`
`
` Case IPR2020-00861
`U.S. Patent No. 10,230,898
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`
`The undersigned hereby certifies that the above document was served on
`
`February 1, 2022, by filing this document through the Patent Trial and Appeal Board
`
`End to End System as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`
`
`Date: February 1, 2022
`
` / Neil A. Rubin /
`
`
`
`
`
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
`
`
`Neil A. Rubin
`Reg. No. 67,030
`Attorney for Patent Owner
`
`
`
`
`
`13
`
`
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
