throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`
`
`
`
` Case IPR2020-00905
` U.S. Patent No. 10,225,479
`
`
`
`
`PATENT OWNER’S UNOPPOSED
`REVISED MOTION TO FILE UNDER SEAL
`
`Pursuant to the Board’s June 21, 2021 Order Granting-in-Part and Denying-
`
`
`
`in-Part Patent Owner’s Motion to Seal and to Enter a Protective Order (Paper 30)
`
`and June 21, 2021 Order Denying Petitioner’s Motion to Seal (Paper 31), Patent
`
`Owner Corephotonics Ltd. respectfully files this revised motion under 37 C.F.R. §§
`
`42.14 and 42.54 to file under seal the following documents, which are being filed
`
`concurrently herewith as “Board and Parties Only” documents:
`
`1.
`
`Certain highlighted portions of Patent Owner’s Response;
`
`

`

`Case IPR2020-00905
`
`
`2.
`
`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, 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;
`
`11. Certain highlighted portions of Ex. 2018, an email chain with emails
`
`dating from June and July 2013;
`
`12. Certain highlighted portions of Ex. 2019, an email chain with emails
`
`dating from June and July 2013;
`
`13. Certain highlighted portions of Ex. 2020, an email chain with emails
`
`dating from October 2013;
`
`
`
`2
`
`

`

`Case IPR2020-00905
`
`
`14. Certain highlighted portions of Ex. 2022, an email chain with emails
`
`dating from September 2013;
`
`15. Certain highlighted portions of Ex. 2023, an email dated May 21, 2014;
`
`16. Certain highlighted portions of Petitioner’s Reply dated May 7, 2021;
`
`17. Certain highlighted portions of APPL-1037, a transcript of the April 29,
`
`2021 deposition of Dr. John C. Hart; and
`
`18. Certain portions of APPL-1038, the Declaration of Dr. Fredo Durand
`
`in support of Petitioner’s Reply briefs in IPR2020-00905 and IPR2020-
`
`00906, marked for redaction by red-colored boxes.
`
`In support of this motion and in response to the Board’s request that Patent
`
`Owner provide 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
`
`• Pages 38–39 (highlighted portion of the bullet point beginning with
`
`“Ex. 2018 is an email chain…”): The highlighted portions reflect what
`
`Patent Owner considered to be key characteristics of their confidential
`
`lens design at the time of the 2013 email chain shown in Ex. 2018. The
`
`highlighted portions also reveal the precise technical information
`
`regarding Corephotonics’ telephoto lens design that was provided to
`
`
`
`3
`
`

`

`Case IPR2020-00905
`
`
`Petitioner at an in-person meeting during the Summer of 2013 between
`
`Petitioner and Patent Owner. Public disclosure of these specific
`
`technical details, as well as time manner in which they were disclosed
`
`to Petitioner, would cause Patent Owner commercial harm. Such details
`
`could be competitively used against Patent Owner because Patent
`
`Owner’s business involves the licensing of its technology to customers.
`
`• Page 39 (highlighted portion of the bullet point beginning with “Ex.
`
`2021 is a copy of a Technology Evaluation Agreement…”): The
`
`highlighted portions contain description and quotations of Ex. 2021,
`
`which the Board has ordered sealed in its entirety. See Paper 30, at 7.
`
`• Page 40 (highlighted portion of the bullet point beginning with “Ex.
`
`2010 is …”); page 41 (highlighted portions): Both Patent Owner and
`
`Petitioner believe that the highlighted portions, which are descriptions
`
`and quotations of Ex. 2010, is subject to an active 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
`
`
`
`4
`
`

`

`Case IPR2020-00905
`
`
`reasons why the highlighted portion should be sealed, Patent Owner
`
`expects Petitioner to advise the Board of those reasons as appropriate.
`
`• Page 42 (highlighted portion of first paragraph): The highlighted
`
`portions reflect identities of licensees to Patent Owner’s technology and
`
`whose licenses to Patent Owner’s technology is 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
`
`• Page 66 (highlighted portion of bullet point beginning with “Ex. 2018
`
`is an email chain…”): The highlighted portions reflect what Patent
`
`Owner considered to be key characteristics of their confidential lens
`
`design at the time of the 2013 email chain shown in Ex. 2018. The
`
`highlighted portions also reveal the precise technical information
`
`regarding Corephotonics’ telephoto lens design that was provided to
`
`Petitioner at an in-person meeting during the Summer of 2013 between
`
`Petitioner and Patent Owner. Public disclosure of these specific
`
`technical details, as well as time manner in which they were disclosed
`
`to Petitioner, would cause Patent Owner commercial harm. Such details
`
`could be competitively used against Patent Owner because Patent
`
`Owner’s business involves the licensing of its technology to customers.
`
`
`
`5
`
`

`

`Case IPR2020-00905
`
`
`• Page 67 (highlighted portion of the bullet point beginning with “Ex.
`
`2021 is a copy of a Technology Evaluation Agreement…”): The
`
`highlighted portions contain description and quotations of Ex. 2021,
`
`which the Board has ordered sealed in its entirety. See Paper 30, at 7.
`
`• Page 68-69 (highlighted portions): Both Patent Owner and Petitioner
`
`believe that the highlighted portions, which are descriptions and
`
`quotations of Ex. 2010, is subject to an active 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 70 (highlighted portion): The highlighted portions reflect
`
`identities of licensees to Patent Owner’s technology and whose licenses
`
`to Patent Owner’s technology is 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
`
`
`
`6
`
`

`

`Case IPR2020-00905
`
`
`• 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 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
`
`
`
`7
`
`

`

`Case IPR2020-00905
`
`
`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,
`
`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, an email dated December 21, 2015
`
`• 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
`
`
`
`8
`
`

`

`Case IPR2020-00905
`
`
`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
`
`• 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
`
`
`
`9
`
`

`

`Case IPR2020-00905
`
`
`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 an active 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
`
`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. 2013, the Declaration of Eran Kali
`
`• 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 reflect the identities of
`
`licensees to Patent Owner’s technology and whose licenses to Patent
`
`
`
`10
`
`

`

`Case IPR2020-00905
`
`
`Owner’s technology is not public information. The highlighted portions
`
`also reflect the confidential terms of licenses reached by Patent Owner
`
`with its licensees. 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 portions on pages 8 and 9 (in paragraph 25) contain
`
`discussion of and quotations from Ex. 2010, which both Patent Owner
`
`and Petitioner believe is subject to an active 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.
`
`• The highlighted portions on page 9 (in paragraph 26, middle of the
`
`paragraph) reflect
`
`the precise
`
`technical
`
`information regarding
`
`Corephotonics’ telephoto lens design that was provided to Petitioner at
`
`an in-person meeting during the Summer of 2013 between Petitioner
`
`and Patent Owner. Public disclosure of these specific technical details,
`
`
`
`11
`
`

`

`Case IPR2020-00905
`
`
`as well as time manner in which they were disclosed to Petitioner,
`
`would cause Patent Owner commercial harm.
`
`• The highlighted portions on page 10 (in paragraph 29) reflect an action
`
`performed by Patent Owner pursuant to the signed Technology
`
`Evaluation Agreement (Ex. 2021), which the Board has ordered sealed
`
`in its entirety. The highlighted portions also contain specific details
`
`about the technical data provided by Patent Owner to Petitioner, the
`
`disclosure of which would harm Patent Owner.
`
`Certain highlighted portions of Ex. 2018
`
`• 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 other highlighted portions of Ex. 2018 reflect the technical
`
`parameters and details of Patent Owner’s image processing algorithms
`
`as well as the hardware used by Patent Owner to produce technical
`
`samples of its image processing algorithms. Public disclosure of those
`
`details would irreparably harm Patent Owner’s interest.
`
`Certain highlighted portions of Ex. 2019
`
`
`
`12
`
`

`

`Case IPR2020-00905
`
`
`• 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 portion of Ex. 2019 on page 1 beginning with https://...
`
`is a hyperlink to a shared folder hosted by Dropbox, which was
`
`provided to Petitioner by Patent Owner on a confidential basis. The
`
`shared folder contains a technical samples produced by Patent Owner
`
`in response to requests and comments made by Petitioner’s employees.
`
`The highlighted portion of Ex. 2019 on pages 1 and 2, in the section
`
`beginning with “Please note the following:…”, reflects the technical
`
`parameters and details of Patent Owner’s process in producing the
`
`technological samples hosted at the shared Dropbox folder mentioned
`
`earlier in Ex. 2019. Public disclosure of the hyperlink (containing the
`
`technical samples) and the details about the technical process with
`
`which Patent Owner created those technical samples would irreparably
`
`harm Patent Owner’s interests.
`
`Certain highlighted portions of Ex. 2020
`
`
`
`13
`
`

`

`Case IPR2020-00905
`
`
`• 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 of Ex. 2020 in the body of the emails in the
`
`email chain from pages 2 through 8 of Ex. 2020 reflects (1) Patent
`
`Owner’s responses to Petitioner’s requests for technical samples
`
`reflecting Patent Owner’s image processing algorithms, (2) details
`
`about the technical process with which Patent Owner produced or
`
`intended to produce technical samples at Petitioner’s request. The
`
`highlighted hyperlink on page 7 of Ex. 2020 is a hyperlink to a shared
`
`folder hosted by Dropbox containing Patent Owner’s technical
`
`samples, which was provided to Petitioner by Patent Owner on a
`
`confidential basis. Public disclosure of the hyperlink (containing the
`
`technical samples) and the details about the technical process with
`
`which Patent Owner created those technical samples would irreparably
`
`harm Patent Owner’s interests.
`
`Certain
`and 2023
`
`highlighted
`
`portions
`
`of Exs.
`
`2011,
`
`2012,
`
`2022,
`
`
`
`14
`
`

`

`Case IPR2020-00905
`
`
`• 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.
`
`Certain highlighted portions of Petitioner’s Reply dated May 7, 2021
`
`• The highlighted portions of page 23 and 24 marked with red boxes
`
`reflect quotation from Ex. 2010, which the parties believe are subject
`
`to an active Confidentiality Agreement to which Patent Owner and
`
`Petitioner have been parties since 2012. Petitioner has informed Patent
`
`Owner that it believes that 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 marked material here be
`
`sealed.
`
`Certain highlighted portions of APPL-1037, a transcript of the April 29,
`2021 deposition of Dr. John C. Hart
`
`• The highlighted portions on pages 153 through 160, and 203, reflect
`
`technical details of the material exchanged between Patent Owner and
`
`Petitioner pursuant to an agreement (Ex. 2021) which the Board has
`
`ordered sealed in its entirety. Public disclosure of the specific details
`
`
`
`15
`
`

`

`Case IPR2020-00905
`
`
`(e.g., the files, types of files, features shown in those files) of the
`
`information provided pursuant to that agreement would harm Patent
`
`Owner’s interests.
`
`Certain portions of APPL-1038, the Declaration of Dr. Fredo Durand in
`support of Petitioner’s Reply briefs in IPR2020-00905 and IPR2020-
`00906 marked for redaction by red boxes1
`
`• 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 portion of page 32 (in paragraph 58, not including the names of the
`
`individuals in the first sentence) and page 37 (in paragraph 67) marked
`
`with red boxes reflects information about the material exchanged
`
`between Patent Owner and Petitioner pursuant to an agreement (Ex.
`
`2021) which the Board has ordered sealed in its entirety. Public
`
`disclosure of the specific details (e.g., the files, types of files, features
`
`
`1 The version of this document filed here was provided to Patent Owner by Petitioner
`prior to the filing of this revised Motion, and contains Petitioner’s yellow
`highlighting. For clarity, the portions of this document which Patent Owner and
`Petitioner seek to file under seal are marked with red-colored boxes.
`
`
`
`16
`
`

`

`Case IPR2020-00905
`
`
`shown in those files) of the information provided pursuant to that
`
`agreement would harm Patent Owner’s interests.
`
`• The portion of pages 36 and 37 (in paragraph 66) marked with red boxes
`
`reflects information from and Petitioner’s expert’s discussion of Ex.
`
`2010, which the parties believe is subject to an active Confidentiality
`
`Agreement to which Patent Owner and Petitioner have been parties
`
`since 2012. 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.
`
`• The portion of page 40 marked with red boxes (in paragraph 73) reflects
`
`the identity of three of Corephotonics’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 Corephotonics’s licenses and the identities of its non-
`
`public licensees.
`
`For the foregoing reasons, Patent Owner requests that this revised motion to
`
`file under seal be granted.
`
`
`
`
`
`Respectfully submitted,
`
`17
`
`

`

`Case IPR2020-00905
`
`Dated: July 13, 2021
`
`
`
`
`
`
`
`
`
` / Neil A. Rubin /
`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
`
`
`
`
`
`18
`
`

`

`Case IPR2020-00905
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on July
`
`13, 2021, 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: July 13, 2021
`
` / 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
`
`
`
`
`
`19
`
`

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