Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: June 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`
`
`IPR2020-00905 (Patent 10,255,479 B2)
` IPR2020-00906 (Patent 10,255,479 B2)1
`
`
`
`
`Before BRYAN F. MOORE, JOHN F. HORVATH, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`Granting-in-Part and Denying-in-Part
`Patent Owner’s Motion to Seal and to Enter a Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are common to the above proceedings.
`We exercise our discretion to issue one Order to be filed in each proceeding.
`The parties are may not use this style caption unless authorized by the
`Board.
`
`
`571-272-7822
`
`
`
`
`Paper 31
`Entered: June 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`
`
`IPR2020-00905 (Patent 10,255,479 B2)
` IPR2020-00906 (Patent 10,255,479 B2)1
`
`
`
`
`Before BRYAN F. MOORE, JOHN F. HORVATH, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`Granting-in-Part and Denying-in-Part
`Patent Owner’s Motion to Seal and to Enter a Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are common to the above proceedings.
`We exercise our discretion to issue one Order to be filed in each proceeding.
`The parties are may not use this style caption unless authorized by the
`Board.
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`
`
`
`INTRODUCTION
`I.
`Patent Owner has filed an unopposed motion to seal (1) its Response
`(Paper 15), (2) the Declaration of John C. Hart, Ph.D. (Ex. 2001), (3) the
`Declaration of Eran Kali (Ex. 2013), (4) a “Proposed Engagement
`Framework” (Ex. 2006), (5) a “Technology Evaluation Agreement”
`(Ex. 2021), and (6) various emails between employees of Petitioner and
`Patent Owner (Exs. 2007–2012, 2018–2020, 2022, 2023). Paper 17
`(“Motion” or “Mot.”).2 In doing so, Patent Owner averred that it:
`
`considers the information to be confidential, and believes that
`the public’s interest in having access to this information for
`the purposes of the patentability of the challenged claims in
`this proceeding is outweighed by the prejudicial effect that
`disclosure would have on Patent Owner.
`Mot. 3. Patent Owner also requested entry of an appended “Proposed
`Protective Order,” which Patent Owner averred “is substantially identical to
`the Board’s Default Protective Order.” Id.
`For the reasons discussed below, Patent Owner’s request to enter the
`Proposed Protective Order is granted and, with the exception of Exhibit
`2021, Patent Owner’s request to file sealed versions of its Response and the
`Exhibits described above is denied without prejudice to file a renewed
`motion to seal these documents. Patent Owner’s Proposed Protective Order
`will be entered into the record as Exhibit 3002, and will now apply to all
`documents entitled to confidentiality in this proceeding.
`
`
`2 Similar motions have been filed in IPR2020-00905 and IPR2020-00906
`seeking to seal similar papers and exhibits. Unless otherwise noted, we refer
`to the papers and exhibits filed in IPR2020-00905.
`2
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`
`
`
`II. DISCUSSION
`The record for an inter partes review shall be made available to the
`public, except as otherwise ordered, and a document filed with a motion to
`seal shall be treated as sealed until the motion is decided. 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. There is a strong public policy that favors
`making information filed in inter partes review proceedings open to the
`public. See Garmin International v. Cuozzo Speed Technologies, LLC,
`IPR2012-00001, Paper 34 (PTAB March 14, 2013) (discussing the standards
`of the Board applied to motions to seal). Consequently, any documents filed
`under seal shall have their redactions “limited to the minimum amount
`necessary to protect confidential information” yet still allowing “the thrust
`of the underlying argument or evidence [to] be clearly discernible.” See
`Paper 11, 2–3. The standard for granting a motion to seal is “good cause.”
`37 C.F.R. § 42.54. The moving party bears the burden of showing that the
`relief requested should be granted. 37 C.F.R. § 42.20(c). That includes a
`showing that the information sought to be protected is truly confidential, and
`that preserving that confidentiality outweighs the strong public interest in
`maintaining an open record. See Garmin at 3.
`Much of the information Patent Owner seeks to protect in its Motion
`to Seal fails the basic tests of being truly confidential and being the
`minimum amount of information whose redaction is needed to protect Patent
`Owner’s interests. Given these fundamental problems, we do not address
`each of the individual documents Patent Owner seeks to file under seal.
`Instead, we address several exemplary documents and the issues we’ve
`identified in them that have lead us to deny the Motion in order to provide
`
`3
`
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`
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`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`guidance on what information we consider to be confidential information,
`and how that information can be protected.
`As an initial matter, much of the information that Patent Owner seeks
`to protect does not appear to be confidential information because Patent
`Owner has already publicly disclosed the same or comparable information in
`the complaint Patent Owner filed in the United States District Court for the
`Northern District of California (“the complaint”). See Ex. 2004 ¶¶ 28–40.
`For example, the complaint alleges that Patent Owner has engaged in
`meetings and exchanged emails with Petitioner regarding Patent Owner’s
`five element telephoto lens, dual-lens camera, associated software and
`computational algorithms, and pending patent applications. Id. ¶¶ 28–30.
`The complaint also alleges that Patent Owner provided Petitioner with test
`boards, lens modules, “‘black box’ simulation files for . . . lens designs,” “a
`software simulator for the computational algorithms for image processing,”
`and “a description of its (then) over ten patent families, including low-
`profile telephoto lens designs . . . and algorithms for improving dual-
`aperature cameras.” Id. ¶¶ 31, 33, 35. The complaint further alleges that
`Petitioner expressed an “interest in licensing [Patent Owner’s] dual camera
`algorithms and software,” and requested “a proposal for licensing [Patent
`Owner’s] intellectual property,” which included “over 25 patent families.”
`Id. ¶¶ 35, 40. Yet, despite these public disclosures, Patent Owner seeks to
`protect similar information in this proceeding as confidential information.
`Several examples of this follow.
`Exhibit 2011 is an email from Petitioner to Patent Owner requesting
`information “that is described on [Patent Owner’s] web site.” Ex. 2011, 1.
`
`4
`
`
`
`
`
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`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`Patent Owner seeks to protect Exhibit 2011 in its entirety without explaining
`how any of the information it discloses is confidential.3 Although the email
`inquiries about Patent Owner’s intellectual property, the inquiry appears to
`be based on information obtained from Patent Owner’s publicly facing web
`site. Moreover, Patent Owner has publicly disclosed in the complaint that
`Petitioner has inquired about Patent Owner’s intellectual property. See
`Ex. 2004 ¶¶ 28–29.
`Exhibit 2018 is an email string between Petitioner and Patent Owner
`discussing Petitioner’s use of Patent Owner’s demonstration models and
`evaluation of Patent Owner’s software algorithms. See Ex. 2018. Patent
`Owner seeks to seal Exhibit 2018 in its entirety. But Patent Owner has
`publicly disclosed similar information in its complaint. See Ex. 2004 ¶¶ 28–
`31, 33, 35. Although the email string contains information not disclosed in
`the complaint, such as where the compiled software is stored and on which
`operating systems it is executable, Patent Owner fails to explain why
`disclosure of that information would outweigh the public interest in having a
`more complete and understandable record. See Ex. 2018.
`Exhibit 2022 is an email string between Petitioner and Patent Owner
`that discusses an executed software evaluation agreement and Petitioner’s
`
`
`3 We recognize that the names, email addresses, phone numbers, titles, and
`other personally identifiable information of employees may be confidential.
`But in Exhibit 2011, the only information of that nature is of Petitioner’s
`employee, in which case the burden is on Petitioner to show the harm from
`disclosing that information outweighs the public interest in having an open
`record. See Paper 11, 3 (“It is the responsibility of the party whose
`confidential information is at issue, not necessarily the proffering party, to
`file the motion to seal.”).
`
`5
`
`
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`desire to review a black box model covered by that license agreement.
`Ex. 2022, 1. Patent Owner seeks to seal Exhibit 2022 in its entirety. We
`first note that the existence of the black box model referenced in the email
`string appears to have been publicly disclosed by Patent Owner in the
`complaint. See Ex. 2004 ¶ 33. Although the email string provides
`additional information, such as the name of the commercially available
`simulation software used to generate the black box model, Patent Owner has
`failed to explain why disclosing Patent Owner’s use of that particular
`software outweighs the public interest in a more complete and
`understandable record. See Ex. 2022, 1. We further note that the email
`string does not disclose the terms of the executed software evaluation
`agreement, which are set forth in Exhibit 2021,4 and Patent Owner fails to
`explain how disclosing the mere existence of the software evaluation
`agreement outweighs the public interest in a more complete and
`understandable record.
`Patent Owner’s Response (Paper 15), Dr. Hart’s Declaration
`(Ex. 2001), and Mr. Kali’s Declaration (Ex. 2013) summarize and discuss
`many of the Exhibits that Patent Owner seeks to seal in their entirety,
`including Exhibits 2011, 2018, and 2022 discussed above. Patent Owner
`seeks to redact from its Response and the two Declarations not only the
`summarized contents of the Exhibits Patent Owner seeks to seal, but the
`Exhibit numbers themselves. See Paper 15, 38–40; Ex. 2001 ¶ 123; Ex.
`
`
`4 Because Exhibit 2021 contains the terms of the software evaluation
`agreement, we find Exhibit 2021 to contain confidential information that can
`be protected in its entirety.
`
`6
`
`
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`2013 ¶¶ 18, 20–30. Patent Owner also seeks to redact the fact that these
`Exhibits are discussed in Patent Owner’s analysis of “Secondary
`Considerations.” See Paper 15, 35; Ex. 2001 § XI. These redactions, like
`the redactions in the underlying Exhibits, redact information that is not
`confidential or redact confidential information in a manner that does not
`leave the thrust of underlying arguments and evidence discernible.
`For completeness, we provide examples of information that is
`appropriately sealed as confidential information. As noted above, Exhibit
`2021 is a Technology Evaluation Agreement setting forth the terms by
`which Petitioner was allowed to access and evaluate Patent Owner’s black
`box model. Because this Exhibit reveals the detailed terms of the evaluation
`agreement, it is protectable in its entirety. Therefore, we grant Patent
`Owner’s request to seal Ex. 2021 in its entirety.
`Exhibit 2006 is a letter outlining a “Proposed Engagement
`Framework” having various sections, including “Background” and “Fees”
`sections, and a section indicating the proposed duration of the agreement.
`See Ex. 2006. Although some sections of Exhibit 2006 clearly contain
`confidential information (e.g., the “Fees” section), making them protectable
`in whole or in part, others do not (e.g., the “Background” section). Patent
`Owner should carefully review this document to determine whether it is
`more appropriate to request sealing the entire document, certain sections of
`the document, or certain disclosures in certain sections of the document.
`For the reasons discussed above, Patent Owner’s Motion to Seal
`Exhibit 2021 is granted and Patent Owner’s Motion to Seal its Response
`(Paper 15) and Exhibits 2001, 2006–2009, 2018–2020, 2022, and 2023 is
`
`7
`
`
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`denied without prejudice. Because we deny Patent Owner’s Motion to Seal
`its Response (Paper 15) and Exhibits 2001, 2006–2009, 2018–2020, 2022,
`and 2023, Patent Owner may file a motion to expunge these documents from
`the record. See Consolidated Trial Practice Guide5 (“TPG”) at 20. Any
`expunged document will not be considered by the Board.
`Patent Owner shall have fifteen (15) business days to: (1) identify
`confidential information in its Response and any of Exhibits 2001, 2006–
`2013, and 2018–2020, 2022, and 2023, (2) redact that information in a
`manner that allows the thrust of any underlying argument or evidence to be
`clearly discernible, and (3) file a Revised Motion to Seal setting forth, with
`particularity, the reasons why the information sought to be redacted is
`confidential and why the harm from its disclosure outweighs the strong
`public interest in having an open record. Regarding this last point, we seek
`an explanation for each item sought to be sealed, not a blanket conclusory
`statement covering all items. The amount of explanation needed will depend
`on the information sought to be protected—little explanation is needed to
`protect information that is clearly confidential and more is needed to protect
`information that is less clearly confidential. Patent Owner’s Response and
`Exhibits 2001, 2006–2013, and 2018–2020, 2022, and 2023 shall remain
`under seal until (a) Patent Owner files a revised motion to seal and the Board
`decides that motion or (b) the time granted to file a revised motion to seal
`has expired.
`Finally, we remind the parties that any confidential information that is
`relied upon in a Board decision will be made public in order to maintain a
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`8
`
`
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`complete and understandable public record of this proceeding. See TPG at
`21–22. In addition, any confidential information will ordinarily become
`public 45 days after a final judgment in this proceeding. Id. A party seeking
`to maintain the confidentiality of such information may file a motion to
`expunge the information prior to its becoming public. Id. (citing 37 C.F.R.
`§ 42.56).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion for entry of the Proposed
`Protective Order is granted, and a copy of the Proposed Protective Order is
`entered as Exhibit 3002;
`FURTHER ORDERED that Patent Owner’s Motion to seal Exhibit
`2021 is granted;
`FURTHER ORDERED that Patent Owner’s Motion to seal its
`Response (Paper 15) and Exhibits 2001, 2006–2013, 2018–2020, 2022, and
`2023 is denied without prejudice; and
`FURTHER ORDERED that Patent Owner may file, within fifteen
`(15) business days from the date of this Order, a Revised Motion to Seal one
`or more of its Response (Paper 15) and Exhibits 2001, 2006–2013, 2018–
`2020, 2022, and 2023, with public versions of these documents having
`redactions that are limited to the minimum amount necessary to protect
`confidential information, and setting forth, 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.
`
`
`9
`
`
`
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`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`FOR PETITIONER:
`
`Michael Parsons
`Andrew Ehmke
`Jordan Maucotel
`HAYNES & BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@ haynesboone.com
`jordan.maucotel@ haynesboone.com
`
`
`FOR PATENT OWNER:
`Neil C. Rubin
`Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`10
`
`
`
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