Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 32
`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.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Seal
`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 32
`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.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Seal
`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.
`Petitioner has filed an unopposed motion to seal (1) its Reply (Paper
`24), (2) the Deposition Transcript of John Hart, Ph.D. (Ex. 1037), and (3) the
`Declaration of Fredo Durand, Ph.D. (Ex. 1038). Paper 25 (“Motion” or
`“Mot.”).2 Petitioner files the Motion “[i]n view of Patent Owner’s prior . . .
`motion to seal certain documents, and out of an abundance of caution.”
`Mot. 1. Petitioner’s proposed redactions “are made consistent with Patent
`Owner’s representations in its pending motion to seal that the material to be
`sealed and/or redacted reflects Patent Owner’s confidential business
`information.” Id. at 2. For the reasons discussed below, Petitioner’s Motion
`is denied.
`
`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
`
`
`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
`
`
`
`
`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 the confidential
`information of the party seeking the protection. 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.”).
`As noted above, Petitioner does not contend that the information it
`seeks to protect is Petitioner’s confidential information. See Mot. 2.
`Instead, Petitioner contends the information “reflects Patent Owner’s
`confidential business information.” Id. Accordingly, Petitioner’s Motion to
`seal its Reply (Paper 24) and Exhibits 1037 and 1038 is denied. Because we
`deny the Motion, Petitioner may file a motion to expunge the documents it
`sought to seal. See Consolidated Trial Practice Guide3 (“TPG”) at 20. Any
`expunged document will not be considered by the Board.
`Given Petitioner’s statement that the information sought to be
`protected was Patent Owner’s confidential information, Patent Owner shall
`have fifteen (15) business days to: (1) identify any confidential information
`in Petitioner’s Reply (Paper 24) and Exhibits 1037 and 1038, (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 motion to seal setting forth,
`with particularity, the reasons why the information sought to be redacted is
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`3
`
`
`
`
`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`
`
`
`
`confidential and why the harm from its disclosure outweighs the strong
`public interest in having an open record. Petitioner’s Reply and Exhibits
`1037 and 1038 shall remain under seal until (a) Patent Owner files such a
`motion and the Board decides that motion or (b) the time granted to file the
`motion has expired.
`In considering whether to file a motion to seal, Patent Owner should
`consider the guidance provided in our our Order denying Patent Owner’s
`Motion to Seal Patent Owner’s Response (Paper 15) and Exhibits 2001,
`2006–2012, and 2018–2023. In particular, Patent Owner should consider
`whether any of the information it seeks to seal is truly confidential given the
`public disclosures in Patent Owner’s complaint to the District Court for the
`Northern District of California. That complaint described Patent Owner’s
`meetings and correspondence with Petitioner regarding Patent Owner’s five
`element telephoto lens, dual-lens camera, associated software and
`computational algorithms, test boards, lens modules, “‘black box’ simulation
`files for . . . lens designs,” “software simulator for the computational
`algorithms for image processing,” and “description of its (then) over ten
`patent families, including low-profile telephoto lens designs . . . and
`algorithms for improving dual-aperature cameras.” Ex. 2004 ¶¶ 28–31, 33,
`35. The complaint also describes Petitioner’s “expressed interest in
`licensing [Patent Owner’s] dual camera algorithms and software” and
`requested “proposal for licensing [Patent Owner’s] intellectual property,”
`which included “over 25 patent families.” Id. at 35, 40.
`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
`4
`
`
`
`
`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 Petitioner’s Motion to seal its Reply (Paper 24) and
`Exhibits 1037 and 1038 is denied; and
`FURTHER ORDERED that Patent Owner may file, within fifteen
`(15) business days from the date of this Order, a Motion to Seal one or more
`of Petitioner’s Reply (Paper 24) and Exhibits 1037 and 1038, 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.
`
`
`5
`
`
`
`
`
`
`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
`
`
`6
`
`
`
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
