`571-272-7822
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`
`
`
`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
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`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
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`IPR2020-00905
`IPR2020-00906
`Patent 10,255,479 B2
`
`
`
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`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
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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
`
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`6
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