UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO SEAL AND FOR ENTRY OF A
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
`PATENT OWNER’S REPLY TO PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO SEAL AND FOR ENTRY OF A
`PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54
`
`
`
`TABLE OF CONTENTS
`
`Page
`Petitioner’s opposition mischaracterizes the scope of the protective order and
`conceals material information from the Board. ............................................... 1
`Petitioner’s employees need not access confidential information. ................. 2
`The scope of the AEO designation is adequately defined. .............................. 3
`PO has shown good cause for entering the proposed protective order and
`granting its motion to seal. .............................................................................. 4
`The Board should enter PO’s proposed protective order. ............................... 5
`
`I.
`
`II.
`III.
`IV.
`
`V.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Bumble Trading Inc. v. Match Group, LLC,
`IPR2019-00842, Paper 23 (P.T.A.B. Apr. 29, 2020) ........................................... 4
`Cisco Systems, Inc. v. Crossroads Systems, Inc.,
`IPR2014-01544, Paper 50 (P.T.A.B. Jan. 29, 2016) ............................................ 5
`Endo Pharms., Inc. v. Depomed, Inc.,
`IPR2014-00652, Paper 61 (P.T.A.B. June 3, 2015) ............................................. 4
`Quest USA Corp. v. PopSockets LLC,
`IPR2018-00497, Paper 59 (P.T.A.B. Aug. 12, 2019) ........................................... 4
`
`ii
`
`
`
`Patent Owner (“PO”) seeks to seal a limited amount of confidential, highly
`
`sensitive commercial information evidencing the commercial success of PO’s
`
`claimed inventions. This confidential information—a mere two columns of a table
`
`in the declaration of Mr. Ryan Granger (EX2042, ¶73) and four words in the Patent
`
`Owner Response (Paper 28, 77; Paper 29, 77)—is precisely the type of information
`
`to be protected from disclosure pursuant to 37 C.F.R. § 42.54(a)(7). Both parties
`
`have agreed in the related district court litigation that confidential commercial
`
`information such as this merits heightened protection under an Attorneys’ Eyes Only
`
`(“AEO”) designation. Paper 27, Appendix C, § 2.2. PO’s modified protective order
`
`ensures that this information is afforded the same protection in this proceeding.
`
`I.
`
`Petitioner’s opposition mischaracterizes the scope of the protective
`order and conceals material information from the Board.
`Petitioner wrongly contends that “MacNeil’s restrictions would deny access
`
`to all individuals at Petitioner Yita, including in-house counsel[.]” Paper 32
`
`(“Opposition”), 1. Indeed, Petitioner’s opposition is premised on the alleged
`
`inability of its in-house counsel to access PO’s confidential information. The Board
`
`should reject Petitioner’s argument for at least two reasons. First, the proposed
`
`protective order does not preclude in-house counsel from seeing all confidential
`
`information that may be filed. Only access to information designated “Protective
`
`Order Material – Attorneys’ Eyes Only” is prohibited, consistent with the protections
`
`afforded by the district court. Paper 27, Appendix A, §§ 2-3.
`
`1
`
`
`
`Second, Petitioner’s belated arguments concerning in-house counsel are a
`
`distraction. To the best of PO’s knowledge, based on dealings with Petitioner here
`
`and in the related litigation, Petitioner has no in-house counsel. Petitioner never
`
`raised in-house counsel’s access during the parties’ discussions of the protective
`
`order. EX1038. Rather, Petitioner flatly refused to agree to any AEO designation.
`
`Id. When Petitioner first raised this issue in its opposition, PO inquired about
`
`Petitioner’s in-house counsel. EX2139, 1. Petitioner’s counsel deflected and
`
`refused to confirm whether it even employs in-house counsel. Id. Because Petitioner
`
`appears to have no in-house counsel, permitting Petitioner’s representatives of
`
`record to access AEO material, as provided in the proposed order, is sufficient.
`
`Petitioner’s employees need not access confidential information.
`II.
`The Board’s rules require that an opposition to a motion for entry of a
`
`protective order “state with particularity the grounds for modifying the proposed
`
`Protective Order” and that “[t]he party seeking the modification shall have the
`
`burden of proving that modifications are necessary.” PTAB Consolidated Trial
`
`Practice Guide November 2019 (“CTPG”), 114. Petitioner argues that “MacNeil
`
`should not be able to argue that certain evidence demonstrates patentability on the
`
`one hand, while simultaneously arguing that the very same evidence cannot be seen
`
`by Yita on the other.” Opposition, 1. But Petitioner fails to explain why allowing
`
`Petitioner’s employees to access PO’s confidential information is necessary, or how
`
`2
`
`
`
`Petitioner is prejudiced by not having access to AEO material. The redactions to the
`
`Patent Owner Response and Exhibit 2042 are minimal, and the thrust of PO’s
`
`argument—that products embodying the claimed inventions are commercially
`
`successful—is clear from the redacted, public versions of the filings. Petitioner’s
`
`employees (including in-house counsel, if they exist) do not need access to the
`
`underlying confidential sales and gross revenue information in order to respond.
`
`Further, Petitioner fails to explain why an AEO designation consistent with
`
`the district court protective order should not apply here. Petitioner’s vague reference
`
`to alleged differences in the scope of discovery is misguided given the minimal
`
`amount of confidential information at issue. And nothing about an AEO designation
`
`is “inconsistent with the integrity and efficient administration” of this proceeding as
`
`Petitioner alleges. Opposition, 5; CTPG, 115 (permitting modifications to provide
`
`additional tiers or categories of confidential information, such as AEO). The Board
`
`should not allow Petitioner to use its baseless opposition to an AEO designation in
`
`this proceeding to circumvent protections put in place by the district court.
`
`III. The scope of the AEO designation is adequately defined.
`As explained in PO’s motion, the AEO designation is intended to be
`
`commensurate in scope with the analogous provision of the district court protective
`
`order. Paper 27, 4, Appendix C. The district court protective order provides that
`
`AEO material includes information that “would otherwise be designated as
`
`3
`
`
`
`confidential” and is “reasonably believed by the designating party to represent a
`
`trade secret or other confidential commercial information of such sensitive nature
`
`that its dissemination cannot adequately be covered by the protections set forth for
`
`confidential materials.” Paper 27, Appendix C, § 2.2. The limited, confidential sales
`
`and gross revenue information that PO seeks to seal meets these criteria.
`
`Thus, Petitioner’s assertion that “MacNeil does not define the type of
`
`information to be included in its additional category” is incorrect. Opposition, 4.
`
`Indeed, the Board regularly enters protective orders with analogous AEO provisions.
`
`See, e.g., Quest USA Corp. v. PopSockets LLC, IPR2018-00497, Paper 59 at 87-88
`
`(P.T.A.B. Aug. 12, 2019) (entering protective order that includes a second level of
`
`confidentiality designation analogous to the one here); Bumble Trading Inc. v. Match
`
`Group, LLC, IPR2019-00842, Paper 23 (P.T.A.B. Apr. 29, 2020) (entering
`
`substantially similar protective order to the one at issue here). This is also not a
`
`situation where the Board is asked to review the district court protective order to
`
`identify the applicable provisions. PO’s motion cites the relevant, limited portion of
`
`the district court protective order. Paper 27, 7 (citing Appendix C, §§ 2-3).
`
`IV.
`
`PO has shown good cause for entering the proposed protective
`order and granting its motion to seal.
`The Board regularly enters protective orders of similar scope to the one PO
`
`proposed (see, e.g., Quest USA Corp., IPR2018-00497, Paper 59 at 87-90) and grants
`
`motions to seal confidential sales and revenue information. Id.; see also Endo
`
`4
`
`
`
`Pharms., Inc. v. Depomed, Inc., IPR2014-00652, Paper 61 at 2 (P.T.A.B. June 3,
`
`2015); Cisco Systems, Inc. v. Crossroads Systems, Inc., IPR2014-01544, Paper 50 at
`
`29 (P.T.A.B. Jan. 29, 2016). Petitioner fails to address the Quest decision, which
`
`entered a protective order with an AEO designation on analogous facts. Rather,
`
`relying on Endo Pharms. and Cisco Systems, Petitioner argues PO has not shown
`
`good cause for modifying the default protective order. But whether Endo Pharms.
`
`or Cisco Systems involved an AEO designation is irrelevant. The parties here are
`
`direct competitors and the risks associated with allowing Petitioner’s employees
`
`access to PO’s competitively-sensitive business information (even with the standard
`
`acknowledgement) is a concrete harm justifying deviations from the default order.
`
`The Board should enter PO’s proposed protective order.
`V.
`Petitioner selectively cites an outdated version of the Trial Practice Guide to
`
`wrongly suggest that the Board should automatically enter the default protective
`
`order. Opposition, 1-2. The 2019 CTPG, however, merely states that absent
`
`agreement among the parties, the “default protective order may be entered[.]”
`
`CTPG, 107. For the reasons set forth above and in PO’s motion, the Board should
`
`enter PO’s proposed protective order and grant PO’s motion to seal.
`
`Dated July 7, 2021
`
`Respectfully submitted,
`
`/Chad C. Walters/
`Chad C. Walters (Reg. No. 48,022)
`Counsel for Patent Owner MacNeil IP LLC
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`7th day of July, 2021, a complete and entire copy of this PATENT OWNER’S
`
`REPLY TO PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`MOTION TO SEAL AND FOR ENTRY OF A PROTECTIVE ORDER
`
`PURSUANT TO 37 C.F.R. § 42.54 was served on Petitioner via electronic mail at
`
`the following addresses:
`
`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
`
`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
`
`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
`
`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
`
`John J. Bamert, Reg. No. 74,859
`bamert@LoweGrahamJones.com
`
`PTAB@sternekessler.com
`
`July 7, 2021
`Date
`
`/Chad C. Walters/
`Chad C. Walters (Reg. No. 48,022)
`BAKER BOTTS L.L.P.
`(214) 953-6511
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Attorneys for Patent Owner, MacNeil IP
`LLC
`
`6
`
`
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