`571-272-7822
`
`Paper 48
`Date: July 13, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YITA LLC,
`Petitioner,
`v.
`MACNEIL IP LLC,
`Patent Owner.
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)1
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion to Seal and for Entry of a Protective Order
`and Entering the Board’s Default Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 This Order applies to both proceedings. The parties are not authorized to
`use this caption.
`
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`I.
`INTRODUCTION
`
`On May 5, 2021, Patent Owner filed its Patent Owner Response under
`seal in both of the captioned cases. Paper 28.2 Patent Owner also filed a
`redacted version of the Patent Owner Response. Paper 29. In accordance
`with our rules, Patent Owner filed a Motion to Seal the Patent Owner
`Response and Exhibit 2042 and for Entry of a Protective Order. Paper 27
`(the “Motion” or “Mot.”). On June 6, 2021, Petitioner filed an Opposition to
`Patent Owner’s Motion for Entry of a Protective Order. Paper 32 (the
`“Opposition” or “Opp.”). On July 7, 2021, Patent Owner filed a Reply to
`Petitioner’s Opposition to Patent Owner’s Motion to Seal and for Entry of a
`Protective Order. Paper 46 (the “Reply”). For the reasons discussed below,
`we deny Patent Owner’s Motion for Entry of the Protective Order attached
`to the Motion, enter the Board’s Default Protective Order, and deny without
`prejudice Patent Owner’s Motion to Seal the Patent Owner Response and
`Exhibit 2042.
`
`II. DISCUSSION
`a. Protective Order
`Patent Owner proposes a Protective Order (the “Proposed Protective
`Order”) that deviates from the Board’s Default Protective Order. Mot. 1–4.
`The Proposed Protective Order, inter alia, adds an “Attorneys’ Eyes Only”
`designation, limits access to Protective Order Material by excluding support
`personnel for in-house counsel from receiving confidential information, and
`prohibits parties, employees of parties including in-house counsel from
`accessing information designated “Attorneys’ Eyes Only.” Id. at 1–2.
`
`
`2 We refer to the Papers filed in IPR2020-01139. For the purposes of this
`motion, the papers filed in IPR2020-01142 are substantially the same.
`
`2
`
`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`Patent Owner contends that these restrictions are necessary because
`“[p]roviding the parties or employees of parties access to confidential
`materials could cause harm to the producing party, as could providing
`unrestricted access to in-house counsel.” Id. at 2 (emphasis added). The
`Proposed Protective Order does not contain a definition of or description of
`materials that would fall under the category of “Attorneys’ Eyes Only.” See
`generally Mot. App. B. Rather, Patent Owner directs us to a definition of
`the “Attorneys’ Eyes Only category” in a District Court Protective Order
`entered into by Patent Owner and a Real Party-in-Interest of Petitioner.
`Reply 3 (citing Mot. App. C). Patent Owner further contends that the
`“designation is not overly inclusive such that the parties are encouraged to
`categorize all or most documents as such” and “contemplates that the parties
`will only use this designation for documents that would qualify for the
`designation in the district court proceeding.” Mot. 4.
`Petitioner counters that the “Board’s [D]efault [P]rotective [O]rder is
`sufficient” and the “modified protective order imposes unduly prejudicial
`restrictions that are inconsistent with the integrity of this proceeding.”
`Opp. 1. Petitioner contends that Patent Owner “should not be able to argue
`that certain evidence demonstrates patentability on one hand, while
`simultaneously arguing that the very same evidence cannot be seen by”
`Petitioner on the other. Id; see also id. at 5 (arguing against prohibition on
`in-house counsel and other personnel viewing Attorney’s Eyes Only
`material). For the following reasons, we deny Patent Owner’s Motion to
`enter the Proposed Protective Order, and we order entry of the Board’s
`Default Protective Order.
`Patent Owner contends that the designation of “Attorneys’ Eyes
`Only” is necessary to protect it from unspecified harm and it will only use
`
`3
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`the designation of “Attorneys’ Eyes Only” for material that would qualify
`for this designation under the terms of the District Court protective order.
`Mot. 2–4. These contentions are belied by the sealed documents filed by
`Patent Owner.
`In the Patent Owner Response, Patent Owner argues that the patented
`invention has achieved commercial success. Paper 29, 77–78. In support of
`this assertion, Patent Owner relies on total gross revenues from sale of all
`products purportedly made in accordance with the teachings of the
`challenged patents from 2004 to the present. Id. at 77. Thus, it provides and
`redacts two numbers from the Patent Owner Response. Id. First, it provides
`total gross revenue in 2020 for these products and, second, it provides and
`redacts aggregate gross revenue from those products since 2004. Id. Patent
`Owner also filed a Declaration of Ryan Granger under seal. Ex. 2042. In
`the public version of this declaration, Patent Owner redacted two columns
`from a table setting forth the total number of products sold per year and the
`gross revenue per year from 2004 to 2020. Id. at 31. None of the underlying
`internal documents from which this information was determined is filed.
`Because the redacted material was prepared for this litigation and
`contains merely total aggregate numbers, we question whether the redacted
`material would even qualify to be sealed in this case regardless of the
`provisions of any protective order. In addition, and contrary to Patent
`Owner’s assertion, the redacted information does not fit within the definition
`of material restricted to “Outside Counsel Attorneys’ Eyes Only” in the
`District Court Order. The District Court’s definition is:
`“Outside Counsel Attorneys[’] Eyes Only” material shall include
`documents and tangible things produced or otherwise exchanged that
`(1) would otherwise be designated as confidential and (2) are
`reasonably believed by the designating party to represent a trade
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`4
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`secret or other confidential information of such sensitive nature that
`its dissemination cannot adequately be covered by the protections set
`forth for confidential materials. For example, financial and tax
`documents, molding, design, or other creation information would be
`considered Outside Counsel Attorneys’ Eyes Only.
`Mot., App. C ¶ 2.2.
`Patent Owner fails to persuade us that the redacted information is
`either a trade secret or of such a sensitive nature that it should be designated
`Attorneys Eyes Only. Because the Patent Owner Response and Exhibit
`2042 are the only documents filed under seal, we do not see the necessity for
`the deviations from the Board’s Default Protective Order in the Proposed
`Protective Order. Therefore, we determine that the Board’s Default
`Protective Order will govern this case. See Consolidated Trial Practice
`Guide3, 107 (Nov. 2019) (“The parties are encouraged to agree on the entry
`of a stipulated protective order. Absent such agreement, the default
`protective order may be entered by the Board.”).
`b. Motion to Seal
`Patent Owner moves to seal the Patent Owner Response and Exhibit
`2042. Mot. 6–8. Petitioner does not oppose the motion to seal. See
`generally Opp.
`
`In light of our decision to enter the Board’s Default Protective Order
`in lieu of the Proposed Protective Order, we will maintain the sealed status
`of the Patent Owner Response and Exhibit 2042. However, Patent Owner
`shall have 14 days from the entry of this order to address whether the there is
`good cause under the standard articulated in Argentum Pharms. LLC v.
`Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB January 19, 2018)
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`5
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`(informative) to maintain these documents as sealed. In particular, Patent
`Owner should address any alleged concrete harm that would result if this
`information is disclosed to the public or to Petitioner under the terms of the
`Board’s Default Protective Order.
`
` In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Enter the Proposed
`Protective order is denied;
`FURTHER ORDERED that the provisions of the Board’s Default
`Protective Order set forth in Appendix C of the Board’s November 2019
`Consolidated Trial Practice Guide shall govern these proceedings;
`FURTHER ORDERED that Patent Owner’s Motion to Seal the Patent
`Owner Response and Exhibit 2042 is denied without prejudice;
`FURTHER ORDERED that within 14 days of the entry of this Order,
`Patent Owner shall submit a brief, not to exceed five pages, to support its
`position that good cause exists to seal the Patent Owner Response and
`Exhibit 2042;
`FURTHER ORDERED that if Patent Owner fails to file its brief
`within 14 days, the Patent Owner Response and Exhibit 2042 shall be re-
`designated as publically available; and
`FURTHER ORDERED that no further briefing is authorized.
`
`
`6
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`
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`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`For PETITIONER:
`
`Mark Walters
`LOWE GRAHAM JONES PLLC
`walters@lowegrahamjones.com
`
`Ralph Powers
`Jason Fitzsimmons
`Stephen Merrill
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`Tpowers-ptab@sternekessler.com
`Jfitzsimmons-ptab@sternekessler.com
`Smerrill-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Jefferson Perkins
`PERKINS IP LAW GROUP LLC
`jperkins@perkinsip.com
`
`David Wille
`Chad Walters
`Clarke Stavinhoa
`BAKER BOTTS LLP
`David.wille@bakerbotts.com
`chad.walters@bakerbotts.com
`Clarke.stavinhoa@bakerbotts.com
`
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