Trials@uspto.gov
`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.
`
`
`
`
`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
`
`
`
`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
`
`
`
`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
`
`4
`
`
`
`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.
`
`5
`
`
`
`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
`
`
`
`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
`
`
`
`
`
`
`7
`
`
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
