`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`AT&T SERVICES, INC. and DIRECTV, LLC,1
`Petitioners
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner
`___________________
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026 B2
`___________________
`
`MOTION UNDER 37 C.F.R. § 42.56 TO EXPUNGE CONFIDENTIAL
`INFORMATION
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a peti-
`tion in Case IPR2021-00556, which were granted, and were joined as petitioners in
`this proceeding.
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`Patent Owner Broadband iTV, Inc. (“BBiTV” or “Patent Owner”)
`
`respectfully moves to expunge all sealed documents in this proceeding, including:
`
`Patent Owner’s Response (Paper 35), Petitioner’s Reply (Paper 45), Patent
`
`Owner’s Sur-Reply (Paper 48), Petitioner’s Demonstratives (Paper 65), the
`
`transcript of the confidential portion of the oral hearing in this proceeding (Paper
`
`70), and Exhibits 1053-1055, 1068, 2036, 2050-2054, 2063, 2070, 2093, 2123-
`
`2127, 2129, 2132-2135, 2137, 2142, 2150, 2151, 2154, 2157, 2158, 2164, 2165,
`
`2178, and 2190. See Papers 57, 63.2
`
`II.
`
`PROCEDURAL BACKGROUND
`
`The Board has already granted motions to seal the confidential information
`
`in the above-listed papers and exhibits filed by the Parties. See Papers 57, 63 (the
`
`Board’s decisions granting or granting-in-part the Parties’ motions to seal). Public,
`
`redacted versions of all confidential sealed papers, declarations, deposition
`
`transcripts, and demonstratives were filed. The Board further filed the transcript of
`
`the oral hearing (Paper 70) under seal, and Patent Owner filed a public, redacted
`
`
`2 The Board already granted Patent Owner’s requests to treat settlement
`
`agreements (EX2200 and EX2300) as business confidential information, kept
`
`separate from the file of the ’026 patent. Paper 72, 3; Paper 75, 3.
`
`
`
`- 1 -
`
`
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`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`version of the transcript (Paper 76).
`
`III. ARGUMENTS
`37 C.F.R. § 42.56 provides: “After denial of a petition to institute a trial or
`
`after final judgment in a trial, a party may file a motion to expunge confidential
`
`information from the record.” See also Consolidated Trial Practice Guide (“TPG”),
`
`21-22 (“A party seeking to maintain the confidentiality of information [] may file a
`
`motion to expunge the information from the record prior to the information
`
`becoming public.”). The Board has previously explained that a party moving to
`
`expunge must show that i) “any information sought to be expunged constitutes
`
`confidential information” and ii) the movant’s interest in expunging the
`
`information “outweighs the public’s interest in maintaining a complete and
`
`understandable file history.” RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 62
`
`at 3 (P.T.A.B. Sept. 9, 2014). The rules identify confidential information as
`
`including “a trade secret or other confidential research, development, or
`
`commercial information.” 37 C.F.R. §§ 42.54(a)(7) and 42.2. And the Board must
`
`strike “a balance between the public’s interest in maintaining a complete and
`
`understandable file history and the parties’ interest in protecting truly sensitive
`
`information.” TPG, 19; 37 C.F.R. § 42.54(a).
`
`In this case, Patent Owner already demonstrated, and the Board agreed, that
`
`the sealed documents contain highly confidential, competitively sensitive business
`
`
`
`- 2 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`information, including technical information related to products under
`
`development. See Papers 37, 50, 53, 57, 58, 63. Therefore, public disclosure of the
`
`sealed documents would cause significant competitive harm to Patent Owner.
`
`There has been no change in the sensitivity or confidentiality of the information
`
`contained in the sealed documents since they were filed. Thus, Patent Owner has
`
`met its burden to show that “any information sought to be expunged constitutes
`
`confidential information.” RPX Corp., IPR2014-00171, Paper 62 at 3.
`
`The interest in expunging the sealed documents “outweighs the public’s
`
`interest in maintaining a complete and understandable file history.” Id. Moreover,
`
`the record contains public, redacted versions of all sealed papers, declarations,
`
`deposition transcripts, and demonstrative exhibits. Paper 59 (public, redacted
`
`version of Paper 35, the Patent Owner’s Response); Paper 60 (public, redacted
`
`version of Paper 48, the Patent Owner’s Sur-Reply); Paper 61 (public, redacted
`
`version of Paper 45, the Petitioner’s Reply); Paper 66 (public, redacted version of
`
`Paper 65, the Petitioner’s Hearing Demonstratives); EX1053 (public, redacted
`
`version of Confidential EX1053); EX1054 (public, redacted version of
`
`Confidential EX1054); EX1055 (public, redacted version of Confidential
`
`EX1055); EX1068 (public, redacted version of Confidential EX1068); EX2036
`
`(public, redacted version of Confidential EX2036); EX2190 (public, redacted
`
`version of Confidential EX2190).
`
`
`
`- 3 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`Additionally, no final written decision was issued in this case, and all sealed,
`
`confidential documents were submitted after trial was instituted. The confidential
`
`documents submitted during the trial thus have no effect on the determinations
`
`made in the institution decision, nor do they provide any understanding of the final
`
`result. Therefore, there is no public interest in seeing these confidential documents.
`
`Accordingly, the public’s access to the redacted versions of the sealed
`
`documents fulfills the public’s interest in maintaining a complete and
`
`understandable record. Expungement of the sealed documents from the record will
`
`not diminish the public’s understanding of the record or final result.
`
`
`
`
`
`
`
`- 4 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`IV. CONCLUSION
`For the reasons stated above, Patent Owner respectfully requests that the
`
`Board expunge all confidential information under seal in this proceeding from the
`
`record.
`
`
`
`
`Date: January 21, 2022
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Counsel for Patent Owner Broadband iTV, Inc.
`
`
`
`- 5 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing MOTION UNDER 37 C.F.R. § 42.56 TO EXPUNGE
`
`CONFIDENTIAL INFORMATION was electronically served via e-mail on
`
`January 21, 2022, in its entirety on the following counsel:
`
`Counsel for DISH Network L.L.C.:
`Alyssa Caridis (Lead Counsel)
`K. Patrick Herman (Back-up Counsel)
`Clement Roberts (Back-up Counsel)
`Will Melehani (Back-up Counsel)
`ORRICK, HERRINGTON, & SUTCLIFFE, LLP
`A8CPTABDocket@orrick.com
`P52PTABDocket@orrick.com
`croberts@orrick.com
`wmelehani@orrick.com
`
`
`
`Counsel for AT&T Services, Inc. and
`DIRECTV, LLC:
`Roger Fulghum (Lead Counsel)
`Jeffrey S. Becker (Back-up Counsel)
`Morgan G. Mayne (Back-up Coun-
`sel)
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`jeff.becker@bakerbotts.com
`morgan.mayne@bakerbotts.com
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons (Reg. No. 65,367)
`Counsel for Patent Owner Broadband iTV, Inc.
`
`Date: January 21, 2022
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`17762907.docx
`
`
`
`
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