Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 78
`Date: January 28, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC. and DIRECTV, LLC,
`Petitioner,
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`____________
`
`IPR2020-01267
`Patent 10,028,026 B2
`____________
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Patent Owner’s Motion to Expunge Confidential Information
`37 C.F.R. § 42.56
`
`
`
`
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`

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`IPR2020-01267
`Patent 10,028,026 B2
`
`
`This inter partes review was terminated on December 15, 2021.
`Paper 75. Patent Owner moves to expunge all documents filed under seal in
`this proceeding, except for Exhibits 2200 and 2300, which are settlement
`agreements that will be kept separate under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 77 (“Mot.”); see also Papers 72
`and 75 (ordering, respectively, that Exhibits 2200 and 2300 be kept separate
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)). In particular, Patent
`Owner seeks expungement of the following: Papers 35, 45, 48, 65, 70;
`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. Mot. 1.1
`The Board’s Rules provide that, “[a]fter 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.” 37 C.F.R. § 42.56. A judgment
`includes “termination of a proceeding.” 37 C.F.R. § 42.2. The Board’s
`Consolidated Trial Practice Guide2 (“CPTG”) provides the following:
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`is an expectation that information will be made public where the
`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`
`1 Exhibits 1053–1055, 1068, 2036, and 2190 have two entries, one public
`and one confidential. We understand Patent Owner’s motion to request
`expungement of the confidential entries at these exhibit numbers.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
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`IPR2020-01267
`Patent 10,028,026 B2
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`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`
`CPTG at 21–22.
`In its motion, Patent Owner adequately addresses the issues raised in
`the CPTG. Mot. 1–4. In particular, Patent Owner notes that “no final
`written decision was issued in this case, and all sealed, confidential
`documents were submitted after trial was instituted.” Mot. 4. Patent Owner
`argues, therefore, that these confidential documents had “no effect on the
`determinations made in the institution decision, nor do they provide any
`understanding of the final result.” Mot. 4. Patent Owner also notes that “the
`record contains public, redacted versions of all sealed papers, declarations,
`deposition transcripts, and demonstrative exhibits.” Mot. 3 (citing
`Papers 59–61, 66; Exs. 1053–1055, 1068, 2036, 2190).3 Under these
`circumstances, we grant Patent Owner’s motion.
`In consideration of the foregoing, it is hereby:
`ORDERED that Papers 35, 45, 48, 65, and 70 and Exhibits 2050–
`2054, 2063, 2070, 2093, 2123–2127, 2129, 2132–2135, 2137, 2142, 2150,
`2151, 2154, 2157, 2158, 2164, 2165, and 2178 be expunged; and
`
`
`3 Because we are expunging the confidential versions of the parties’
`demonstratives, we dismiss as moot Patent Owner’s motion to seal the
`demonstratives (Paper 67).
`
`3
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`IPR2020-01267
`Patent 10,028,026 B2
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`FURTHER ORDERED that the confidential entries at Exhibits 1053–
`1055, 1068, 2036, and 2190 be expunged.
`
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`4
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`IPR2020-01267
`Patent 10,028,026 B2
`
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`FOR PETITIONER:
`
`Alyssa Caridis
`A8cptabdocket.com
`
`K. Patrick Herma
`P52ptabdocket@orrick.com
`
`
`FOR PATENT OWNER:
`
`Roger Fulghum
`Roger.fulghum@bakerbotts.com
`
`Jeffrey Becker
`Jeff.becker@bakerbotts.com
`
`
`
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`5
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`