Trials@uspto.gov
`571-272-7822
`
`
`Paper 57
`Date: October 7, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, L.L.C., AT&T SERVICES, INC.,
`and DIRECTV, LLC,1
`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.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting-in-Part Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and
`a petition in Case IPR2021-00556, which were granted, and, therefore, have
`been joined as petitioners in this proceeding.
`
`
`571-272-7822
`
`
`Paper 57
`Date: October 7, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, L.L.C., AT&T SERVICES, INC.,
`and DIRECTV, LLC,1
`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.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting-in-Part Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and
`a petition in Case IPR2021-00556, which were granted, and, therefore, have
`been joined as petitioners in this proceeding.
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`
`Patent Owner filed a motion to seal Exhibits 2035–2038, 2047,
`2050–2061, 2063–2068, 2070, 2073–2102, 2104–2109, 2117–2127,
`2129–2151, 2154–2166, 2177–2179, and 2181–2185, as well as portions of
`its Response referring to the exhibits filed under seal. Paper 37 (“Mot.”).
`Patent Owner filed the exhibits and an unredacted version of its Response
`(Paper 35) as “Parties and Board Only” in the Patent Trial and Appeal Board
`End to End (PTAB E2E) system, and filed a redacted version of the
`Response (Paper 36) as “Public.” Patent Owner requests entry of the
`Board’s default protective order. Mot. 1, 10, App’x A. Petitioner did not
`file an opposition to the motion to seal.
`Petitioner filed additional motions to seal portions of Petitioner’s
`Reply and Patent Owner’s Sur-Reply referring to the exhibits previously
`filed under seal. Papers 50, 53. The parties filed unredacted versions of the
`Reply (Paper 45) and Sur-Reply (Paper 48) as “Parties and Board Only,”
`and redacted versions of the Reply (Paper 54) and Sur-Reply (Paper 49) as
`“Public.” Patent Owner states that Petitioner does not oppose the motions.
`See Paper 50, 1; Paper 53, 1.
`There is a strong public policy in favor of making information filed in
`an inter partes review open to the public, especially because the proceeding
`determines the patentability of claims in an issued patent and, therefore,
`affects the rights of the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
`§ 42.14, the default rule is that all papers filed in an inter partes review are
`open and available for access by the public; a party, however, may file a
`concurrent motion to seal and the information at issue is sealed pending the
`outcome of the motion. Only “confidential information” is protected from
`disclosure. 37 C.F.R. § 42.54. In that regard, the Patent Trial and Appeal
`
`
`
`2
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`Board Consolidated Trial Practice Guide (Nov. 2019), 19, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice
`Guide”), provides:
`The rules aim to 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.
`. . .
`identify confidential
`Confidential Information: The rules
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. 37 C.F.R. § 42.54.
`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
`§ 42.54(a).
`“Good cause” for sealing is established by a “sufficient
`explanation as to why” the “information sought to be sealed is
`confidential information,” a demonstration that the information
`is not “excessively redacted,” and a showing that, on balance,
`the strong “public[] interest in maintaining a complete and
`understandable record” is outweighed by “the harm to a party,
`by disclosure of information” and “the need of either party to
`rely specifically on the information at issue.” Consequently,
`a movant to seal must demonstrate adequately that (1) the
`information sought
`to be sealed
`is
`truly confidential,
`(2) a concrete harm would result upon public disclosure,
`(3) there exists a genuine need to rely in the trial on the specific
`information sought to be sealed, and (4), on balance, an interest
`in maintaining confidentiality outweighs the strong public
`interest in having an open record.
`Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27
`at 3–4 (PTAB Jan. 19, 2018) (informative) (citations omitted) (“Argentum”).
`The filing party bears the burden of proof in showing entitlement to the
`relief requested in a motion to seal. 37 C.F.R. § 42.20(c).
`
`
`
`3
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`
`Patent Owner categorizes the documents filed under seal into five
`groups, which we address in turn.
`Inventor Emails: Patent Owner argues that Exhibits 2047,
`2056–2060, 2064, 2065, 2068, 2073–2092, 2094–2102, 2104–2109,
`2117–2119, 2121, 2122, 2130, 2131, 2136, 2138–2141, 2143–2149,
`2155, 2156, 2159–2163, 2166, 2179, and 2181–2184 are “company emails
`that describe the design of [Patent Owner’s] systems, internal company
`communications involving other employees and personally identifiable
`information, as well as communications with its attorney of record.”
`Mot. 6–7. According to Patent Owner, each of the exhibits “contains highly
`sensitive and proprietary technical information about Patent Owner’s
`product development as it relates to design, implementation, and testing.”
`Id. at 7. Patent Owner states that “all relevant information [in the exhibits]
`is highly sensitive confidential business information,” and, thus, Patent
`Owner did not file redacted versions of the exhibits. Id.
`We have reviewed the referenced materials and note that it appears
`that significant portions of the emails do not include confidential
`information (e.g., portions of Exhibits 2056, 2065, 2073, 2075, 2077–2086,
`2089, 2091, 2096–2100, 2106–2108, 2141, and 2181). Further, Patent
`Owner has not explained with any particularity why the content of each
`exhibit is “confidential information” under 35 U.S.C. § 316(a)(7) and
`37 C.F.R. § 42.54, other than to assert that the exhibits as a whole pertain to
`either product development, internal company communications, or
`communications with attorneys. See Mot. 6–7. Nor does Patent Owner
`provide an explanation as to any of the considerations identified above for
`establishing good cause to seal material in an inter partes review. See
`
`
`
`4
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`Argentum, Paper 27 at 3–4. Patent Owner has not made a sufficient showing
`of good cause with respect to the exhibits categorized as “Inventor Emails.”
`Technical Documents: Patent Owner argues that Exhibits 2050–2055,
`2063, 2070, 2093, 2123–2127, 2129, 2132–2135, 2137, 2142, 2150, 2151,
`2154, 2157, 2158, 2164, 2165, and 2178 are “technical documents
`describing the design and implementation of Patent Owner’s products,” each
`of which in its entirety is “highly sensitive and proprietary technical
`information about Patent Owner’s product development as it relates to
`design, implementation, and testing.” Mot. 7. Upon reviewing the materials
`sought to be sealed, it appears that Patent Owner’s characterization is
`accurate for each of the exhibits, with one exception. Exhibit 2055 appears
`to fall under the category of “Inventor Emails” rather than “Technical
`Documents.” Patent Owner has established good cause to seal all other
`exhibits categorized as “Technical Documents.”
`Draft Patent Applications: Patent Owner argues that Exhibits 2061,
`2066, 2067, 2120, 2177, and 2185 are “material for Patent Owner’s draft
`patent applications” that “include confidential material and appear to have
`been prepared with the assistance of counsel.” Mot. 8. No further
`explanation is provided. Patent Owner has not explained sufficiently and
`with particularity why the content of each exhibit is “confidential
`information” under 35 U.S.C. § 316(a)(7) and 37 C.F.R. § 42.54, or
`addressed any of the considerations identified above for establishing good
`cause. See Mot. 8; Argentum, Paper 27 at 3–4. Patent Owner has not made
`a sufficient showing of good cause with respect to the exhibits categorized
`as “Draft Patent Applications.”
`
`
`
`
`5
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`
`Declarations: Patent Owner argues that declarations from Michael
`Shamos (Exhibit 2035), Milton Diaz Perez (Exhibit 2036), Leighton Chong
`(Exhibit 2037), and Clifton Kagawa (Exhibit 2038) “describe[] in detail and
`refer[] to confidential documents [filed under seal] related to conception of
`the claimed subject matter, diligence to a reduction to practice, and an actual
`reduction to practice.” Mot. 8–10. Patent Owner filed public redacted
`versions of the declarations, but does not address in its motion the specific
`redacted portions of the declarations, describe what they include, or explain
`why the redacted portions constitute “confidential information” under
`35 U.S.C. § 316(a)(7) and 37 C.F.R. § 42.54. Further, as explained above,
`Patent Owner has not established good cause to seal some of the underlying
`exhibits discussed by the declarants. Accordingly, Patent Owner has not
`made a sufficient showing of good cause with respect to all redacted
`portions of the declarations sought to be maintained under seal.
`Patent Owner’s Response, Petitioner’s Reply, and Patent Owner’s
`Sur-Reply: Patent Owner argues that portions of the Response, Reply, and
`Sur-Reply describe content from the exhibits filed under seal and, thus, the
`parties filed redacted versions of the papers. See Mot. 8; Paper 50, 3–4;
`Paper 53, 2–3. As explained above, Patent Owner has not established good
`cause to seal some of the underlying exhibits that were filed under seal.
`Accordingly, Patent Owner has not made a sufficient showing of good cause
`with respect to all redacted portions of the papers sought to be maintained
`under seal.
`In summary, we grant Patent Owner’s motions to seal as to certain of
`the exhibits categorized as “Technical Documents”: Exhibits 2050–2054,
`2063, 2070, 2093, 2123–2127, 2129, 2132–2135, 2137, 2142, 2150, 2151,
`
`
`
`6
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`2154, 2157, 2158, 2164, 2165, and 2178. We do not grant the motions as to
`all other materials sought to be sealed. Rather than denying the motions and
`making the other materials filed under seal immediately available to the
`public, however, we will permit Patent Owner to file a revised motion to
`seal. The motion should cover all materials that Patent Owner believes
`should be maintained under seal, and should explain individually and in
`detail why each individual exhibit or paper includes confidential
`information. If, upon reconsideration, Patent Owner believes that any
`portions of the exhibits or papers are not confidential information, Patent
`Owner should file with the revised motion to seal a public redacted version
`of the respective exhibit or paper. See Trial Practice Guide at 22 (noting that
`the Board’s rules “encourage[] parties to redact sensitive information, where
`possible, rather than seeking to seal entire documents”). If no revised
`motion to seal is received for a particular exhibit or paper, the document will
`be unsealed.
`We also advise the parties that “[c]onfidential information that is
`subject to a protective order ordinarily would become public . . . 45 days
`after final judgment in a trial.” Id. at 21–22. “There is an expectation that
`information will be made public where the existence of the information . . .
`is identified in a final written decision following a trial.” Id. at 22. “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
`becoming public.” Id.; see 37 C.F.R. § 42.56.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s motions to seal (Papers 37, 50, and
`53) are granted-in-part and Exhibits 2050–2054, 2063, 2070, 2093,
`
`
`
`7
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`2123–2127, 2129, 2132–2135, 2137, 2142, 2150, 2151, 2154, 2157, 2158,
`2164, 2165, and 2178 shall remain under seal;
`FURTHER ORDERED that the Board’s default protective order is
`entered and shall govern the treatment of confidential information in this
`proceeding;
`FURTHER ORDERED that Patent Owner is authorized to file, by
`October 14, 2021, a revised motion to seal as to any of the exhibits and
`papers filed under seal but for which the motions to seal have not been
`granted; and
`FURTHER ORDERED that any opposition to the revised motion to
`seal is due by October 21, 2021, and no reply is authorized.
`
`
`
`
`8
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`FOR PETITIONER DISH NETWORK L.L.C.:
`
`Alyssa Caridis
`K. Patrick Herman
`Clement Roberts
`Will Melehani
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`p52ptabdocket@orrick.com
`
`FOR PETITIONERS AT&T SERVICES, INC. and DIRECTV, LLC:
`
`Robert Fulghum
`Jeffery S. Becker
`Morgan G. Mayne
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`jeff.becker@bakerbotts.com
`morgan.grissum@bakerbotts.com
`
`
`
`
`9
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`FOR PATENT OWNER:
`
`Sal Lim
`David Alberti
`Hong Lin
`Russell Tonkovich
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
`& BELLOLI LLP
`slim@feinday.com
`dalberti@feinday.com
`hlin@feinday.com
`
`Michael D. Specht
`Jason A. Fitzsimmons
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`
`Kevin Greenleaf
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`
`
`
`
`
`
`10
`
`
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