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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioners
`
`
`v.
`
`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01269
`U.S. Patent 9,219,780
`
`________
`
`
`
` PATENT OWNER’S MOTION TO SEAL
`37 C.F.R. §§42.54, 42.55
`
`
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`
`
`Patent Owner Synkloud Technologies, LLC (“PO” herein) moves to
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`submit confidential information as evidence in support of its position in the
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`above-captioned matter, and accordingly moves that Exhibits 2029, 2030, and
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`2039 submitted contemporaneously herewith, be accepted but not made public
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`and maintained confidential to a Modified Protective Order submitted herewith
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`as Exhibit 2036. In so moving, PO is guided by this Board’s Decision in
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`IPR2017-01053, Paper No. 27, and decisions cited therein, including IPR2012-
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`00001, Paper No. 34.
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`PO, as an element of its position that the claims challenged in the above-
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`captioned IPR are not obvious over prior art cited, wishes to submit two licenses
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`extended under the patent at issue, U.S. Patent No. 9,219,780 (“the ’780 patent”)
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`along with an associated claim chart as secondary indicia of non-obviousness
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`pursuant to well-established caselaw. See, e.g., Rothman v. Target Corp. 556 F.
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`3d 1310, 1321 (Fed. Cir. 2009). The public is not denied essential information
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`by sealing Exhibits 2029, 2030, and 2039. The Exhibits are two licenses
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`between the owner of the ‘780 Patent and two recognized corporations, in
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`consideration of payment of fees, along with an associated claim chart. No other
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`issues, such as sales, conditions, promotions or other issues are set forth in or
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`raised by the licenses, and thus, questions such as nexus and the like are not
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`raised. PO does not rely on the identity of the Licensees, other than to note they
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`are recognized major corporations in the computer technology field. PO does not
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`rely on the specific terms of the licenses, other than to note the licenses extended
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`
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`are in consideration of payment of money, and no other consideration flows
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`between the parties.
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`By its terms, further information with respect to the licenses and
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`associated claim chart is confined to outside counsel only. To that end, PO has
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`fashioned a Protective Order premised on the Board’s default protective order in
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`the practice guide, but altered to limit the confidential information submitted to
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`the specific counsel appearing for Petitioners in this matter. Submission of this
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`information, which Court’s have often found of value in considering questions
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`of obviousness, without seal or protection, would potentially vitiate the licenses
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`as a possible breach thereof and/or expose PO to liability.
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`Undersigned counsel has conferred with opposing counsel. Opposing
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`counsel agreed to the Modified Protective Order that is Exhibit 2036 in earlier
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`filed IPRs against patents in the same family as the ‘780 patent.
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`Accordingly, PO respectfully requests Exhibits 2029, 2030, and 2039 be
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`held confidential to the Board provisionally, pending grant of this Motion or
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`expungement if this Motion is denied.
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`Respectfully, PO submits it has met the Board’s standard for submission
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`under seal, Argentum Pharmaceuticals LLC v. Alcon Research, IPR 2017-
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`01053, Paper 27 (January 19, 2018) at p. 4. 1) The confidential information, two
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`patent licenses, is truly confidential – it is confidential by its terms. 2) Concrete
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`harm would result upon public disclosure of Exhibits 2029 or 2039, it would
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`constitute a potential breach of the very license at issue. 3) There exists a
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`genuine need to rely in the trial on the specific information sought to be sealed.
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`It is PO’s strong evidence of a judicially recognized indication of non-
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`obviousness – a patent license. 4) On balance, the interest in maintaining
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`confidentiality as to this one exhibit outweighs the strong public interest in
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`having an open record.
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`On this basis, and in light of the proposed Modified Protective Order that
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`is Exhibit 2036, PO respectfully requests grant of this Motion and acceptance of
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`Exhibits 2029, 2030, and 2039 under seal.
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`Respectfully submitted,
`
`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email:
`gonsalves@capitoliplaw.com
`
`
`
`
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. 42.6(e) and by the agreement of counsel for Petitioners, I
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`certify that on July 1, 2021, I served a complete electronic copy of the Motion on the
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`Petitioner’s lead and backup counsel at the following email addresses:
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`Lead Counsel
`
`Joseph A. Micallef
`Reg. No. 39,772
`iprnotices@sidley.com
`jmicallef@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
`
`Backup Counsel
`
`Scott M. Border
`Reg. No. 77,744
`sborder@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8818
`
`
`
`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email: gonsalves@capitoliplaw.com
`
`
`
`
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