Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 56
`Date: November 30, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Unopposed Motions to Seal and
`for Entry of Joint Proposed Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 56
`Date: November 30, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Unopposed Motions to Seal and
`for Entry of Joint Proposed Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
` INTRODUCTION
`
`With our authorization, Petitioners Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc. (collectively, “Samsung”) filed an
`unopposed Motion to Seal (Paper 39) the Patent Owner Response and
`Exhibits 2026 and 2028. This Motion also include a joint Proposed
`Protective Order agreed by the parties (Paper 39, App’x A). Samsung later
`filed an unopposed Motion to Seal Neonode’s Sur-reply (Paper 51). We
`address these motions below.
`
`A.
`
`PROPOSED PROTECTIVE ORDER
`
`The joint Proposed Protective Order differs from the Default
`Protective Order in two significant ways. See Ex. 1047 (marked-up version
`comparing the proposal with the Default Protective Order). First, it adds to
`the normal confidentiality category a heightened confidentiality tier
`designated as “SAMSUNG-NEONODE-CONFIDENTIAL—APPLE
`ATTORNEY’S EYES ONLY” to cover material that “constitutes or
`includes, in whole or in part, confidential or proprietary information or trade
`secrets of the Party and shared between the Samsung and Neonode Parties or
`their predecessors in interest.” Ex. 1047, 1. These documents are accessible
`to Apple’s outside counsel, but not to other Apple party representatives who
`were not involved in the preparation or drafting of the protected materials.
`See id. at 2–3.
`Second, the proposal alters who may have access to material in the
`lower confidentiality tier: it allows persons with prior knowledge concerning
`
`
`
`
`2
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`the materials to continue to have access, regardless of their affiliation with a
`party in this proceeding. See Ex. 1047, 4.
`Samsung notes that these alterations mirror those made in a protective
`order the Board approved in a related proceeding involving similar
`documents and confidentiality issues. Paper 39, ix (citing Samsung
`Electronics Co. v. Neonode Smartphone LLC, IPR2021-00145, Paper 52
`(PTAB Dec. 17, 2021)).
`For the reasons the Board outlined in its order granting the proposed
`protective order in the related inter partes review, we agree that there is
`good cause to enter the proposed protective order, and that the modifications
`to the Default Protective Order are reasonable under the circumstances. See
`IPR2021-00145, Paper 52, at 2–3. Thus, we grant Samsung’s unopposed
`request to enter the Proposed Protective Order by adopting Appendix A of
`Paper 39 as the Protective Order in this proceeding.
`We remind the parties of the public’s interest in maintaining a
`complete and understandable file history. “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.” Consolidated Trial
`Practice Guide 22 (Nov. 2019), https://go.usa.gov/xpvPF. However, 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.” Id. (citing 37 C.F.R. § 42.56).
`
`B. MOTIONS TO SEAL
`
`Samsung also seeks an order to seal and restrict access under the
`Protective Order as “SAMSUNG-NEONODE-CONFIDENTIAL—APPLE
`
`
`
`
`3
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`ATTORNEY’S EYES ONLY” to a redacted portion on page 18 of
`Neonode’s Patent Owner Response (Paper 37, of which a public redacted
`version is submitted as Exhibit 1048), a redacted portion on page 5 of
`Neonode’s Sur-reply (Paper 49, of which a public redacted version is
`submitted as Exhibit 1073), redacted portions of Exhibit 2026 (of which a
`public redacted version is submitted as Exhibit 1049), and the entirety of
`Exhibit 2028. Paper 39, 1; Paper 51, 1.
`For a motion to seal confidential information, the moving party has
`the burden to show that there is good cause for the request to seal. See
`37 C.F.R. §§ 42.20(c), 42.14. A party can show good cause by (1) providing
`a sufficient explanation as to why the information sought to be sealed is
`confidential and (2) showing that, on balance, the harm to a party by
`disclosure of the information, as well as the need of either party to rely
`specifically on the information at issue, outweighs the public interest in
`maintaining a complete and understandable record. See Argentum Pharms.
`LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3–4 (PTAB Jan.
`19, 2018) (informative) (citing Corning Optical Commc’ns RF, LLC, v. PPC
`Broadband, Inc., IPR2014-00440, Paper 46, 2; Paper 47, 3 (PTAB April 6
`and 14, 2015)).
`According to Samsung, Exhibit 2028 is “the execution copy of
`Neonode and Samsung’s Research & Development and License
`Agreement,” and “is marked on every page in the footer of the original
`document ‘Neonode—Samsung Confidential.’” Paper 39, ii. Samsung
`argues that this marking evidences that “both parties intended for the
`document to be treated as confidential amongst the parties and thus took
`efforts to maintain its confidentiality.” Id. Samsung states that Exhibit 2026
`
`
`
`
`4
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`is a declaration that “recites certain non-public terms of the Agreement at
`Exhibit 2028,” and that Neonode’s Patent Owner Response (Paper 37)
`“similarly recites certain non-public terms of the Agreement.” Id. Finally,
`Samsung argues that Neonode’s Sur-reply (Paper 49) “references
`confidential information in the Samsung-Neonode Agreement of Exhibit
`2028.” Paper 51, 1.
`Samsung argues that there is good cause to seal the requested material
`because it is private, confidential information that “expose[s Samsung’s]
`business models and confidential business activities.” Mot. iii. According to
`Samsung, it “ha[s] not made, and do[es] not intend to make, the terms of the
`Agreement at Exhibit 2028 publicly available,” and Samsung “guard[s]
`information such as the licensing terms reflected in . . . Exhibit 2028 closely
`to protect [its] business.” Id. Samsung contends that, according to its
`“typical licensing and contracting practice, Samsung expects such
`confidential agreements and related information to remain confidential
`perpetually,” and “the public interest will not be harmed by sealing the
`confidential information.” Mot. iv. Samsung also points to passages in
`Exhibit 2028 that, it contends, contractually bind Neonode to keep the
`exhibit and its contents confidential. See Mot. v–viii.
`We determine that Samsung has sufficiently shown that Exhibit 2028
`is confidential, and that making any part of it available to the public would
`cause harm to Samsung that outweighs the benefit to the public of
`maintaining a complete and understandable record. Thus, there is good cause
`to seal Exhibit 2028 and references to its terms made in the Patent Owner
`Response, Patent Owner Sur-Reply, and Exhibit 2026.
`For the above reasons, the Motion to Seal is granted.
`
`
`
`
`5
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
` ORDER
`
`In consideration of the foregoing, it is
`ORDERED that Samsung’s motion for entry of the Proposed
`Protective Order (Paper 39, App’x A) is granted;
`FURTHER ORDERED that the Proposed Protective Order (Paper 39,
`App’x A) is hereby entered as the Protective Order in this proceeding, and
`will govern the conduct of the proceeding unless modified by the Board;
`FURTHER ORDERED that Samsung’s Motions to Seal (Papers 39
`and 51) are granted; and
`FURTHER ORDERED that the Patent Owner Response (Paper 37, of
`which a public redacted version is submitted as Exhibit 1048), Patent Owner
`Sur-reply (Paper 49, of which a public redacted version is submitted as
`Exhibit 1073), Exhibit 2026 (of which a public redacted version is submitted
`as Exhibit 1049), and Exhibit 2028 (in its entirety) are sealed.
`
`
`
`
`6
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`For PETITIONER:
`Walter Renner
`David Holt
`Tiffany Miller
`James Heintz
`axf-ptab@fr.com
`holt2@fr.com
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`Parham Hendifar
`Patrick Maloney
`Vinson Lin
`Philip Graves
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`lin@lowensteinweatherwax.com
`philipg@hbsslaw.com
`
`
`
`
`
`
`7
`
`
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