Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 52
`Entered: January 5, 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.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Granting Joint Request for Entry of Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 52
`Entered: January 5, 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.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Granting Joint Request for Entry of Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`With our authorization, Petitioners Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc. (collectively, “Samsung”) filed a Motion
`to Seal and for Entry of Protective Order. Paper 31. This motion included an
`initial proposed protective order that differs from the Board’s Default
`Protective Order.1 Id. at 9–10, App’x A. Because the initial proposed
`protective order was not a joint submission as the Scheduling Order (Paper
`25) requires, we ordered the parties to meet and confer with the goal of
`agreeing to a proposed protective order that the parties could submit jointly.
`Paper 34, 2.
`On November 19, 2021, Samsung and Patent Owner Neonode
`Smartphone LLC (“Neonode”) jointly filed a second proposed protective
`order (Paper 36, App’x A). But as we previously determined, this proposal
`was inadequate because it was not a joint submission that included Petitioner
`Apple, Inc. (“Apple”) and, while it introduced a heightened confidentiality
`tier, it failed to retain the normal confidentiality category of the Default
`Protective Order. See Paper 46. Thus, we denied the aspect of the Motion
`relating to entry of a protective order, without prejudice. See id.
`On December 17, 2021, the parties, including Apple, jointly submitted
`another Proposed Protective Order. Paper 50. The joint proposal (Paper 50,
`Attachment A) differs from the Default Protective Order in two significant
`ways. See Ex. 1059 (marked-up version comparing the proposal with the
`Default Protective Order).
`
`
`1 “Protective Order Guidelines,” PTAB Consolidated Trial Practice Guide
`107, App’x B (Nov. 2019), https://go.usa.gov/xpvPF (“Consolidated Trial
`Practice Guide”).
`
`
`
`2
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`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. 1059, 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 joint proposal alters who may have access to material in
`the lower confidentiality tier: it allows persons with prior knowledge
`concerning the materials to continue to have access, regardless of their
`affiliation with a party in this proceeding. See Ex. 1059, 4; Paper 50, 2. The
`parties argue that this provision is warranted because “Neonode has
`submitted declarations from four third party witnesses who have already
`been deposed in this proceeding,” and these witnesses should have access to
`these declarations if they are designated according ot the proposed lower
`confidentiality tier. Paper 50, 2.
`We agree with the parties 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. Thus, we grant the
`parties’ joint request to adopt Appendix A of Paper 50 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 . . .
`
`
`
`3
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`is identified in a final written decision following a trial.” Consolidated Trial
`Practice Guide 22. 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).
`
`Accordingly, it is
`ORDERED that the parties’ joint request for entry of the proposed
`Protective Order (Paper 50) is granted; and
`FURTHER ORDERED that the jointly submitted Protective Order
`(Paper 50, App’x A) is hereby entered, and will govern the conduct of the
`proceeding unless modified by the Board.
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`For PETITIONER:
`Walter Renner
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`Robert Asher
`Bruce Sunstein
`Timothy M. Murphy
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`
`Philip J. Graves
`HAGENS BERMAN SOBOL SHAPIRO LLP
`philipg@hbsslaw.com
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
