UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND
`APPLE INC.
`
`Petitioners
`
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`
`
`SAMSUNG-PETITIONERS’ OPPOSED MOTION TO EXPUNGE
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND
`APPLE INC.
`
`Petitioners
`
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`Case IPR2021-00145
`U.S. Patent No. 8,812,993
`
`
`
`SAMSUNG-PETITIONERS’ OPPOSED MOTION TO EXPUNGE
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`Petitioners Samsung Electronics Co., Ltd., and Samsung Electronics
`
`America, Inc. (“Samsung-Petitioners”) file this Motion to Expunge within 45 days
`
`from the final written decision (“FWD”), which was issued June 15, 2022 (Paper
`
`68). See Patent Trial Appeal Board Consolidated Trial Practice Guide November
`
`2019, p. 21-22. Samsung-Petitioners have conferred with Patent Owner and
`
`Petitioner Apple Inc. Petitioner Apple Inc. does not oppose this motion. Patent
`
`Owner opposes this motion to keep the record intact pending any appeal.
`
`Samsung-Petitioners respectfully submit that the following confidential
`
`information be expunged from the record as they contain Samsung-Petitioners’
`
`highly confidential business information (collectively, “the Confidential
`
`Documents”), and were not relied upon in the Board’s Final Written Decision:
`
` Exhibit 2025 – Samsung-Neonode Agreement
`
` Exhibit 2015 – Bystedt Declaration
`
` Paper 29 – Patent Owner’s Response
`
` Exhibit 2028 – Patent Owner’s Sur-reply
`
`For the reasons set forth below, Samsung-Petitioners request that the
`
`Confidential Documents be expunged.
`
`I.
`
`APPLICABLE LEGAL STANDARDS
`37 C.F.R. § 42.56 provides that “[a]fter a denial of a petition to institute a
`
`trial or after final judgment in a trial, a party may file a motion to expunge
`
`1
`
`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`confidential information from the record.” Similarly, the Consolidated Trial
`
`Practice Guide states, in pertinent part, that “[t]here 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 becoming public.”
`
`Consolidated Trial Practice Guide, p. 22. A party seeking expungement from the
`
`record must show good cause by demonstrating “that any information sought to be
`
`expunged constitutes confidential information, and that Petitioner’s interest in
`
`expunging it outweighs the public’s interest in maintaining a complete and
`
`understandable history of this inter partes review.” Atlanta Gas Light Co. v.
`
`Bennett Regulator Guards, Inc., IPR2013-00453, Paper 97 at 2 (P.T.A.B. Apr. 15,
`
`2015).
`
`II. REASONS FOR RELIEF REQUESTED
`A.
`Procedural Background
`As explained in Samsung-Petitioners’ Motion to Seal (Paper 31),
`
`Exhibit 2025 is an agreement that contains confidential Samsung information.
`
`Exhibit 2015 (Bystedt Declaration), Patent Owner’s Response (Paper 29), and
`
`
`WEST\299028501.1
`
`2
`
`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`Patent Owner’s Sur-reply (confidential version at Exhibit 2028) recite confidential,
`
`non-public terms of that agreement.
`
`Redacted versions of Exhibit 2015, Patent Owner’s Response, and Patent
`
`Owner’s Sur-reply are available to the public, and information regarding the
`
`contents of the redacted and sealed information is in the record, as detailed in the
`
`following table:
`
`Redacted, Public
`Confidential
`Version
`Version
`Exhibit 1047
`Paper 29
`Exhibit 2028 Paper 55
`Exhibit 2015 Exhibit 1048
`Exhibit 2025 Sealed in its
`entirety
`
`Information Regarding Redacted Content
`
`Exhibit 1047, 76-77; Paper 55 at 26-27.
`Exhibit 1047, 76-77; Paper 55 at 26-27.
`Exhibit 1047, 76-77; Paper 55 at 26-27.
`
`Exhibit 1047, 76-77; Paper 55 at 26-27.
`
`
`
`On June 15, 2022, the Board issued its final written decision (“FWD”).
`
`Paper 68. The FWD itself does not contain any confidential information. See
`
`FWD-Public Version, Paper 71. None of the Board’s analyses in its FWD are
`
`confidential. Id.
`
`B. Good Cause Exists for Expunging the Confidential Documents
`As detailed in Samsung-Petitioners’ Motion to Seal (Paper 31), the
`
`Confidential Documents contain Samsung-Petitioners’ highly confidential business
`
`information. Indeed, the Board has already determined that good cause exists to
`
`seal the Confidential Documents (Paper 53). As recognized in the Board’s Order
`
`
`WEST\299028501.1
`
`3
`
`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`granting Samsung-Petitioners’ motion to seal, Exhibit 2025 in this matter “includes
`
`sensitive information that could apprise Samsung’s competitors of its business
`
`models and confidential business activities.” Paper 53 at 4-5. If Exhibit 2025 or
`
`its details are disclosed, Samsung-Petitioners would suffer concrete harm by giving
`
`its competitors proprietary information. Id. at 5. The Board also recognized that
`
`the declaration of Mr. Bystedt (Exhibit 2015) and Patent Owner’s Response (Paper
`
`29) make limited evidentiary use of Exhibit 2025, and there is good cause to seal
`
`references to the terms of Exhibit 2025 in those documents. Id. Good cause also
`
`exists to seal references to the terms of Exhibit 2025 in Patent Owner’s Sur-reply
`
`for at least the same reasons.
`
`Given the information available in the record regarding the contents of the
`
`Confidential Documents, and, in particular, Exhibit 2025, and the lack of reliance
`
`by the Board on the specific terms of the agreement, the record provides a
`
`“complete and understandable file history for public notices purposes,” so there is
`
`no public interest in now making the Confidential Documents publicly available.
`
`Consolidated Trial Practice Guide at 21-22; accord MPEP § 724.05 (Patent Office
`
`may expunge information that is not material to patentability); see also Paper 53 at
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`5. Accordingly, good cause exists for protecting Petitioners’ confidential
`
`information by expunging the Confidential Documents.
`
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`WEST\299028501.1
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`4
`
`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`III. CONCLUSION
`Because the Confidential Documents contain Samsung-Petitioners’ highly
`
`confidential business information, redacted versions of all of the Confidential
`
`Documents are available to the public and the Board did not rely on the
`
`confidential business information in this proceeding, Samsung-Petitioners
`
`respectfully requests that the Board expunge Paper 29, Exhibit 2015, Exhibit 2025,
`
`and Exhibit 2028 pursuant to 37 C.F.R. § 42.56.
`
`
`
`Dated: July 18, 2022
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`/Tiffany C. Miller/
`Tiffany C. Miller, Reg. No. 52,032
`James M. Heintz, Reg. No. 41,828
`
`Attorneys for Samsung-Petitioners
`
`
`WEST\299028501.1
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`5
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`
`
`Samsung-Petitioners’ Motion to Expunge
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service
`
`was made on the Patent Owner as detailed below:
`
`Date of Service:
`
`July 18, 2022
`
`Manner of Service:
`
`Electronic Mail
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`sunsteinip@sunsteinlaw.com
`pgraves@gravesshaw.com
`gshaw@gravesshaw.com
`
`Documents Served:
`
`Petitioners’ Motion to Expunge
`
`Persons Served:
`
`Robert M. Asher, Bruce D. Sunstein, Timothy M.
`Murphy, Arne Hans, Philip J. Graves, Greer N.
`Shaw
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
`
`
`WEST\299028501.1
`
`6
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`
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