throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 75
`
` Entered: September 23, 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 KARA L. SZPONDOWSKI and CHRISTOPHER L. OGDEN,
`Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Denying Petitioner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`

`

`IPR2021-00145
`Patent 8,812,993 B2
`
`
`Petitioners Samsung Electronics Co. Ltd. and Samsung Electronics
`America, Inc. (collectively, “Samsung”)1 filed a Motion to Expunge
`requesting that the following sealed documents be expunged from the record
`of this case: Paper 29 (Patent Owner’s Response), Exhibit 2015 (an expert
`declaration supporting Paper 29), Exhibit 2025 (a confidential agreement
`affecting parties to this proceeding), and Exhibit 2028 (Patent Owner’s Sur-
`reply). See Paper 72 (“Mot.”), 1. Patent Owner Neonode Smartphone LLC
`(“Neonode”) filed an Opposition. Paper 73 (“Opp.”). Samsung did not file a
`reply.
`
`According to Samsung, the Board’s Final Written Decision (Paper 71
`(public version)) “does not contain any confidential information” and
`“[n]one of the Board’s analyses in its [Final Written Decision] are
`confidential.” Mot. 3. Thus, Samsung argues that there is no public interest
`in making the sealed information available to the public. Mot. 4. Samsung
`also contends that the Board has already determined, in its order sealing the
`documents, that there is good cause to keep them confidential. Mot. 3–4
`(citing Papers 31 (Samsung’s Motion to Seal), 53 (Order Granting Motion to
`Seal)).
`In its Opposition, Neonode informs us that it “intends to file a Notice
`of Appeal” (Opp. 1), and we confirm that Neonode filed a Notice of Appeal
`on August 15, 2022. Paper 74. According to Neonode, “[t]he documents that
`Samsung seeks to expunge constitute material evidence in support of
`[Neonode]’s argument that objective factors of non-obviousness demonstrate
`the patentability of the challenged claims.” Opp. 1. Neonode notes that the
`
`1 Petitioner Apple Inc. did not join in the motion, but does not oppose. Paper
`73, 1.
`
`
`
`2
`
`

`

`IPR2021-00145
`Patent 8,812,993 B2
`
`Board’s Final Written Decision found that Neonode had not “produced
`evidence showing a nexus between the evidence of industry respect or
`licensing and the features of the challenged claims.” Opp. 2 (quoting Paper
`68, 49–50). But Neonode states that it intends to argue on appeal that the
`Board’s finding “is not supported by substantial evidence.” Opp. 2.
`Neonode also directs our attention to the non-precedential case Apple
`Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 52, 2021 WL 1700859
`(PTAB Apr. 29, 2021), in which the Board denied a similar motion to
`expunge without prejudice to refiling the motion after the final disposition of
`all appeals. Opp. 2–3. Neonode states that it “would not oppose entry of a
`similar order in this proceeding.” Opp. 3.
`Ordinarily, “[c]onfidential information that is subject to a protective
`order would . . . become public 45 days after denial of a petition to institute a
`trial or 45 days after final judgment in a trial,” particularly “where the
`existence of the information is . . . identified in a final written decision.”
`PTAB Consolidated Trial Practice Guide 21–22 (Nov. 2019),
`https://go.usa.gov/xpvPF. But a party may file a motion to expunge the
`confidential information under 37 C.F.R. § 42.56. Id. at 22. This rule
`“balances the needs of the parties to submit confidential information with the
`public interest in maintaining a complete and understandable file history for
`public notice purposes.” Id. As with any motion, the moving party, in this
`case Samsung, “has the burden of proof to establish that it is entitled to the
`requested relief.” 37 C.F.R. § 42.20(c).
`Under the circumstances, Samsung’s motion is premature. Although
`the Final Written Decision does not rely on the information that Samsung
`seeks to expunge from the record, these documents may be relevant to
`
`
`
`3
`
`

`

`IPR2021-00145
`Patent 8,812,993 B2
`
`Neonode’s appeal, and it would be inappropriate for the Board to expunge
`the documents at this time.
`Thus, we deny Samsung’s Motion without prejudice, and extend the
`time period for filing a renewed motion to expunge no later than 45 days
`after the final disposition of any appeals or remand proceedings from any
`such appeals. In the meantime, the record for this proceeding will be
`preserved in its entirety, and the confidential information will remain under
`seal.
`
`
`Accordingly, it is
`ORDERED that Samsung’s Motion to Expunge is denied without
`prejudice;
`FURTHER ORDERED that Samsung may file a renewed motion to
`expunge any material in the record no later than 45 days after the final
`disposition of any appeals from this proceeding, including any proceedings
`on remand from any such appeals; and
`FURTHER ORDERED that information subject to the Protective
`Order in this proceeding (Paper 52; Paper 50, App’x A) will remain under
`seal until further notice.
`
`
`
`
`
`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
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket