`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
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`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
`
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`3
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`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
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`
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`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
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