Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`
`
`
`
`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
`
`PETITIONER SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.’S MOTION TO SEAL AND FOR
`ENTRY OF PROTECTIVE ORDER
`
`
`
`
`
`
`
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`
`
`
`
`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
`
`PETITIONER SAMSUNG ELECTRONICS CO. LTD. AND SAMSUNG
`ELECTRONICS AMERICA, INC.’S MOTION TO SEAL AND FOR
`ENTRY OF PROTECTIVE ORDER
`
`
`
`
`
`
`
`
`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`LIST OF EXHIBITS
`
`Exhibit No.
`1001
`
`Description
`U.S. Patent No. 8,812,993 (“the ’993 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Declaration of Benjamin B. Bederson
`
`File History for U.S. Patent No. 8,812,993
`
`Benjamin B. Bederson CV
`
`Certified translation of JP Published Patent Application No.
`2002-55750 (“Hisatomi”), published February 20, 2002
`
`Xiangshi Ren & Shinji Moriyama, “Improving Selection on Pen-
`Based Systems: A Study of Pen-Based Interaction for Selection
`Tasks,” ACM Transactions on Computer-Human Interaction,
`Vol. 7, No. 3, September 2000, pp. 384-416 (“Ren”)
`
`U.S. Patent No. 5,422,656 to Allard et al. (“Allard-656”)
`
`U.S. Patent No. 5,249,296 to Tanaka (“Tanaka”)
`
`U.S. Patent No. 5,615,384 to Allard et al. (“Allard-384”)
`
`U.S. Patent No. 5,537,608 to Beatty et al. (“Beatty”)
`
`U.S. Patent No. 5,903,268 to Hirayama (“Hirayama”)
`
`U.S. Patent No. 5,305,435 to Bronson (“Bronson”)
`
`U.S. Patent No. 6,133,898 to Ludolph et al. (“Ludolph”)
`
`Tammara T. A. Combs and Benjamin B. Bederson “Does
`zooming improve image browsing?” Proceedings of the Fourth
`ACM Conference on Digital Libraries (DL ’99), ACM, New
`York, NY, USA, (August 1999) 130-137
`
`1015
`
`Dean Harris Rubine, “The Automatic Recognition of Gestures,”
`CMU-CS-91-202, December, 1991.
`
`1016
`
`U.S. Patent No. 6,710,791 to Kodama et al. (“Kodama”)
`
`
`
`1
`
`
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`IBM Corp., User’s Manual, “Simon Says ‘Here’s How!’” Part.
`No. 82G2557 (1994) (“IBM”)
`
`Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics,
`UIST ’94 Proceedings of the 7th Annual ACM Symposium on
`User Interface Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`
`David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing
`Systems (1996)
`
`David Rogers et al., Exemplar Figure of Tossing from Tossing
`Objects in a Desktop Environment, submitted to Conference on
`Human Factors in Computing Systems (1996)
`
`Benjamin B. Bederson, Fisheye Menus, UIST ’00 Proceedings of
`ACM Conference on User Interface Software and Technology
`217 (2000), DOI: 10.1145/354401.317382
`
`Leslie E Chipman et al., SlideBar: Analysis of a Linear Input
`Device, 23 Behaviour & Info. Tech. 1 (2004), DOI:
`10.1080/01449290310001638487
`
`Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184,
`UMIACS-TR-2000-66 (Sept. 2000), available at
`https://hcil.umd.edu/pub-perm-link/?id=2000-17
`
`Pekka Parhi, Amy K. Karlson, and Benjamin B. Bederson. 2006.
`Target size study for one-handed thumb use on small
`touchscreen devices. In Proceedings of the 8th Conference on
`Human-Computer Interaction with Mobile Devices and Services
`(MobileHCI ’06). Association for Computing Machinery, New
`York, NY, USA, 203–210.
`DOI:https://doi.org/10.1145/1152215.1152260
`
`1025
`
`Karlson, Amy & Bederson, Benjamin & Contreras-Vidal, José.
`(2008). Understanding One-Handed Use of Mobile Devices.
`Handbook of Research on User Interface Design and Evaluation
`
`
`
`2
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`for Mobile Technology. 86-101. DOI:10.4018/978-1-59904-871-
`0.ch006
`
`Apple Newton Message Pad Handbook (1993)
`
`Handbook for Palm m500 Series Handhelds (1998)
`
`HP Jornada 520 Series Pocket PC User Guide (2001)
`
`821,930 to Hansen (“Hansen”)
`
`U.S. Patent Application Publication No. 2005/0024341
`(“Gillespie”)
`
`Declaration of Mr. Jacob Munford
`
`Norman, D. A. (1988). The psychology of everyday things.
`BasicBooks. IBSN: 0-465-06709-3.
`
`U.S. Publication No. 2001/0043189 to Brisebois (“Brisebois”)
`
`Trial Delay Statistics
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D.Tex. Oct. 5,
`2020)
`
`Order Governing Proceedings - Patent Case, Neonode
`Smartphone LLC v. Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc., 6:20-cv-00507 (W.D.Tex. Oct. 5,
`2020)
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505
`(W.D.Tex.) (W.D.Tex. [[DATE]])
`
`Order Granting Motion Continue Case Management Conference
`(CMC), Neonode Smartphone LLC v. Samsung Electronics Co.
`Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D.Tex. Oct. 7, 2020)
`
`1026
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`1027
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`1028
`
`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`3
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Apple Inc., 6:20-cv-00505 (W.D. Tex. Oct. 26, 2020)
`
`Order Setting Markman Hearing, Neonode Smartphone LLC v.
`Samsung Electronics Co. Ltd. and Samsung Electronics America,
`Inc., 6:20-cv-00507 (W.D. Tex. Oct. 26, 2020)
`
`November 5, 2020 Letter from Apple Counsel to Neonode
`Counsel
`
`November 5, 2020 Letter from Samsung Counsel to Neonode
`Counsel
`
`“Order Staying Case Pending Completion of Venue Discovery”
`filed 12/08/20 in Neonode Smartphone LLC v. Apple Inc., 6:20-
`cv-00505 (W.D. Tex.)
`
`“Text Order GRANTING [36] Motion to Stay Case” filed
`12/11/20 in Neonode Smartphone LLC v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., 6:20-cv-00507
`(W.D. Tex.)
`
`“Plaintiff Neonode Smartphone LLC’s Unopposed Motion to
`Extend Venue Discovery Deadlines” filed 02/16/21 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (.D. Tex.)
`
`“Amended Agreed Scheduling Order” filed 11/13/20 in Neonode
`Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`
`Proposed Redacted Version of Patent Owner’s Response
`
`Proposed Redacted Version of Patent Owner’s Exhibit 2015
`
`1039
`
`1040
`
`
`1041
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`1042
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`1043
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`1044
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`1045
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`1046
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`1047
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`1048
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`4
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`INTRODUCTION AND STANDARD
`
`I.
`
`Pursuant to 37 C.F.R. § 42.54 and the Board’s September 24, 2021
`
`communication to Petitioners, Petitioners Samsung Electronics Co. Ltd. and
`
`Samsung Electronics America, Inc. (collectively “Samsung-Petitioners” or
`
`“Samsung”) hereby move for entry of the Protective Order appended below as
`
`Appendix A, and further move to seal certain documents filed by Neonode
`
`Smartphone LLC (“Neonode” or “Patent Owner”). Specifically, per this motion,
`
`Samsung-Petitioners move to seal Exhibit 2025 to Patent Owner’s Response (Paper
`
`No. 29) in its entirety, and move to seal Patent Owner’s Response and Exhibit 2015
`
`as identified below.1
`
`A party seeking to protect confidential information may seek entry of a
`
`protective order in a proceeding before the Board. See, e.g., Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs, LLC, IPR2012-00001, Paper 34 (PTAB Mar. 14, 2013). Upon
`
`a showing of good cause, the Board may enter a Protective Order to protect from
`
`
`1 Samsung-Petitioners also identified Exhibits 2016 and 2022 in their original
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`correspondence to Patent Owner and the Board as containing confidential
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`information in connection with Exhibit 2025. However, upon further review of
`
`those documents, Samsung-Petitioners do not seek to seal any portion of those
`
`documents under the proposed Protective Order.
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`
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`1
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`
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`public disclosure such confidential information as disclosed by a party during the
`
`course of a proceeding before the Board. See 37 CFR § 42.54. Samsung-Petitioners
`
`submit that, in light of the reasons discussed herein, the added limitations are
`
`necessary in this proceeding, and good cause exists to enter the proposed Protective
`
`Order.
`
`II. BACKGROUND
`
`Exhibit 2025 to Patent Owner’s Response is the execution copy of Neonode
`
`and Samsung’s Research & Development and License Agreement (“the
`
`Agreement”). It is marked on every page in the footer of the original document
`
`“Neonode – Samsung Confidential.” Ex. 2025. It is clear that at the signing of the
`
`document, as evidenced at least by its labeling, that both parties intended for the
`
`document to be treated as confidential amongst the parties and thus took efforts to
`
`maintain its confidentiality. Exhibit 2015 to Patent Owner’s Response is the
`
`Declaration of Per Bystedt in Support of Patent Owner’s Response to Petition.
`
`Exhibit 2015 recites certain non-public terms of the Agreement at Exhibit 2025.
`
`Patent Owner’s Response similarly recites certain non-public terms of the
`
`Agreement at Exhibit 2025.
`
`Prior to filing its Patent Owner’s Response and accompanying exhibits,
`
`Neonode did not contact Samsung or its counsel to reach an agreement between the
`
`parties as to the confidential status of the document at Exhibit 2025. Nor did
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`2
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`Neonode seek a protective order—it simply filed its Patent Owner’s Response and
`
`exhibits. Within approximately 90 minutes of the filing of Patent Owner’s Response
`
`and exhibits, Samsung-Petitioners notified Neonode of their position that the
`
`exhibits and related portions of Patent Owner’s Response should be treated as
`
`confidential. Samsung-Petitioners received a response from Patent Owner that its
`
`position was the exhibits and related portions of its Response (and Ex. 2025, in
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`particular) were not confidential in view of a provision in Section 12.2 of the
`
`Agreement at Exhibit 2025. Samsung-Petitioners considered Neonode’s position,
`
`and shortly thereafter notified Neonode confirming the dispute regarding the
`
`confidential nature of the Exhibit and the contents thereof, and requested a
`
`conference with the board. In view of Neonode’s refusal to take any action to
`
`maintain the proper confidential treatment of the contents of the Agreement,
`
`Samsung-Petitioners requested through a Trials paralegal that the status of the
`
`Exhibits to Patent Owner’s Response be changed to Board and Parties Only.
`
`Samsung-Petitioners and Patent Owner subsequently conferred and emailed the
`
`Board to schedule a conference. The Board authorized this motion in an email dated
`
`September 24, 2021. Upon clarification via email to the Board by Samsung-
`
`Petitioners, the Board communicated that the Patent Owner Response would be
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`provisionally sealed pending the outcome of the decision on the present motion.
`
`
`
`3
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`
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`III. MOTION TO SEAL
`
`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`There are several reasons the Board has good cause to grant this motion to
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`seal and enter a Protective Order to protect the Samsung-Petitioners from the
`
`disclosure of their confidential information.
`
`Samsung-Petitioners have not made, and do not intend to make, the terms of
`
`the Agreement at Exhibit 2025 publicly available. The Samsung-Petitioners guard
`
`information such as the licensing terms reflected in the Agreement at Exhibit 2025
`
`closely to protect their business. Disclosure of this information to the public would
`
`expose Samsung-Petitioners’ business models and confidential business activities.
`
`Without an assurance that this confidential information will be protected, Samsung-
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`Petitioners’ business may be adversely affected. See, e.g., Stride Rite Children's
`
`Grp., LLC v. Shoes by Firebug LLC, No. IPR2017-01809, 2019 WL 104049
`
`(P.T.A.B. Jan. 4, 2019) (sealing license agreements); HBPSI - Hong Kong Limited
`
`v. Sram, No. IPR2013-00174, 2013 WL 5970107, at *1 (P.T.A.B. June 11, 2013)
`
`(sealing a confidential “Settlement and License Agreement”); Powertech Tech. Inc.
`
`v. Tessera, Inc., No. C 11-6121 CW, 2012 WL 1969039, at *1 (N.D. Cal. May 31,
`
`2012) (granting motion to seal license agreement where “its disclosure would harm
`
`Plaintiff by giving its competitors . . . proprietary information”); Nursing Home
`
`Pension Fund v. Oracle Corp., No. C01-00988 MJJ, 2007 WL 3232267 (N.D. Cal.
`
`Nov. 1, 2007) (sealing financial terms of contract); In re Adobe Systems, Inc. Sec.
`
`
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`4
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`Litigation, 141 F.R.D. 155, 161-62 (N.D. Cal. 1992) (under-seal filings preserve
`
`“legitimate expectation
`
`that confidential business
`
`information, proprietary
`
`technology and trade secrets will not be publicly disseminated”) (citations omitted).
`
`Under Samsung’s typical licensing and contracting practice, Samsung expects
`
`such confidential agreements and related information to remain confidential
`
`perpetually. In contrast, the public interest will not be harmed by sealing the
`
`confidential information at Exhibit 2025. See, e.g., Pinnacle Towers LLC v.
`
`Airpowered, LLC, No. 5:15-CV-81-OC-34PRL, 2015 WL 5897524, at *1 (M.D. Fla.
`
`Oct. 7, 2015) (“the terms of confidential agreements oftentimes outweigh the
`
`public's right of access”) (citation and quotation omitted). For at least the reasons
`
`set forth below, the Agreement at Exhibit 2025 should be treated as confidential
`
`under the terms of the Agreement itself.
`
`A. The Agreement is Marked “Neonode-Samsung Confidential”
`
`As
`
`explained
`
`above,
`
`Exhibit
`
`2025
`
`is
`
`explicitly marked
`
`“Neonode – Samsung Confidential” on every page. Accordingly, on its face, the
`
`document compels the conclusion that it should be treated as confidential to
`
`Samsung and Neonode.
`
`B. Consent is Required to Disclose Confidential Information
`
`Section 12.2 of
`
`the Agreement (“Confidential Information:
`
` Other
`
`Confidential Information”) confirms the intent of the parties to maintain the
`
`
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`5
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`confidential status of the agreement and its related information. Section 12.2
`
`imposes a requirement that a party may not disclose “Confidential Information”
`
`without consent of the other party. It is useful to discuss section 12.2 in reference to
`
`three clauses. First, the “one-year clause” in section 12.2, relied on by Neonode as
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`allegedly removing any obligation on the parties with regard to Confidential
`
`Information, states “Each party agrees that it shall take reasonable steps, at least
`
`substantially equivalent to the steps it takes to protect its own proprietary
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`information, during the term of this Agreement, and for a period of one (1) year
`
`following expiration or termination of this Agreement, to prevent the duplication or
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`disclosure of Confidential Information of the other Party . . . .” Ex. 2025 at 10
`
`(emphasis added). The “one-year clause” notably evidences the parties’ intent to
`
`take “reasonable steps’ to “prevent the duplication or disclosure of Confidential
`
`Information of the other Party.”
`
`Second, section 12.2 states in part “[i]n addition to any other restrictions set
`
`forth herein, neither Party shall use the other Party’s Confidential Information for
`
`any purpose other than for its internal business purposes . . . or as otherwise
`
`expressly provided herein.” Id. This “internal business purposes” clause prohibits
`
`Patent Owner’s non-internal use of the agreement, and prohibits, for example, the
`
`use of the agreement proposed by Patent Owner in these proceedings. This “internal
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`business purposes” clause is clearly separate from the “one-year clause” above.
`6
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`Third, following the above two clauses, a “[n]otwithstanding the foregoing”
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`clause imposes a requirement that a party may not disclose Confidential Information
`
`without consent of the other party. The clause requires that a Receiving Party obtain
`
`consent and cooperate with the Disclosing Party to obtain a protective order in order
`
`to make a disclosure containing Confidential Information. The Receiving Party
`
`here—Neonode—made no efforts to obtain consent, cooperate, or obtain a
`
`protective order. Neonode’s position is instead that the “one-year clause” expires
`
`all obligations with regard to the efforts to prevent disclosure of Confidential
`
`Information. However, the “[n]otwithstanding clause” in section 12.2 speaks to the
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`contrary:
`
`Notwithstanding the foregoing, either Party may make a disclosure
`containing Confidential Information without the consent of the other
`Party, to the extent such disclosure is required by law … , provided that
`(A) the Receiving Party gives the Disclosing Party reasonable notice of
`the required disclosure, (B) the Receiving Party uses reasonable efforts
`to resist disclosing the Confidential Information, and (C) the Receiving
`Party cooperates with the Disclosing Party on request, and at the
`Disclosing Party’s expense, to obtain a protective order or otherwise
`limit the disclosure.
`
`
`
`
`
`7
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`
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`Id. at 10-11. Therefore, it is clear the Receiving Party (Neonode) may not
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
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`disclose Confidential Information without the consent of the Disclosing Party
`
`(Samsung).
`
`C.
`
`“Confidential Information” Section 12 Survives
`Termination/Expiration
`
`The entirety of Section 12 of the Agreement is identified in the Agreement’s
`
`Survival section: “The respective rights and obligation of Samsung and Neonode
`
`under the provisions of Sections . . . 12 . . . shall survive expiration or termination of
`
`this Agreement.” Id. at 13. This includes the requirement for consent and
`
`cooperation in obtaining a protective order for disclosure of Confidential
`
`Information.
`
`D. The “Public Announcements” Section Further Confirms the
`Intent of the Parties
`
`Section 12.3 (“Public announcements”) of the Agreement further indicates the
`
`intent of the parties to maintain the details of the agreement in confidence: “Unless
`
`otherwise provided in this Agreement, neither party will issue any notice, press
`
`release, or similar statement relating to this Agreement, without the prior approval
`
`of the other party, which approval will not be unreasonably withheld or unduly
`
`delayed.” Id. at 11. Section 12.3 is notably separate from the “one-year clause” in
`
`section 12.2. Section 12.3, as part of Section 12, also survives the termination or
`
`expiration of the agreement, as noted above.
`
`
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`8
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`E. Requested Relief
`
`Samsung accordingly seeks heightened confidentiality protection for the
`
`following materials disclosed in connection with this proceeding:
`
` Exhibit 2025 in its entirety.
`
` Exhibit 2015 as marked at ¶ 10 that recites the license terms, including
`
`a payment amount, stated in the Agreement at Exhibit 2025.
`
` The recitation in Patent Owner’s Response of the confidential contents
`
`of Exhibits 2025 and 2015 as marked at page 67, including the licensing terms
`
`and payment amounts stated in the Agreement at Exhibit 2025.
`
`These proposed changes do not prejudice Patent Owner as they do not limit
`
`Patent Owner’s access to the documents or information. These proposed changes
`
`also do not affect access to confidential information for employees and
`
`representatives of the Patent and Trademark Office who have a need for access to
`
`the confidential information.
`
`IV. MOTION FOR PROTECTIVE ORDER
`
`Samsung-Petitioners and Apple Inc. are co-petitioners in this proceeding. The
`
`information Samsung-Petitioners seek to seal is confidential to Samsung-Petitioners
`
`and Patent Owner (Neonode). The proposed Protective Order therefore differs from
`
`the Board’s Default Protective Order in Appendix B of the Patent Trial and Appeal
`
`Consolidated Trial Practice Guide, November 2019 (“TPG”) in that the default
`
`
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`9
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`
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`Protective Order has been modified to include the “SAMSUNG-NEONODE-
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
`
`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY” designation. The
`
`Protective Order identifies the persons to which access to confidential information
`
`is limited and clarifies the treatment of confidential materials unless the Board
`
`determines that information does not qualify for confidential treatment. These
`
`changes are designed to limit access to certain materials by the public and Petitioner
`
`party Apple Inc.’s in-house counsel. The proposed Protective Order is attached as
`
`Appendix A.
`
`These additional limitations to the default protective order are necessary. In
`
`particular, the Patent Owner’s Response (Paper 29) and Exhibits 2015, and 2025,
`
`contain
`
`information confidential
`
`to Samsung-Petitioners and Neonode.
`
`Additionally, it may be necessary to produce or file additional Samsung-Neonode
`
`confidential information in this case. Accordingly, Samsung-Petitioners move for
`
`entry of the attached protective order.
`
`V. NON-CONFIDENTIAL VERSIONS SUBMITTED
`
`Non-confidential proposed redacted versions of the Patent Owner’s
`
`Response and Exhibit 2015 are attached hereto as Exhibits 1047 and 1048,
`
`respectively. The redactions to the documents are minimal and limited in nature
`
`and scope to the confidential data. Samsung-Petitioners submit that Exhibit 2025
`
`
`
`10
`
`
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`is confidential in its entirety and Samsung-Petitioners are therefore not submitting
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
`
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`a redacted version of this document
`
`VI. CONCLUSION
`
`For the foregoing reasons, good cause exists for entering the proposed
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`Protective Order (Appendix A) in this proceeding and sealing the documents as
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`requested.
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`Dated: October 8, 2021
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`Respectfully Submitted,
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`/Tiffany C. Miller/
`Tiffany C. Miller, Reg. No. 52,032
`James M. Heintz, Reg. No. 41,828
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`Attorneys for Samsung-Petitioners
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`11
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`Samsung-Petitioners’ Motion to Seal
`IPR2021-00145 (U.S. Patent No. 8,812,993)
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that service
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`was made on the Patent Owner as detailed below:
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`Date of Service:
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`October 8, 2021
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`Manner of Service:
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`Electronic Mail
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ahans@sunsteinlaw.com
`philipg@hbsslaw.com
`greers@hbsslaw.com
`markc@hbsslaw.com
`sunsteinip@sunsteinlaw.com
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`Documents Served:
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`Samsung-Petitioners’ Motion to Seal and for Entry
`of Protective Order
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`Persons Served:
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`Robert M. Asher, Bruce D. Sunstein, Timothy M.
`Murphy, Arne Hans, Phil J. Graves, Greer N.
`Shaw, Mark S. Carlson
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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`APPENDIX A
`APPENDIX A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND
`APPLE INC.
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`Petitioners,
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`v.
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`NEONODE SMARTPHONE LLC
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`Patent Owner.
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`Case IPR2021-00145
`Patent No. 8,812,993
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`PROTECTIVE ORDER
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`1
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`PROTECTIVE ORDER
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`The following Protective Order will govern the filing and treatment of Samsung-
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`Neonode confidential information in the proceeding:
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`Protective Order
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`This protective order governs the treatment and filing of confidential information,
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`including documents and testimony.
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`1.
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`Confidential information shall be clearly marked “SAMSUNG-
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`NEONODE-CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY.”
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`2.
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`Access to confidential information marked “SAMSUNG-NEONODE-
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`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY” is limited to the
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`following individuals who have executed the acknowledgment appended to this
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`order:
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`(A) Samsung and Neonode Parties and Representatives. Persons who are
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`owners of a patent in the proceeding and representatives of record thereof,
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`and the Samsung Electronics Co. Ltd., and Samsung Electronics America,
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`Inc. parties in the proceeding and representatives of record thereof.
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`(B) Apple Outside Counsel. Outside counsel of record for the Apple Inc.
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`party in the proceeding, including employees, of counsel, and contractors of
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`outside counsel of record’s law firm(s) to whom it is reasonably necessary to
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`disclose this information to assist outside counsel of record in connection
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`2
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`with this proceeding, including members of their firms, associate attorneys,
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`attorneys who are not employees of counsel of record who are retained to
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`assist counsel of record on an hourly basis, and paralegal, clerical, and other
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`regular employees of such counsel. All in-house counsel and other
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`representatives of the parties (other than outside counsel of record as defined
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`above) shall not be allowed to view SAMSUNG-NEONODE-
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`CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY Information.
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`(C) Experts. Retained experts of a party in the proceeding who further certify
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`in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject
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`matter of the proceeding.
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`(D) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are
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`reasonably necessary to assist those persons in the proceeding shall not be
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`required to sign an Acknowledgement, but shall be informed of the terms and
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`requirements of the Protective Order by the person they are supporting who
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`receives confidential information.
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`(E) The Office. Employees and representatives of the United States Patent
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`and Trademark Office who have a need for access to the confidential
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`information shall have such access without the requirement to sign an
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`3
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`Acknowledgement. Such employees and representatives shall include the
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`Director, members of the Board and their clerical staff, other support
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`personnel, court reporters, and other persons acting on behalf of the Office.
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`3. Employees (e.g., corporate officers), consultants, or other persons
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`performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to
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`confidential information only upon agreement of the parties or by order of the
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`Board upon a motion brought by the party seeking to disclose confidential
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`information to that person and after signing the Acknowledgment. The party
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`opposing disclosure to that person shall have the burden of proving that such
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`person should be restricted from access to confidential information.
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`4. Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons not
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`authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
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`information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the
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`disclosing party;
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`4
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`(C) Ensuring that support personnel of the recipient who have access to the
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`confidential information understand and abide by the obligation to maintain
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`the confidentiality of information received that is designated as confidential;
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`and
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`(D) Limiting the copying of confidential information to a reasonable number
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`of copies needed for conduct of the proceeding and maintaining a record of
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`the locations of such copies.
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`5.
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`Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along with a
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`Motion to Seal. The Motion to Seal should provide a non-confidential
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`description of the nature of the confidential information that is under seal,
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`and set forth the reasons why the information is confidential and should
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`not be made available to the public. A party may challenge the
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`confidentiality of the information by opposing the Motion to Seal. The
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`submission shall be treated as confidential and remain under seal, unless
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`the Board determines that the documents or information does not qualify
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`for confidential treatment. The information shall remain under seal unless
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`5
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`the Board determines that some or all of the information does not qualify
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`for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the information
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`submitted to the Board, the submitting party shall file confidential and
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`non-confidential versions of its submission, together with a Motion to
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`Seal the confidential version setting forth the reasons why the
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`information redacted from the non-confidential version is confidential
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`and should not be made available to the public. A party may challenge
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`the confidentiality of the information by opposing the Motion to Seal.
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`The non-confidential version of the submission shall clearly indicate the
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`locations of information that has been redacted. The confidential version
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`of the submission shall be filed under seal. The redacted information
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`shall remain under seal unless the Board determines that some or all of
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`the redacted information does not qualify for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as
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`confidential that are disclosed to another party during discovery or other
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`proceedings before the Board shall be clearly marked as “SAMSUNG-
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`NEONODE-CONFIDENTIAL – APPLE ATTORNEYS’ EYES ONLY”
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`and shall be produced in a manner that maintains its confidentiality.
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`6
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`6. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential
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`information must return, or certify the destruction of, all copies of the confidential
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`information to the producing party.
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`7
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`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., APPLE INC. v. NEONODE SMARTPHONE LLC
`Case IPR2021-00145
`Patent No. 8,812,993
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`Standard Acknowledgment for Access to Protective Order Material
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`I __________________________________________, affirm that I have read
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`the Protective Order; that I will abide by its terms; that I will use the confidential
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`information only in connection with this proceeding and for no other purpose; that I
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`will only allow access to support staff who are reasonably necessary to assist me in
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`this proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`Executed on
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`, 20__.
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`Signed: ______________________________
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`8
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