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` Paper 21
` Date: November 17, 2021
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`Trials@uspto.gov
`571-272-7822
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Before SALLY C. MEDLEY, HYUN J. JUNG, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner.
`____________
`
`IPR2021-00831
`Patent 8,671,132 B2
`____________
`
`
`ORDER
`Denying Patent Owner’s
`First Motion to Seal
`Granting Patent Owner’s Second
`Motion to Seal
`Denying Petitioner’s
`Motion to Seal
`37 C.F.R. §§ 42.5, 42.14, 42.54
`
`
`
`
`
`
`
`IPR2021-00831
`Patent 8,671,132 B2
`
`
`Motions to Seal
`In its first unopposed Motion to Seal, Patent Owner seeks to seal Patent
`Owner’s Preliminary Response, the Declaration of David Pease (Ex. 2002) and the
`Declaration of Linda Duyanovich (Ex. 2003). Paper 6 (“First PO Motion”). In its
`second unopposed Motion to Seal, Patent Owner seeks to seal Exhibits 2012–
`2017. Paper 10 (“Second PO Motion”). In its unopposed Motion to Seal,
`Petitioner seeks to seal Petitioner’s Preliminary Reply. Paper 12 (“Petitioner
`Motion”).
`There is a strong public policy that favors making information filed in
`an inter partes review open to the public. Garmin Int’l, Inc. v. Cuozzo Speed
`Techs. LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14, 2013). The
`standard for granting a motion to seal is “good cause,” and the party moving
`to seal a document bears the burden of proving entitlement to the requested
`relief. 37 C.F.R. §§ 42.20(c), 42.54(a). “Good cause” can be established by
`showing sufficiently that (a) the information sought to be sealed is truly
`confidential, (b) a concrete harm would result to a party upon its public
`disclosure, (c) there exists a genuine need to reply in the trial on the specific
`information sought to be sealed, and (d) the interest in maintaining the
`confidentiality of the information outweighs the strong public interest in
`maintaining an open and understandable record. See Argentum Pharms. LLC
`v. Alcon Research Ltd., IPR2017-01053, Paper 27 at 3–4 (PTAB Jan. 19,
`2018) (informative).
`
`Second PO Motion
`We have considered the arguments presented in the Second PO Motion
`and determine that good cause has been established for sealing Exhibits 2012–
`2017. Specifically, Patent Owner demonstrates that the information sought to
`be sealed per its motion contains confidential information that third party IBM
`2
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`IPR2021-00831
`Patent 8,671,132 B2
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`“maintains as confidential business and technical information.” Second PO
`Motion 2. Accordingly, we grant Patent Owner’s Second Motion to Seal,
`including Patent Owner’s unopposed request for entry of the Board’s default
`protective order. See Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated, (Appendix B) (“Trial
`Practice Guide”).
`
`First PO Motion
`We have considered the arguments presented in the First PO Motion and
`determine that good cause has not been established for sealing Patent Owner’s
`Preliminary Response and Exhibits 2002 and 2003. Patent Owner fails to show
`good cause that the redacted information is confidential. For example, in the
`redacted version of its Preliminary Response (Paper 8), Patent Owner redacts the
`descriptions or titles of Exhibits 2012–2017. Paper 8, v, 21–22. Yet, in the Second
`PO Motion, Patent Owner makes such descriptions publically available. Second PO
`Motion, 3–4. Thus, there appears to be no reason to redact such descriptions from
`the Preliminary Response. Similarly, the redacted versions of Exhibits 2002 and
`2003 contain redactions of the descriptions of Exhibits 2012–2017.1 See, e.g., public
`version of Ex. 2002 ¶¶ 15–17. But again, the descriptions redacted have been made
`public by Patent Owner. Second PO Motion, 3–4. There are additional redactions
`that seem unnecessary, such as redacting a listing of page numbers from Exhibits
`2012–2017. See, e.g., public version of Ex. 2002 ¶ 18. There is no explanation in
`
`
`1 Both the redacted and sealed versions of Exhibit 2002 have a solid black box
`following paragraph 17 without any explanation for what is redacted by the
`box. Similarly, the redacted and sealed versions of Exhibit 2003 have a solid
`black box following paragraph 18 without any explanation for what is
`redacted by the box.
`
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`3
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`IPR2021-00831
`Patent 8,671,132 B2
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`the First PO Motion as to why page number sequences are confidential information.
`Indeed, in light of Patent Owner’s description of Exhibits 2012–2017 made in the
`Second PO Motion, we see nothing in the Preliminary Response or Exhibits 2002
`and 2003 that contains confidential information. Patent Owner has not established
`good cause to seal the Preliminary Response or Exhibits 2002 and 2003.
`Patent Owner also filed a redacted (public) and sealed version of its Patent
`Owner Preliminary Sur-reply without filing a motion to seal. Papers 15, 16. The
`redacted material appears to include information that Patent Owner has already
`made public as explained above. Paper 16, iii–iv, 5–8.
`Petitioner Motion
`We have considered the arguments presented in the Petitioner Motion and
`determine that good cause has not been established for sealing Petitioner’s
`Preliminary Reply. Petitioner fails to show good cause that the redacted
`information is confidential. Indeed, Petitioner merely states that good cause exists
`for sealing Petitioner’s Preliminary Reply without any explanation for why that is so.
`Petitioner Motion 1. Such an explanation falls far short from meeting the good cause
`standard. We observe that the information Petitioner seeks to maintain as
`confidential is third party IBM alleged confidential information. Patent Owner
`appears to be in communication with IBM as to which information should be
`maintained confidential. The parties shall work together to ascertain what, if
`anything, needs to remain confidential in the filing of a revised motion to seal
`Petitioner’s Preliminary Reply.
`
`Summary
`In summary, the Second PO Motion to seal Exhibits 2012–2017 is granted.
`The First PO Motion and Petitioner Motion are denied without prejudice for the
`parties to refile motion(s) to seal. Any revised motions should cover all materials
`that the moving party believes should be maintained under seal, and should
`4
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`IPR2021-00831
`Patent 8,671,132 B2
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`explain individually and in detail why each individual exhibit or paper includes
`confidential information. If no revised motion to seal is received for a particular
`exhibit or paper, the document will be unsealed.
`We also advise the parties that “[c]onfidential information that is subject to a
`protective order ordinarily would become public . . . 45 days after final judgment in
`a trial.” Trial Practice Guide at 21–22. “There is an expectation that information
`will be made public where the existence of the information . . . is identified in a
`final written decision following a trial.” Id. at 22. “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.” Id.; see
`37 C.F.R. § 42.56.
`
`Order
`
`It is:
`ORDERED that Patent Owner’s Second Motion to Seal is granted;
`FURTHER ORDERED that Patent Owner’s First Motion to Seal and
`Petitioner’s Motion to Seal are denied;
`FURTHER ORDERED that the Board’s default protective order is
`entered and shall govern the treatment of confidential information in this
`proceeding; and
`FURTHER ORDERED that the parties are authorized to file, within
`ten days of this Order, a revised motion to seal as to any exhibits and papers
`filed under seal but for which the motions to seal are denied.
`
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`5
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`IPR2021-00831
`Patent 8,671,132 B2
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`FOR PETITIONER:
`Donald Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`d2dptabdocket@orrick.com
`
`FOR PATENT OWNER:
`Lauren Robinson
`Brenda Entzminger
`BUNSOW DE MORY LLP
`lrobinson@bdiplaw.com
`bentzminger@bdiplaw.com
`
`
`
`6
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