Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 51
`Entered: January 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Unopposed Motions to Seal and
`for Entry of Joint Proposed Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 51
`Entered: January 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`DECISION
`Granting Unopposed Motions to Seal and
`for Entry of Joint Proposed Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`
`I. INTRODUCTION
`
`With our authorization, Patent Owner Neonode Smartphone LLC
`(“Neonode”) filed an unopposed Motion to Seal. Paper 31 (“Mot.”).
`Neonode represents that the Motion “is unopposed by Petitioner Google
`LLC [(‘Google’)] and also unopposed by interested third party, Samsung
`Electronics Co. Ltd., Samsung Electronics America, Inc. (collectively
`‘Samsung’).” Mot. 1. The Motion seeks to restrict access to the Patent
`Owner Response and Exhibits 2014 and 2055, and to expunge Exhibit 2011.
`Mot. 1. The Motion also includes a joint Proposed Protective Order agreed
`by the parties. Ex. 2059; Ex. 2058 (redline version). For the reasons below,
`the Motion is granted.
`
`A.
`
`PROPOSED PROTECTIVE ORDER
`
`The joint Proposed Protective Order differs from the Default
`Protective Order in two significant ways. See Ex. 2058 (marked-up version
`comparing the proposal with the Default Protective Order). First, it adds to
`the normal confidentiality category a heightened confidentiality tier
`designated as “SAMSUNG-NEONODE-CONFIDENTIAL—GOOGLE
`ATTORNEY’S EYES ONLY” to cover material that “constitutes or
`includes, in whole or in part, confidential or proprietary information or trade
`secrets of the Party and shared between the Samsung and Neonode Parties or
`their predecessors in interest.” Ex. 2059, 1. These documents are accessible
`to Google’s outside counsel, but not to other Google party representatives
`unless they were involved in the preparation or drafting of the protected
`materials. See id. at 2–3.
`
`
`
`
`2
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`IPR2021-01041
`Patent 8,095,879 B2
`
`
`Second, the proposal alters who may have access to material in the
`lower confidentiality tier: it allows persons with prior knowledge concerning
`the materials to continue to have access, regardless of their affiliation with a
`party in this proceeding. See Ex. 2059, 4.
`Neonode notes that these alterations mirror those made in a protective
`order the Board approved in a related proceeding involving similar
`documents and confidentiality issues. Mot. 2–3 (citing Samsung Electronics
`Co. v. Neonode Smartphone LLC, IPR2021-00145, Paper 52 (PTAB Jan. 5,
`2022)).
`For the reasons the Board outlined in its order granting the proposed
`protective order in the related inter partes review, we agree that there is
`good cause to enter the proposed protective order, and that the modifications
`to the Default Protective Order are reasonable under the circumstances. See
`IPR2021-00145, Paper 52, at 2–3. Thus, we grant Neonode’s unopposed
`request to enter the Proposed Protective Order by adopting Exhibit 2059 as
`the Protective Order in this proceeding.
`We remind the parties of the public’s interest in maintaining a
`complete and understandable file history. “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.” Consolidated Trial
`Practice Guide 22 (Nov. 2019), https://go.usa.gov/xpvPF. However, a party
`seeking to maintain the confidentiality of information “may file a motion to
`expunge the information from the record prior to the information becoming
`public.” Id. (citing 37 C.F.R. § 42.56).
`
`
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`3
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`IPR2021-01041
`Patent 8,095,879 B2
`
`
`B. MOTIONS TO SEAL
`
`Neonode also seeks an order to seal and restrict access under the
`Protective Order as “SAMSUNG-NEONODE-CONFIDENTIAL—
`GOOGLE ATTORNEY’S EYES ONLY” to a portion of Neonode’s Patent
`Owner Response (Paper 29, of which a public redacted version is submitted
`as Exhibit 20601), a portion of Exhibit 2055 (of which a public redacted
`version is submitted as Exhibit 2061), and the entirety of Exhibit 2014. Mot.
`1. Neonode also seeks to expunge Exhibit 2011, currently filed under seal,
`because “the as-filed copy is not fully legible, and is re-filed under seal as
`Exhibit 2055 in identical form. Exhibit 2011 is not cited, or otherwise relied
`upon, in the Patent Owner Response or other documents accompanying it.”
`Mot. 1.
`For a motion to seal confidential information, the moving party has
`the burden to show that there is good cause for the request to seal. See
`37 C.F.R. §§ 42.20(c), 42.14. A party can show good cause by (1) providing
`a sufficient explanation as to why the information sought to be sealed is
`confidential and (2) showing that, on balance, the harm to a party by
`disclosure of the information, as well as the need of either party to rely
`specifically on the information at issue, outweighs the public interest in
`maintaining a complete and understandable record. See Argentum Pharms.
`LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 3–4 (PTAB Jan.
`19, 2018) (informative) (citing Corning Optical Commc’ns RF, LLC, v. PPC
`
`
`
` 1
`
` In the future, counsel should file the public version of a paper as a paper,
`not an exhibit.
`
`
`
`4
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`IPR2021-01041
`Patent 8,095,879 B2
`
`Broadband, Inc., IPR2014-00440, Paper 46, 2; Paper 47, 3 (PTAB April 6
`and 14, 2015)).
`According to Neonode, Exhibit 2014 “is a license agreement between
`Patent Owner Neonode and third-party Samsung.” Mot. 1. Neonode notes
`that in a co-pending matter, the Board held that this agreement is “currently
`confidential, and that making any part of it available to the public would
`cause harm to Samsung that outweighs the benefit to the public of
`maintaining a complete and understandable record.” Mot. 1–2 (citing
`Samsung Elecs. Co. Ltd. et al. v. Neonode Smartphone LLC, IPR2021-
`00145, Paper 53, at 5 (Jan. 5, 2022)).
`We agree for the reasons outlined by the Board in the related
`proceeding. Thus, there is good cause to seal Exhibit 2014 and references to
`its terms made in the Patent Owner Response and Exhibit 2055. There is
`also good cause to expunge sealed Exhibit 2011 because a better copy
`already exists on the record as Exhibit 2055.
`For the above reasons, the Motion is granted.
`
`II. ORDER
`
`In consideration of the foregoing, it is
`ORDERED that Neonode’s request for entry of the Proposed
`Protective Order (Ex. 2059) is granted;
`FURTHER ORDERED that the Proposed Protective Order (Ex. 2059)
`is entered as the Protective Order in this proceeding, and will govern the
`conduct of the proceeding unless modified by the Board;
`FURTHER ORDERED that the Motion to Seal (Paper 31) is granted;
`
`
`
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`5
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`IPR2021-01041
`Patent 8,095,879 B2
`
`
`FURTHER ORDERED that the Patent Owner Response (Paper 29, of
`which a public redacted version is submitted as Exhibit 2060), Exhibit 2055
`(of which a public redacted version is submitted as Exhibit 2061), and
`Exhibit 2014 are sealed; and
`FURTHER ORDERED that Exhibit 2011 is expunged.
`
`
`
`
`6
`
`
`
`IPR2021-01041
`Patent 8,095,879 B2
`
`For PETITIONER:
`Erika Arner
`Kevin Rodkey
`Yi Yu
`Wei Yuan
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`yi.yu@finnegan.com
`wei.yuan@finnegan.com
`
`
`For PATENT OWNER:
`Parham Hendifar
`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`hendifar@lowensteinweatherwax.com
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`Philip Graves
`GRAVES & SHAW LLP
`pgraves@gravesshaw.com
`
`
`
`
`
`
`7
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