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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`
`
`Case no. IPR2021-01413
`Patent 10,621,228
`
`
`
`
`PETITIONER’S UNOPPOSED MOTION TO SEAL BOARD’S ORDER
`(PAPER 56) AND PETITIONER’S REQUEST FOR REHEARING AND
`PRECEDENTIAL PANEL REVIEW FILED MARCH 22, 2023
`
`
`
`
`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
`
`Pursuant to 37 C.F.R. § 42.54, Petitioner Unified Patents, LLC (“Petitioner”)
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`files this Motion to Seal the Board’s Order (Paper 56) (“Order”) and Petitioner’s
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`Request for Rehearing and Precedential Panel Review filed concurrently herewith
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`on March 22, 2023 (“Request”). The Parties have conferred and Patent Owner
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`Memoryweb LLC (“Patent Owner”) does not oppose.
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`Good cause exists to seal the Order and Request because they contain
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`sensitive, non-public information. Specifically, these documents each rely on and
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`discuss the confidential materials and information found in, for example, the Patent
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`Owner’s Preliminary Sur-Reply (Paper 13), Patent Owner’s Response (Paper 23)
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`(POR), Petitioner’s Reply (Paper 29), Patent Owner’s Sur-Reply (Paper 35), and
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`Order (Paper 56), as well as Exhibits 1023, 1024, 1025, 1029, 2028, 2030, 2032,
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`2033, 2034, and 2036. As directed by the Board, the parties have emailed a redacted
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`version of the Order to the panel at trials@uspto.gov for filing. Order, 34. A public
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`version of the Request, from which the confidential information has been redacted,
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`will be filed shortly thereafter.
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`Petitioner previously filed a motion for entry of a Protective Order in this
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`proceeding and to seal Exhibits 1023-1025 and 1029. Paper 10. Petitioner also filed
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`a Motion to Seal regarding confidential information in the POR and Exhibits 2028,
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`2030, 2032, 2033, 2034, and 2036. Paper 24. The Board granted Petitioner’s
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`motions. Paper 26.
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`1
`
`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`Petitioner has also filed Motions to Seal regarding confidential information in
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`the Patent Owner’s Preliminary Sur-Reply (Paper 13), Petitioner’s Reply (Paper 29),
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`Patent Owner’s Sur-Reply (Paper 35), and confidential hearing transcript. See Papers
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`27, 31, 36, 54. The Board has yet to rule on these Motions.
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`Patent Owner did not oppose entry of the Protective Order or any of the
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`Motions to Seal. Counsel for Patent Owner has executed the Protective Order.
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`I. MOTION TO SEAL
`In an inter partes review, it is the default rule that all filings are publicly
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`available. 35 U.S.C. § 326(a)(1) and 37 C.F.R. § 42.14. Where a paper contains
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`confidential information, a petitioner may file “a motion to seal with a proposed
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`protective order as to the confidential information.” 37 C.F.R. § 42.55; see also 35
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`U.S.C. § 326(a)(1). A motion to seal and to enter a protective order will only be
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`granted if the movant demonstrates a showing of “good cause.” 37 C.F.R.
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`§ 42.54(a). The Board has established a four-pronged test that must be met for a
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`motion to seal to be granted:
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`a movant to seal must demonstrate adequately that (1) the information
`sought to be sealed is truly confidential, (2) a concrete harm would
`result upon public disclosure, (3) there exists a genuine need to rely in
`the trial on the specific information sought to be sealed, and (4), on
`balance, an interest in maintaining confidentiality outweighs the strong
`public interest in having an open record.
`
`2
`
`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4
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`(PTAB Jan. 19, 2018) (informative) (citing to inter alia 37 C.F.R. § 42.54(a)). This
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`Motion to Seal satisfies the four-pronged test in Argentum.
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`First, the redacted portions of the Order and forthcoming redacted portions of
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`the Request contain non-public, highly confidential proprietary business information
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`(“Information”)—information about Unified’s members and information regarding
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`Unified’s business operations—that Petitioner maintains as confidential trade
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`secrets and that is found in, for example, Exhibits 1023, 1024, 1025, 2028, 2033,
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`2036, and the POR, which the Board previously found properly sealed, as well as
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`the Patent Owner’s Preliminary Sur-Reply (Paper 13), Petitioner’s Reply (Paper 29),
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`Patent Owner’s Sur-Reply (Paper 35), and the confidential hearing transcript. Paper
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`26. This Information includes confidential, sensitive commercial information,
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`including closely held information related to Unified’s core business. Unified guards
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`such information closely to protect its members as well as its own business from
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`copying by others. Unified has not made, and does not intend to make, this
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`information publicly available and such information is subject to confidentiality
`
`obligations to third parties not involved in this proceeding.
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`
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`Second, several potential harms would occur if this Information were to be
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`disclosed. For example, disclosure of this Information to the public would expose
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`Unified’s business model and confidential business activities. Additionally, Unified
`
`3
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`has a contractual obligation with third parties not involved in this proceeding to
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`maintain the confidentiality of the Information. Without an assurance that the
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`Information will be protected, Unified’s members wishing to remain confidential
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`may be adversely affected. Disclosure of this Information to the public will not only
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`harm Unified, as discussed above, but would also harm third parties not involved in
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`this proceeding. Further, the public interest will not be harmed by sealing of the
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`confidential business Information.
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`
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`Third, there are allegations that certain entities are real parties-in-interest to
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`this proceeding. See Paper 23, 1, 14-26; Paper 35, 23-27; Paper 56. The Order and
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`Request rely on confidential information in Exhibits 1023, 1024, 1025, 2028, 2033,
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`2036, and the POR, which the Board previously found should be sealed, as well as
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`such information in the Patent Owner’s Preliminary Sur-Reply (Paper 13),
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`Petitioner’s Reply (Paper 29), Patent Owner’s Sur-Reply (Paper 35), and
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`confidential hearing transcript. Id.; Paper 26. This confidential information is
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`relevant to this dispute.
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`
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`Fourth, on balance, the interest in maintaining confidentiality outweighs the
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`public interest in having an entirely open record and the redacted portions of the
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`Order and forthcoming redacted portions of the Request should be sealed. Petitioner
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`respectfully requests that the Board grant this motion to seal.
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`4
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
`
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`II. GOOD CAUSE EXISTS FOR SEALING THE ORDER AND
`REQUEST
`In deciding whether to seal documents, the Board must find “good cause,” and
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`must “strike a balance between the public’s interest in maintaining a complete and
`
`understandable file history and the parties’ interest in protecting truly sensitive
`
`information.” Garmin v. Cuozzo, IPR2012-00001, Paper 36 (April 5, 2013).
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`The redacted portions of the Order and forthcoming redacted portions of the
`
`Request rely on and discuss confidential aspects of Exhibits 1023, 1024, 1025, 2028,
`
`2033, 2036, and the POR, which the Board previously found should be sealed, as
`
`well as the Patent Owner’s Preliminary Sur-Reply (Paper 13), Petitioner’s Reply
`
`(Paper 29), Patent Owner’s Sur-Reply (Paper 35), and confidential hearing
`
`transcript. Id.; Paper 26. As directed by the Board, the parties have emailed a
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`redacted version of the Order to the panel at trials@uspto.gov for filing. Order, 34.
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`A public version of the Request, from which the confidential information has been
`
`redacted, will be filed shortly thereafter.
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`Here, the balance overwhelmingly favors protecting Unified’s highly
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`confidential Information. The Information Unified seeks to protect has nothing to do
`
`with patentability, the scope of U.S. Patent No. 10,621,228 (the “’228 patent”), or
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`any matter generally impacting the public interest in evaluating the ’228 patent.
`
`Rather, the limited material sought to be protected involve Unified’s status as the
`
`5
`
`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`real party-in-interest. The material relates to certain business dealings between
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`Unified and non-parties to this proceeding. That material is not known to the public.
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`The public interest is well-served in keeping the Information included within
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`the redacted portions of the Order and forthcoming redacted portions of the Request
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`confidential. This Information was provided with the expectation that it would
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`remain confidential. The Board should seal this Information so that information can
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`be exchanged in trial proceedings without the fear of incidental public exposure of
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`confidential business information.
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`The redacted portions of the Order and forthcoming redacted portions of the
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`Request relate to Unified’s core business and the business dealings between Unified
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`and at least some of its members. The redacted portions of the Order and forthcoming
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`redacted portions of the Request contain highly confidential and extremely sensitive
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`commercial information related to Unified’s core business. Unified guards such
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`information closely as core business and contractual information, to protect its
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`members as well as its own business. Unified has not made, and does not intend to
`
`make, this information publicly available. Patent Owner has not contested the
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`sensitivity of this information or the fact that it is core to Unified’s business.
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`Unified’s business strategies and dealings with its members constitute highly
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`confidential business information, as well as trade secrets. The redacted portions of
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`the Order and forthcoming redacted portions of the Request contain information
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`6
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`about how Unified runs its business and its contractual relationship with its
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`members. Several potential harms would occur if this highly confidential business
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`information were to be disclosed. For example, disclosure of this information to the
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`public would provide Unified’s competitors and would-be business rivals with a
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`roadmap of how to replicate Unified’s unique, valuable business model. It would
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`reveal contractual business information between two parties produced voluntarily
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`under a joint protective order. Thus, the public interest will not be harmed by the
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`sealing of the confidential business information.
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`III. NON-CONFIDENTIAL VERSIONS SUBMITTED
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`As required by the TPG, the Default Protective Order, and the agreed-upon
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`Protective Order, a non-confidential redacted version of the Request will be filed
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`shortly hereafter. As directed by the Board, the parties have emailed a redacted
`
`version of the Order to the panel at trials@uspto.gov for filing. Order, 34. The
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`redactions are minimal and limited in nature and scope to the confidential data.
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`The undersigned counsel for Petitioner certifies the information sought to be
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`sealed by this Motion to Seal has not been published or otherwise made public.
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`IV. REQUEST FOR CONFERENCE CALL WITH THE BOARD
`Should the Board not be inclined to grant the present Motion to Seal, the
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`Parties hereby request a conference call with the Board to discuss any concerns prior
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`to the Board issuing a decision on the Motion.
`
`7
`
`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
`
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`V. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board seal
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`and protect Petitioner’s confidential information in the unredacted versions of the
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`Order and Request. Petitioner further requests that the Board seal and protect the
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`confidential information in these documents until such time as it receives and rules
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`on this Motion.
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`
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`
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`Dated: March 22, 2023
`
`
`Respectfully submitted,
`
`/Jonathan M. Strang/
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`
`COUNSEL FOR PETITIONER
`
`
`8
`
`
`
`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned hereby certifies that a copy of the foregoing UNOPPOSED
`
`MOTION TO SEAL was served on March 22, 2023, via electronic mail, as agreed
`
`to by counsel, upon the following counsel for Patent Owner:
`
`Jennifer Hayes
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`jenhayes@nixonpeabody.com
`
`George Dandalides
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`gdandalides@nixonpeabody.com
`
`Matthew A. Werber
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`mwerber@nixonpeabody.com
`
`Dated: March 22, 2023
`
`/Ashley Cheung/
`Ashley Cheung
`Paralegal
`Unified Patents, LLC
`
`
`
`
`
`
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