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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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`
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`
`
`Case no. IPR2021-01413
`Patent 10,621,228
`
`
`
`
`PETITIONER’S UNOPPOSED MOTION TO SEAL PETITIONER’S
`REQUEST FOR DIRECTOR REVIEW OF FINAL WRITTEN DECISION
`FILED APRIL 13, 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 Petitioner’s Request for Director Review of Final
`
`Written Decision filed concurrently herewith on April 13, 2023 (“Request for
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`Director Review”). The Parties have conferred and Patent Owner Memoryweb LLC
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`(“Patent Owner”) does not oppose.
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`Good cause exists to seal the Request for Director Review because it contains
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`sensitive, non-public information. Specifically, this document relies on and
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`discusses the confidential materials and information found in, for example, the
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`Patent Owner’s Preliminary Sur-Reply (Paper 13), Patent Owner’s Response (Paper
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`23) (POR), Petitioner’s Reply (Paper 29), Patent Owner’s Sur-Reply (Paper 35),
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`confidential hearing transcript (Paper 52), Order (Paper 56), and Request for
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`Rehearing and Precedential Panel Review (Paper 62), as well as Exhibits 1023,
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`1024, 1025, 1029, 2028, 2030, 2032, 2033, 2034, and 2036. A public version of the
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`Request for Director Review, from which the confidential information has been
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`redacted, 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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`
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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), confidential hearing transcript (Paper 52),
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`Order (Paper 56), and Request for Rehearing and Precedential Panel Review (Paper
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`62). See Papers 27, 31, 36, 54, 61. The Board granted these motions. Paper 68.
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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
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`2
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`
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`public interest in having an open record.
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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 forthcoming redacted portions of the Request for Director Review
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`contain non-public, highly confidential proprietary business
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`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, the Patent Owner’s Preliminary Sur-Reply
`
`(Paper 13), Patent Owner’s Response (Paper 23) (POR), Petitioner’s Reply (Paper
`
`29), Patent Owner’s Sur-Reply (Paper 35), confidential hearing transcript (Paper
`
`52), Order (Paper 56), and Request for Rehearing and Precedential Panel Review
`
`(Paper 62), as well as Exhibits 1023, 1024, 1025, 1029, 2028, 2030, 2032, 2033,
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`2034, and 2036, which the Board previously found properly sealed. Papers 26, 68.
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`This Information includes confidential, sensitive commercial information, including
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`closely held information related to Unified’s core business. Unified guards such
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`information closely to protect its members as well as its own business from copying
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`by others. Unified has not made, and does not intend to make, this information
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`publicly available and such information is subject to confidentiality obligations to
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`third parties not involved in this proceeding.
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`3
`
`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Motion to Seal
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`Second, several potential harms would occur if this Information were to be
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`
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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
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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 Request for
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`Director Review relies on confidential information in Patent Owner’s Preliminary
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`Sur-Reply (Paper 13), Patent Owner’s Response (Paper 23) (POR), Petitioner’s
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`Reply (Paper 29), Patent Owner’s Sur-Reply (Paper 35), confidential hearing
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`transcript (Paper 52), Order (Paper 56), and Request for Rehearing and Precedential
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`Panel Review (Paper 62), as well as Exhibits 1023, 1024, 1025, 1029, 2028, 2030,
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`2032, 2033, 2034, and 2036, which the Board previously found properly sealed. Id.;
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`Papers 26, 68. This confidential information is 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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`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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`public interest in having an entirely open record and the forthcoming redacted
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`portions of the Request for Director Review should be sealed. Petitioner respectfully
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`requests that the Board grant this motion to seal.
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`II. GOOD CAUSE EXISTS FOR SEALING THE REQUEST FOR
`DIRECTOR REVIEW
`In deciding whether to seal documents, the Board must find “good cause,” and
`
`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 forthcoming redacted portions of the Request for Director Review rely on
`
`and discuss confidential aspects of Patent Owner’s Preliminary Sur-Reply (Paper
`
`13), Patent Owner’s Response (Paper 23) (POR), Petitioner’s Reply (Paper 29),
`
`Patent Owner’s Sur-Reply (Paper 35), confidential hearing transcript (Paper 52),
`
`Order (Paper 56), and Request for Rehearing and Precedential Panel Review (Paper
`
`62), as well as Exhibits 1023, 1024, 1025, 1029, 2028, 2030, 2032, 2033, 2034, and
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`2036, which the Board previously found properly sealed. Papers 26, 68. A public
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`version of the Request for Director Review, 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
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`5
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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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`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.
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`Rather, the limited material sought to be protected involve Unified’s status as the
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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 forthcoming redacted portions of the Request for Director Review confidential.
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`This Information was provided with the expectation that it would remain
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`confidential. The Board should seal this Information so that information can be
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`exchanged in trial proceedings without the fear of incidental public exposure of
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`confidential business information.
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`The forthcoming redacted portions of the Request for Director Review relate
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`to Unified’s core business and the business dealings between Unified and at least
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`some of its members. The forthcoming redacted portions of the Request for Director
`
`Review contain highly confidential and extremely sensitive commercial information
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`related to Unified’s core business. Unified guards such information closely as core
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`business and contractual information, to protect its members as well as its own
`
`business. Unified has not made, and does not intend to make, this information
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`publicly available. Patent Owner has not contested the sensitivity of this information
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`or the fact that it is core to Unified’s business.
`
`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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`Unified’s business strategies and dealings with its members constitute highly
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`confidential business information, as well as trade secrets. The forthcoming redacted
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`portions of the Request for Director Review contain information about how Unified
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`runs its business and its contractual relationship with its members. Several potential
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`harms would occur if this highly confidential business information were to be
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`disclosed. For example, disclosure of this information to the public would provide
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`Unified’s competitors and would-be business rivals with a roadmap of how to
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`replicate Unified’s unique, valuable business model. It would reveal contractual
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`business information between two parties produced voluntarily under a joint
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`protective order. Thus, the public interest will not be harmed by the sealing of the
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`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 for Director
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`Review will be filed shortly hereafter. The redactions will be minimal and limited in
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`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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`7
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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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`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.
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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 version of the
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`Request for Director Review. Petitioner further requests that the Board seal and
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`protect the confidential information in this document until such time as it receives
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`and rules on this Motion.
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`
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`Dated: April 13, 2023
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`
`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
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`
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`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
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`MOTION TO SEAL was filed on P-TACTS and served on April 13, 2023, via
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`electronic mail, as agreed to by counsel, upon the following counsel for Patent
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`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
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`Dated: April 13, 2023
`
`/Ashley Cheung/
`Ashley Cheung
`Paralegal
`Unified Patents, LLC
`
`
`
`
`
`
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