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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`PETITIONER’S MOTION TO EXPUNGE
`
`

`

`I.
`
`Introduction
`
`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`Pursuant to 37 C.F.R. § 42.56, Petitioner Unified Patents, LLC (“Unified”)
`
`files this Motion to Expunge certain confidential information in the record of this
`
`proceeding.
`
`This Motion is timely filed on April 28, 2023, within 45 days of the Final
`
`Written Decision (Paper 58) which issued on March 14, 2023. See Paper 58; Patent
`
`Trial Appeal Board Consolidated Trial Practice Guide November 2019, p. 21-22.
`
`However, Petitioner respectfully requests that the Board defer ruling on this
`
`Motion and preserve the record in its entirety, maintaining all confidential
`
`documents filed in this proceeding under seal, until resolution of (1) Petitioner’s
`
`Request for Rehearing and Precedential Panel Review (Paper 62), (2) Patent
`
`Owner’s Request for Rehearing (Paper 69), (3) Petitioner’s Request for Director
`
`Review (Paper 70), and (4) any appeal in this proceeding (or alternatively, until the
`
`period for filing a notice of appeal expires in this proceeding).
`
`Patent Owner states that it opposes the Motion to Expunge on the basis that
`
`the record should be preserved while this proceeding, IPR2022-00031, and
`
`IPR2022-00222 are ongoing and through the appeals. Patent Owner states that it
`
`does not believe that the request to defer ruling on the Motion to Expunge is
`
`sufficient to accomplish that outcome but does not otherwise oppose the request to
`
`defer ruling on the motion.
`
` 
`
`1
`
`

`

`II. Documents at Issue
`
`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`Petitioner respectfully submits that the following confidential documents be
`
`expunged from the record, after resolution of the matters identified in Section I, as
`
`they contain Petitioner’s highly confidential business information (collectively, “the
`
`Confidential Documents”):1
`
` Paper 13 (Patent Owner’s Preliminary Sur-Reply) (Confidential
`
`Version)
`
` Paper 23 (Patent Owner’s Response) (Confidential Version)
`
` Paper 29 (Petitioner’s Reply) (Confidential Version)
`
` Paper 35 (Patent Owner’s Sur-Reply) (Confidential Version)
`
` Paper 52 (Hearing Transcript) (Confidential Version)
`
` Paper 56 (Order) (Confidential Version)
`
` Paper 58 (Final Written Decision) (Confidential Version)
`
` Paper 62 (Petitioner’s Request for Rehearing and Precedential Panel
`
`Review) (Confidential Version)
`
` Paper 70 (Petitioner’s Request for Director Review) (Confidential
`
` 
`1 Exhibits 2027 and 2029 were filed by Patent Owner as available to the Parties and
`
`Board only but do not include Petitioner’s confidential information and Petitioner
`
`did not seek to seal them. See Paper 24, p. 8, FN2.
`
` 
`
`2
`
`

`

`Version)
`
`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
` Exhibit 1023 (Confidential Version)
`
` Exhibit 1024 (Confidential Version)
`
` Exhibit 1025 (Confidential Version)
`
` Exhibit 1029 (Confidential Version)
`
` Exhibit 2028 (Confidential Version)
`
` Exhibit 2030 (Confidential Version)
`
` Exhibit 2032 (Confidential Version)
`
` Exhibit 2033 (Confidential Version)
`
` Exhibit 2034 (Confidential Version)
`
` Exhibit 2036 (Confidential Version)
`
`For the reasons set forth below, after resolution of the matters identified in
`
`Section I, Petitioner requests that the Confidential Documents be expunged.
`
`III. Applicable Legal Standards
`
`37 C.F.R. § 42.56 provides that “[a]fter a denial of a petition to institute a trial
`
`or after final judgment in a trial, a party may file a motion to expunge confidential
`
`information in the record.” Similarly, the Consolidated Trial Practice Guide states,
`
`in pertinent part, that “[t]here is an expectation that information will be made public
`
`where the existence of the information is referred to in a decision to grant or deny a
`
` 
`
`3
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`request to institute a review or is identified in a final written decision following a
`
`trial. 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.” Consolidated Trial Practice Guide, p. 22. A party seeking
`
`expungement from the record must show good cause by demonstrating “that any
`
`information sought to be expunged constitutes confidential information, and that
`
`Petitioner’s interest in expunging it outweighs the public’s interest in maintaining a
`
`complete and understandable history of this inter partes review.” Atlanta Gas Light
`
`Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 97 at 2 (P.T.A.B. Apr.
`
`15, 2015).
`
`IV. Reasons for Relief Requested
`
`A. Procedural Background
`
`All of the Confidential Documents in this matter disclose confidential
`
`information relating to the real parties in interest (“RPI”) issue raised by Patent
`
`Owner and the Board. Where possible, redacted versions of these documents are or
`
`will be available to the public, and information regarding the contents of the
`
`information is in the record, as detailed in the following table:
`
`
`
`
`
` 
`
`4
`
`

`

`Confidential Version Redacted, Public Version
`
`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`(Patent
`13
`Paper
`Owner’s Preliminary
`Sur-Reply) 
`
`Paper 12
`
`(Patent
`23
`Paper
`Owner’s Response)
`
`EX1030
`
`Paper 29 (Petitioner’s
`Reply) 
`
`Paper 30
`
`(Patent
`35
`Paper
`Owner’s Sur-Reply)
`
`EX1039
`
` 
`
`5
`
`Information Regarding
`Redacted Content
`Paper 27
`(Petitioner’s
`Unopposed Third Motion
`to Seal); Paper 49 (Order
`Granting
`Petitioner’s
`Unopposed Motions
`to
`Seal); Paper 68 (Order
`Granting
`Petitioner’s
`Unopposed Motions
`to
`Seal)
`(Petitioner’s
`Paper 24
`Second
`Unopposed
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order); Paper
`54 (Petitioner’s Motion to
`Seal), p. 2, FN2; EX1043
`(Petitioner’s Email
`to
`Board)
`(Petitioner’s
`Paper 31
`Fourth
`Unopposed
`Motion to Seal); Paper 49
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal); Paper
`68
`(Order Granting
`Petitioner’s Unopposed
`Motions to Seal)
`Paper 36
`(Petitioner’s
`Unopposed Motion
`to
`Seal Patent Owner’s Sur-
`Reply); Paper 49 (Order
`Granting
`Petitioner’s
`Unopposed Motions
`to
`Seal); Paper 68 (Order
`Granting
`Petitioner’s
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`to
`
`Unopposed Motions
`Seal)
`(Petitioner’s
`Paper 54
`Unopposed Motion
`to
`Seal
`the Confidential
`Hearing
`Transcript);
`Paper 68 (Order Granting
`Petitioner’s Unopposed
`Motions to Seal)
`Paper 61
`(Petitioner’s
`Unopposed Motion
`to
`Seal Board’s Order and
`Petitioner’s Request for
`Rehearing
`and
`Precedential
`Panel
`Review); Paper 68 (Order
`Granting
`Petitioner’s
`Unopposed Motions
`to
`Seal)
`N/A
`
`Paper 52
`Transcript)
`
`(Hearing
`
`EX1042
`
`Paper 56 (Order)
`
`Not yet filed by the Board;
`proposed redactions emailed
`to the Board on March 22,
`2023
`per
`the Board’s
`directive
`
`(no
`
`redactions
`
`Paper 67
`needed)
`EX1044
`
`(Final
`58
`Paper
`Written Decision)
`Paper 62 (Petitioner’s
`Request for Rehearing
`and
`Precedential
`Panel Review)
`
`
`Paper 70 (Petitioner’s
`Request for Director
`Review)
`
`EX1045
`
`Exhibit 1023
`
`Exhibit 1022
`
` 
`
`6
`
`(Petitioner’s
`Paper 61
`Unopposed Motion
`to
`Seal Board’s Order and
`Petitioner’s Request for
`Rehearing
`and
`Precedential
`Panel
`Review); Paper 68 (Order
`Granting
`Petitioner’s
`Unopposed Motions
`to
`Seal)
`(Petitioner’s
`Paper 71
`Unopposed Motion
`to
`Seal Petitioner’s Request
`for Director Review)
`Paper 10
`(Petitioner’s
`Unopposed Motion
`to
`Seal and for Entry of
`Protective Order); Paper
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`(Order Granting
`26
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 10
`(Petitioner’s
`Unopposed Motion
`to
`Seal and for Entry of
`Protective Order); Paper
`26
`(Order Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 10
`(Petitioner’s
`Unopposed Motion
`to
`Seal and for Entry of
`Protective Order); Paper
`26
`(Order Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 10
`(Petitioner’s
`Unopposed Motion
`to
`Seal and for Entry of
`Protective Order); Paper
`26
`(Order Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`
`Exhibit 1024
`
`N/A (sealed in entirety)
`
`Exhibit 1025
`
`N/A (sealed in entirety)
`
`Exhibit 1029
`
`N/A (sealed in entirety)
`
`Exhibit 2028
`
`N/A (sealed in entirety)
`
`Exhibit 2030
`
`N/A (sealed in entirety)
`
` 
`
`7
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`
`Exhibit 2032
`
`N/A (sealed in entirety)
`
`Exhibit 2033
`
`N/A (sealed in entirety)
`
`Exhibit 2034
`
`N/A (sealed in entirety)
`
`Exhibit 2036
`
`Exhibit 1031
`
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`Paper 24
`(Petitioner’s
`Unopposed
`Second
`Motion to Seal); Paper 26
`(Order
`Granting
`Petitioner’s Unopposed
`Motions to Seal Entering
`Protective Order)
`
`
`In detail, Petitioner filed unopposed Motions to Seal regarding the above
`
`referenced Confidential Documents (except the Final Written Decision, which did
`
`not disclose Petitioner’s confidential business information and Petitioner therefore
`
`did not seek to seal). See Papers 10, 24, 27, 31, 36, 54, 61, 71; EX3002. The Board
`8
`
` 
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`has granted each Motion to Seal except the Motion filed as Paper 71 (regarding
`
`Petitioner Request for Director Review (Paper 70) filed April 13, 2023), which the
`
`Board has not yet ruled on. See Papers 26, 49, 68.
`
`B. Good Cause Exists for Expunging the Confidential Documents
`
`As detailed in Petitioner’s Motions to Seal (Papers 10, 24, 27, 31, 36, 54, 61,
`
`71), the documents identify contain Petitioner’s highly confidential business
`
`information related to the RPI issue raised by the Patent Owner and the Board in this
`
`proceeding. Petitioner guards this information in order to protect its business.
`
`The information Petitioner seeks to seal is truly confidential, as they include
`
`confidential and sensitive business information derived from the confidential
`
`exhibits and relating, for example, to information about Unified’s members and
`
`information regarding Unified’s business operations, that Petitioner maintains as
`
`confidential trade secrets.
`
`Moreover, Petitioner (and possibly its members) would suffer several
`
`concrete harms from the public disclosure of the Confidential Documents. Because
`
`the confidential information details Petitioner’s proprietary and closely guarded
`
`business model and methods and the specific dealings with Petitioner’s members,
`
`public access to this information could give Petitioner’s competitors and would-be
`
`rivals unfair competitive advantages, including a roadmap of how to replicate
`
`Petitioner’s unique, valuable business model. Public disclosure of this information
`
` 
`
`9
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`could also undermine Petitioner’s business and competitiveness in the market may
`
`expose Petitioner’s members (who are not parties to this proceeding) and their
`
`confidential information to potential harms and jeopardize contractual and
`
`confidential agreements between Petitioner and its members.
`
`The Confidential Documents do not relate to the merits of the case, but instead
`
`only involve the RPI issue. For this reason, the public interest in having access to
`
`the details of Unified’s confidential business dealings is minimal, while the public
`
`interest is well-served in keeping such business information readily available and
`
`exchangeable between parties based on voluntary discovery without the fear of
`
`incidental public exposure of confidential business information.
`
`Moreover, given the information that is publicly available in the record
`
`regarding the contents of the Confidential Documents, the record provides a
`
`“complete and understandable file history for public notices purposes,” so there is
`
`no public interest in now making the Confidential Documents publicly available.
`
`Consolidated Trial Practice Guide at 21-22; accord MPEP § 724.05 (Patent Office
`
`may expunge information that is not material to patentability). Accordingly, good
`
`cause exists for protecting Petitioner’s confidential information by expunging the
`
`Confidential Documents.
`
`V. Conclusion
`
`Because the Confidential Documents contain Petitioner’s highly confidential
`
` 
`
`10
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
` 
`business information, redacted versions of most of the Confidential Documents are
`
`available to the public, and the Confidential Documents are not relevant to the merits
`
`of the case, Petitioner respectfully requests that after resolution of the matters
`
`identified in Section I the Board expunge Papers 13, 23, 29, 35, 52, 56, 58, 62, and
`
`70, and Exhibits 1023-1025, 1029, 2028, 2030, 2032-2034, and 2036 from the record
`
`pursuant to 37 C.F.R. § 42.56. If the Board denies this Motion, Petitioner
`
`respectfully requests that the Board do so without prejudice so Petitioner may file
`
`another Motion to Expunge as appropriate.
`
`
`
`Dated: April 28, 2023
`
`
`
`
`
`Respectfully submitted,
`
`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
`Counsel for Petitioner
`
`
`
`
`11
`
`
`
` 
`
`

`

`Motion to Expunge, IPR2021-01413
`U.S. Patent 10,621,228
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on April 28, 2023 a copy of the
`
`foregoing PETITIONER’S MOTION TO EXPUNGE was filed on P-TACTS and
`
`served via email directed to counsel of record for the patent owner at the following:
`
`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: April 28, 2023
`
`Respectfully submitted,
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`
`Paralegal
`Unified Patents, LLC
`
`
`
`

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