UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`MEMORY WEB, LLC
`Patent Owner
`
`Case no. IPR2021-01413
`Patent 10,621,228
`
`PETITIONER’S UNOPPOSED SECOND MOTION TO SEAL
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`MEMORY WEB, LLC
`Patent Owner
`
`Case no. IPR2021-01413
`Patent 10,621,228
`
`PETITIONER’S UNOPPOSED SECOND MOTION TO SEAL
`
`
`
`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
`
`Petitioner Unified Patents, LLC (“Petitioner”) files this Motion to Seal the
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`Patent Owner’s Response (Paper 23) (“POR”) and Exhibits 2028, 2030, 2032, 2033,
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`2034, and 2036. Concurrent with this Motion, Petitioner submits redacted copies of
`
`the POR (the public/redacted copy of the POR is being filed as Exhibit 1030) and
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`Exhibit 2036 (the public/redacted copy of Exhibit 2036 is being filed as Exhibit
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`1031). Petitioner requests that these documents be sealed under 37 C.F.R. § 42.54.
`
`Good cause exists to seal the unredacted versions of these documents because they
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`contain sensitive, non-public information.
`
`Exhibits 2028 and 2030 are each a listing of email addresses belonging to
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`Unified members, Exhibit 2032 is an email communication, Exhibit 2033 is a
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`presentation slide deck, Exhibit 2034 is a listing of post-grant filings, and Exhibit
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`2036 is a deposition transcript of Unified’s Chief Executive Officer, Kevin Jakel.
`
`These exhibits address confidential aspects of Unified’s business. The redacted
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`portions of the POR rely on and discuss these confidential materials and information.
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`
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`Petitioner certifies that it has conferred with Patent Owner through counsel,
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`and Patent Owner does not oppose this Motion to Seal.
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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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`1
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
`
`protective order as to the confidential information.” 1 37 C.F.R. § 42.55; see also 35
`
`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.
`
`§ 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.
`
`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 POR and Exhibit 2036, and Exhibits 2028,
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`2030, 2032, 2033, and 2034 in their entireties, contain non-public, highly
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`1 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. Patent Owner did
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`not oppose entry of the Protective Order or that Motion to Seal. Counsel for Patent
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`Owner has executed the Protective Order.
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`2
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
`
`confidential proprietary business information (“Information”)—information about
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`Unified’s members and information regarding Unified’s business operations—that
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`Petitioner maintains as confidential trade secrets. This Information includes
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`confidential, sensitive commercial information, including closely held information
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`related to Unified’s core business. Unified guards such information closely to protect
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`its members as well as its own business from copying by others. Unified has not
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`made, and does not intend to make, this information publicly available and such
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`information is subject to confidentiality obligations to third parties not involved in
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`this proceeding. Due to the nature of Exhibits 2028, 2030, 2032, 2033, and 2034,
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`Petitioner cannot meaningfully provide redacted versions of these documents, and
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`requests that they remain sealed in their entirety.
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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
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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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`3
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`
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`confidential business Information.
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
`
`
`
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`Third, Patent Owner asserts that certain entities are real parties-in-interest to
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`this proceeding in its Patent Owner Response. See Paper 23, 1, 14-26. Petitioner
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`disputes these assertions. This Information will be relied on in this trial to resolve
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`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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`POR and Exhibit 2036, and Exhibits 2028, 2030, 2032, 2033, and 2034 in their
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`entireties, should be sealed. Petitioner respectfully requests that the Board grant this
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`motion to seal.
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`II. GOOD CAUSE EXISTS FOR SEALING THE POR AND EXHIBITS
`2028, 2030, 2032, 2033, 2034, and 2036
`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
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” Garmin v. Cuozzo, IPR2012-00001, Paper 36 (April 5, 2013).
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`Exhibit 2028 is a listing of email addresses belonging to Unified members
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`who were sent the News Update of Exhibit 2027 and has been marked “HIGHLY
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`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
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`this case. This document contains sensitive business information which Petitioner
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`4
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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`asserts has not been published or otherwise been made public. Due to the nature of
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`Exhibit 2028, Petitioner cannot meaningfully provide redacted versions of this
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`document, and requests that it remain sealed in its entirety.
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`Exhibit 2030 is a listing of email addresses belonging to Unified members
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`who were sent the News Update of Exhibit 2029 and has been marked “HIGHLY
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`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
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`this case. This document contains sensitive business information which Petitioner
`
`asserts has not been published or otherwise been made public. Due to the nature of
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`Exhibit 2030, Petitioner cannot meaningfully provide redacted versions of this
`
`document, and requests that it remain sealed in its entirety.
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`Exhibit 2032 is an email communication and has been marked “HIGHLY
`
`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
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`this case. This document contains sensitive business information which Petitioner
`
`asserts has not been published or otherwise been made public. Due to the nature of
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`Exhibit 2032, Petitioner cannot meaningfully provide redacted versions of this
`
`document, and requests that it remain sealed in its entirety.
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`Exhibit 2033 is a presentation slide deck and has been marked “HIGHLY
`
`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
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`this case. This document contains sensitive business information which Petitioner
`
`asserts has not been published or otherwise been made public. Due to the nature of
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`5
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
`
`Exhibit 2033, Petitioner cannot meaningfully provide redacted versions of this
`
`document, and requests that it remain sealed in its entirety.
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`Exhibit 2034 is a listing of post-grant filings and has been marked “HIGHLY
`
`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
`
`this case. This document contains sensitive business information which Petitioner
`
`asserts has not been published or otherwise been made public. Due to the nature of
`
`Exhibit 2034, Petitioner cannot meaningfully provide redacted versions of this
`
`document, and requests that it remain sealed in its entirety.
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`Exhibit 2036 is a deposition transcript of Petitioner’s Chief Executive Officer,
`
`Kevin Jakel, and was marked in its entirety as highly confidential, attorney’s eyes
`
`only during the deposition, and filed with the Board by Patent Owner as available to
`
`the Parties and Board only. EX2036, page 1, page 20:1-5. This transcript includes
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`sensitive business information which Petitioner asserts has not been published or
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`otherwise been made public. A public version of Exhibit 2036, from which the
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`confidential information has been redacted, is being filed concurrently as Exhibit
`
`1031.
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`The redacted portions of the POR rely on and discuss these confidential
`
`aspects of Exhibits 2028, 2030, 2032, 2033, 2034, and 2036. A redacted version of
`
`the POR is being filed concurrently as Exhibit 1030.
`
`6
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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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.
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`Rather, the limited materials sought to be protected involve Unified’s status as the
`
`real party-in-interest. The material relates to certain business dealings between
`
`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
`
`the redacted portions of the POR and Exhibit 2036, and Exhibits 2028, 2030, 2032,
`
`2033, and 2034 in their entireties, confidential. This Information was provided with
`
`the expectation that it would remain confidential. The Board should seal this
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`Information so that information can be exchanged in trial proceedings without the
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`fear of incidental public exposure of confidential business information.
`
`The redacted portions of the POR and Exhibit 2036, and Exhibits 2028, 2030,
`
`2032, 2033, and 2034 in their entireties, relate to Unified’s core business and the
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`business dealings between Unified and at least some of its members. The redacted
`
`portions of the POR and Exhibit 2036, and Exhibits 2028, 2030, 2032, 2033, and
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`2034 in their entireties, contain highly confidential and extremely sensitive
`
`commercial information related to Unified’s core business. Unified guards such
`
`information closely as core business and contractual information, to protect its
`
`7
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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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. In fact,
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`Patent Owner filed the POR and all the exhibits subject to this Motion to Seal, as
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`well as other exhibits, as available to the Parties and Board only.2
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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
`
`the POR and Exhibit 2036, and Exhibits 2028, 2030, 2032, 2033, and 2034 in their
`
`entireties, contain information about how Unified runs its business and its
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`contractual relationship with its members. Several potential harms would occur if
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`this highly confidential business information were to be disclosed. For example,
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`disclosure of this information to the public would provide Unified’s competitors and
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`would-be business rivals with a roadmap of how to replicate Unified’s unique,
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`2 Unified produced Exhibits 2027 and 2029 to Patent Owner. Exhibits 2027 and 2029
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`were marked by Patent Owner as “HIGHLY CONFIDENTIAL – ATTORNEY’S
`
`EYES ONLY” and filed by Patent Owner as available to the Parties and Board only;
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`however, these exhibits are not subject to this Motion to Seal and Unified does not
`
`seek to seal these exhibits. Moreover, Exhibit 2027 is the same as Exhibit 1028,
`
`previously filed publicly by Unified.
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`8
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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`valuable business model. It would reveal contractual business information between
`
`two parties produced voluntarily under a joint protective order. Thus, the public
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`interest will not be harmed by the sealing of the confidential business information.
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`III. NON-CONFIDENTIAL VERSIONS SUBMITTED
`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 POR has been filed as
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`Exhibit 1030, and a non-confidential redacted version of Exhibit 2036 (Deposition
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`transcript of Petitioner’s Chief Executive Officer, Kevin Jakel) has been filed as
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`Exhibit 1031. The redactions are minimal and limited in nature and scope to the
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`confidential data.
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`Petitioner submits that Exhibits 2028, 2030, 2032, 2033, and 2034 are highly
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`confidential in their entireties.
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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.
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`9
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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`V.
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`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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`POR and Exhibits 2028, 2030, 2032, 2033, 2034, and 2036 in accordance therewith.
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`Petitioner further requests that the Board seal and protect the confidential
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`information in these documents until such time as it receives and rules on this
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`Motion.
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`Dated: June 14, 2022
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`Respectfully submitted,
`
`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
`
`COUNSEL FOR PETITIONER
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`10
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`
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`IPR2021-01413, U.S. 10,621,228
`Petitioner’s Unopposed Second Motion to Seal
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned hereby certifies that copies of the foregoing UNOPPOSED
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`SECOND MOTION TO SEAL, Exhibit 1030, and Exhibit 1031 were served on
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`June 14, 2022, via electronic mail, as agreed to by counsel, upon the following
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`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: June 14, 2022
`
`/Ashley Cheung/
`Ashley Cheung
`Paralegal
`Unified Patents, LLC
`
`
`
`
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