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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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`
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`UNIFIED PATENTS, LLC
`Petitioner
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`v.
`
`MEMORY WEB, LLC
`Patent Owner
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`
`
`Case no. IPR2021-01413
`Patent 10,621,228
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`
`
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`PETITIONER’S UNOPPOSED THIRD MOTION TO SEAL
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`Petitioner Unified Patents, LLC (“Petitioner”) files this Motion to Seal the
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`unredacted version of Patent Owner’s Preliminary Sur-Reply (“Preliminary Sur-
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`Reply”), filed as Paper 13 on January 6, 2022.1 Patent Owner filed Paper 13 as
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`available to the Parties and Board only. Patent Owner also filed a publicly available
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`version of the Preliminary Sur-Reply, which redacted confidential portions of the
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`document, as Paper 12 on January 6, 2022. Petitioner agrees with the redactions
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`made by Patent Owner in Paper 12.
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`Petitioner requests that Paper 13 be sealed under 37 C.F.R. § 42.54. Good
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`cause exists to seal this document because it contains sensitive, non-public
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`information. Specifically, the redacted portions of the Paper 13, shown in Paper 12,
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`rely on and discuss confidential materials and information found in Exhibits 1023,
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`1024, and 1025. See Paper 12, p. 7; Paper 13, p. 7. Exhibit 1023 is the Supplemental
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`Declaration of Kevin Jakel and was marked “HIGHLY CONFIDENTIAL –
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`ATTORNEY’S EYES ONLY” under the Protective Order in this case. Exhibits
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`1 Petitioner’s delay in filing this Motion to Seal was inadvertent. None of Petitioner’s
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`confidential information has been made public by this delay as Paper 13 was filed
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`by Patent Owner as available to the Parties and Board only, and the version of this
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`document redacting Petitioner’s confidential information was filed publicly by
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`Patent Owner as Paper 12.
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`1
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`1024 and 1025 are Unified membership agreements and were marked “HIGHLY
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`CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective Order in
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`this case. Petitioner previously moved to seal Exhibits 1023, 1024, and 1025. See
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`Petitioner’s Motion to Seal and for Entry of Protective Order (Paper 10). The Board
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`granted Petitioner’s request to seal these exhibits. See Order Granting Petitioner’s
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`Unopposed Motions to Seal Entering Protective Order (Paper 26), p. 4.
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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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`protective order as to the confidential information.” 2 37 C.F.R. § 42.55; see also 35
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`2 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
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`moved to seal portions of Patent Owner’s Response (“POR”) and Exhibit 2036, and
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`the entirety of Exhibits 2028, 2030, 2032, 2033, and 2034 in a second Motion to
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`Seal. Paper 24. Counsel for Patent Owner executed the Protective Order, and Patent
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`
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`2
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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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.
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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 Preliminary Sur-Reply contain non-public,
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`highly confidential proprietary business information (“Information”)—information
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`about Unified’s members and
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`information
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`regarding Unified’s business
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`operations—that Petitioner maintains as confidential trade secrets. This Information
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`includes confidential, sensitive commercial information, including closely held
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`Owner did not oppose entry of the Protective Order or the Motions to Seal. The
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`Board granted Petitioner’s motions and entered the Protective Order. Paper 26.
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`3
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`information related to Unified’s core business. Unified guards such information
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`closely to protect its members as well as its own business from copying by others.
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`Unified has not made, and does not intend to make, this information publicly
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`available and such information is subject to confidentiality obligations to third
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`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
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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, Patent Owner asserts that certain entities are real parties-in-interest to
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`this proceeding in its Preliminary Sur-Reply. See Paper 13, p. 7. Petitioner disputes
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`these assertions. This Information will be relied on in this trial to resolve this
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`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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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`public interest in having an entirely open record and the redacted portions of the
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`Preliminary Sur-Reply should be sealed. Petitioner respectfully requests that the
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`Board grant this motion to seal.
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`II. GOOD CAUSE EXISTS FOR SEALING THE PRELIMINARY SUR-
`REPLY
`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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`The redacted portions of the Preliminary Sur-Reply rely on and discuss the
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`confidential aspects of Exhibits 1023, 1024, and 1025. A redacted version of the
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`Preliminary Sur-Reply was filed by Patent Owner as Paper 12.
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`Exhibit 1023 is the Supplemental Declaration of Kevin Jakel and was marked
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`“HIGHLY CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective
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`Order in this case. This declaration includes sensitive business information which
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`Petitioner asserts has not been published or otherwise been made public. A public
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`version of Exhibit 1023, from which the confidential information has been redacted,
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`was filed as Exhibit 1022.
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`Exhibits 1024 and 1025 are Unified membership agreements and were marked
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`“HIGHLY CONFIDENTIAL – ATTORNEY’S EYES ONLY” under the Protective
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`5
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`
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
`
`Order in this case. These documents contain sensitive business information which
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`Petitioner asserts has not been published or otherwise been made public. Due to the
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`nature of Exhibits 1024 and 1025, Petitioner could not meaningfully provide
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`redacted versions of these documents and requested that they remain sealed in their
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`entirety.
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`The Board granted Petitioner’s request to seal Exhibits 1023, 1024, and 1025.
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`See Paper 26, p. 4.
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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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`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
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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 Preliminary Sur-Reply confidential. The Information of
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`these redacted portions was provided to Patent Owner in Exhibits 1023, 1024, and
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`1025 with the expectation that it would remain confidential. The Board should seal
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`this Information of the Preliminary Sur-Reply so that information can be exchanged
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`in trial proceedings without the fear of incidental public exposure of confidential
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`6
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`
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`business information. The Board previously granted Petitioner’s request to seal
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`Exhibits 1023, 1024, and 1025. See Paper 26, p. 4.
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`The redacted portions of the Preliminary Sur-Reply relate to Unified’s core
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`business and the business dealings between Unified and at least some of its members.
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`The redacted portions of the Preliminary Sur-Reply contain highly confidential and
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`extremely sensitive commercial information related to Unified’s core business.
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`Unified guards such information closely as core business and contractual
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`information, to protect its members as well as its own business. Unified has not
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`made, and does not intend to make, this information publicly available. Patent
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`Owner has not contested the sensitivity of this information or the fact that it is core
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`to Unified’s business. Indeed, Patent Owner redacted the confidential portions of the
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`Preliminary Sur-Reply itself and filed that version publicly as Paper 12; Patent
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`Owner filed the unredacted version as available to the Parties and Board only as
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`Paper 13.
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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 Preliminary Sur-Reply contain information about how Unified runs its business
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`and its contractual relationship with its members. Several potential harms would
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`occur if this highly confidential business information were to be disclosed. For
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`example, disclosure of this information to the public would provide Unified’s
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`7
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`competitors and would-be business rivals with a roadmap of how to replicate
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`Unified’s unique, valuable business model. It would reveal contractual business
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`information between two parties produced voluntarily under a joint protective order.
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`Thus, the public interest will not be harmed by the sealing of the confidential
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`business information.
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`III. NON-CONFIDENTIAL VERSION 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 Preliminary Sur-Reply
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`was filed by Patent Owner as Paper 12. The redactions are minimal and limited in
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`nature and scope to the confidential data. Petitioner agrees with the redactions.
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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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`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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`Preliminary Sur-Reply (Paper 13). Petitioner further requests that the Board seal
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`8
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`and protect the confidential information in this document until such time as it
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`receives and rules on this Motion.
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`
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`Dated: July 19, 2022
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`
`
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`Respectfully submitted,
`
`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
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`COUNSEL FOR PETITIONER
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`9
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`
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`IPR2021-01413, U.S. Patent 10,621,228
`Petitioner’s Unopposed Third Motion to Seal
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`The undersigned hereby certifies
`that a copy of
`the
`foregoing
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`PETITIONER’S UNOPPOSED THIRD MOTION TO SEAL was served on
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`July 19, 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
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`Dated: July 19, 2022
`
`/Ashley Cheung/
`Ashley Cheung
`Paralegal
`Unified Patents, LLC
`
`
`
`
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