`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00129
`
`U.S. PATENT NO. 8,566,839
`
`
`
`
`
`
`
`PATENT OWNER’S UNOPPOSED MOTION TO FILE UNDER SEAL
`PURSUANT TO 37 C.F.R. §§ 42.14 AND 42.54
`
`
`
`
`40405732.2
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`
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`
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner respectfully submits
`
`this Patent Owner’s Unopposed Motion to File Under Seal, requesting that the
`
`following information remain under seal: portions of Patent Owner’s Response, as
`
`well as Exhibits 2010-2019 and 2021-2023, filed therewith. The under-seal version
`
`of the Patent Owner Response, along with the identified under-seal exhibits, have
`
`been filed.
`
`Patent Owner has conferred with the Petitioner, and the Petitioner does not
`
`oppose this motion to seal.
`
`Patent Owner respectfully requests that the Board enter the default protective
`
`order (See Consolidated Practice Guide at 107-122 (App. B)) in the above captioned
`
`case to govern treatment of the documents and information identified herein.
`
`I.
`
`Good Cause
`For good cause, the Board may “issue an order to protect a party or person
`
`from disclosing confidential information.” 37 C.F.R. § 42.54. The rules “identify
`
`confidential information in a manner consistent with Federal Rule of Civil Procedure
`
`26(c)(1)(G), which provides for protective orders for trade secret or other
`
`confidential research, development, or commercial information.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
`
`Each of the sets of information below meets this standard, and for the reasons
`
`explained there is good cause for why those documents should remain under seal.
`
`40405732.2
`
`2
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`
`
`
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`A. Under-Seal Version of Patent Owner’s Response
`Patent Owner has filed an under-seal Patent Owner Response and a public,
`
`redacted version of that Response. The redacted portions on pages 22-23 and 28-29
`
`contain confidential Patent Owner regarding licensing negotiations strategy and
`
`terms, and license agreements.
`
`This information fits within the kinds of information that the Trial Practice
`
`guide considers to be “confidential information,” such as “confidential research,
`
`development, or commercial information.” 77 Fed. Reg. 48756, 48760.
`
`There is good cause for keeping the redacted information contained in Patent
`
`Owner’s Response under seal. Publicly revealing the sensitive, competitive
`
`information could put the parties at a disadvantage in the marketplace.
`
`Exhibits 2010-2019: Licensing Negotiation Communication
`B.
`Exhibits 2010-2019, these documents contain confidential information about
`
`Patent Owner’s licensing strategy. This information fits squarely within the kinds of
`
`information that the Trial Practice guide considers to be “confidential information,”
`
`such as “confidential research, development, or commercial information.” 77 Fed.
`
`Reg. 48756, 48760.
`
`There is good cause for Patent Owner’s confidential licensing negotiations
`
`communications under seal. Publicly revealing
`
`the sensitive, competitive
`
`information would put Patent Owner at a disadvantage in the marketplace.
`
`40405732.2
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`3
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`
`
`
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`C. Exhibits 2021-2023: License Agreements
`Exhibits 2021-2023, filed under seal, are confidential settlement and license
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`agreements. These documents contain details of confidential licensing negotiations
`
`and financial terms. The public release of these documents and references to these
`
`documents would harm both parties’ competitive standing in their future patent
`
`acquisition and monetization efforts by disclosing negotiation tactics and the parties’
`
`process for the sale and acquisition of patents.
`
`There is good cause for keeping these documents under seal.
`
`II. Certification of Conference
`Pursuant to 37 C.F.R. §§ 42.54(a), Patent Owner certifies that it has in good
`
`faith conferred with Petitioners’ counsel. Petitioners’ counsel does not oppose this
`
`motion to seal.
`
`Both Petitioners and Patent Owner agree to abide by the parties’ stipulated
`
`Protective Order pending a decision by the Board on the motion for entry thereof.
`
`III. Request for Conference Call with the Board
`Should the Board not be inclined to grant the present Unopposed Motion to
`
`File Under Seal, Patent Owner hereby requests a conference call with the Board to
`
`discuss any concerns prior to the Board issuing a decision on the Motion.
`
`IV. Conclusion
`Patent Owner respectfully requests that the Board grant this Unopposed
`
`Motion to File Under Seal, and keep the following documents under seal: the under-
`
`40405732.2
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`4
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`
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`
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`seal, unredacted version of the Patent Owner Response, and Exhibits 2010-2019 and
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`2021-2023.
`
`
`
`
`
`Date: August 19, 2022
`
`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr, LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
`
`
`
`Respectfully Submitted,
`
`Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr, LLP
`161 N. Clark Street, Suite 4200
`Chicago, Illinois 60601
`Tel: (312) 876-7151
`Brian.Michalek@saul.com
`Joseph.Kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing Arnstein & Lehr, LLP
`131 Darmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`Counsel for Patent Owner, BillJCo, LLC
`
`
`
`
`
`
`40405732.2
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`5
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`
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`
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`Certification of Service Under 37 C.F.R. § 42.6(e))
`
`
`The undersigned hereby certifies that Patent Owner’s Unopposed Motion to
`
`File Under Seal Under 37 C.F.R. §§ 42.14 and 42.54 was served electronically via
`e-mail on August 19, 2022 in its entirety on the following counsel of record for the
`Petitioner:
`
`Larissa.Bifano@dlapiper.com
`Jonathan.Hicks@dlapiper.com
`Joseph.Wolfe@us.dlapiper.com
`
`
`
`
`
`
`
`/Brian R. Michalek/
`(Reg. No. 65,816)
`
`
`
`Larissa S. Bifano
`Jonathan Hicks
`Joseph Wolfe
`
`
`
`Date: August 19, 2022
`
`
`
`40405732.2
`
`6
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00129
`
`U.S. PATENT NO. 8,566,839
`
`PROTECTIVE ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`40407488.1
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`
`
`
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`The following Default Protective Order will govern the filing and treatment
`
`of confidential information in the proceeding:
`
`Default Protective Order
`This protective order governs the treatment and filing of confidential
`
`information, including documents and testimony.
`
`6.
`
`Confidential information shall be clearly marked “PROTECTIVE
`
`ORDER MATERIAL.”
`
`7.
`
`Access to confidential information is limited to the following
`
`individuals who have executed the acknowledgment appended to this order:
`
`(A) Parties. Persons who are owners of a patent involved in the
`
`proceeding and other persons who are named parties to the proceeding.
`
`(B) Party Representatives. Representatives of record for a party in
`
`the proceeding.
`
`(C) Experts. Retained experts of a party in the proceeding who
`
`further certify in the Acknowledgement that they are not a competitor
`
`to any party, or a consultant for, or employed by, such a competitor with
`
`respect to the subject matter of the proceeding.
`
`(D)
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`In-house counsel. In-house counsel of a party.
`
`(E) Support Personnel. Administrative assistants, clerical staff, court
`
`reporters and other support personnel of the foregoing persons who are
`
`40407488.1
`
`2
`
`
`
`
`
`reasonably necessary to assist those persons in the proceeding shall not
`
`be required to sign an Acknowledgement, but shall be informed of the
`
`terms and requirements of the Protective Order by the person they are
`
`supporting who receives confidential information.
`
`(F) The Office. Employees and representatives of the United States
`
`Patent and Trademark Office who have a need for access to the
`
`confidential information shall have such access without the requirement
`
`to sign an Acknowledgement. Such employees and representatives
`
`shall include the Director, members of the Board and their clerical staff,
`
`other support personnel, court reporters, and other persons acting on
`
`behalf of the Office.
`
`8.
`
`Employees (e.g., corporate officers), consultants, or other persons
`
`performing work for a party, other than those persons identified above in (d)(2)(A)–
`
`(E), shall be extended access to confidential information only upon agreement of the
`
`parties or by order of the Board upon a motion brought by the party seeking to
`
`disclose confidential
`
`information
`
`to
`
`that person and after signing
`
`the
`
`Acknowledgment. The party opposing disclosure to that person shall have the
`
`burden of proving that such person should be restricted from access to confidential
`
`information.
`
`40407488.1
`
`3
`
`
`
`
`
`9.
`
`Persons receiving confidential information shall use reasonable efforts
`
`to maintain the confidentiality of the information, including:
`
`(A) Maintaining such information in a secure location to which
`
`persons not authorized to receive the information shall not have access;
`
`(B) Otherwise using
`
`reasonable
`
`efforts
`
`to maintain
`
`the
`
`confidentiality of the information, which efforts shall be no less
`
`rigorous than those the recipient uses to maintain the confidentiality of
`
`information not received from the disclosing party;
`
`(C) Ensuring that support personnel of the recipient who have access
`
`to the confidential information understand and abide by the obligation
`
`to maintain the confidentiality of information received that is
`
`designated as confidential; and
`
`(D) Limiting the copying of confidential information to a reasonable
`
`number of copies needed for conduct of the proceeding and maintaining
`
`a record of the locations of such copies.
`
`10. Persons receiving confidential information shall use the following
`
`procedures to maintain the confidentiality of the information:
`
`(A) Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board along
`
`with a Motion to Seal. The Motion to Seal should provide a non-
`
`40407488.1
`
`4
`
`
`
`
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`confidential description of the nature of the confidential information
`
`that is under seal, and set forth the reasons why the information is
`
`confidential and should not be made available to the public. A party
`
`may challenge the confidentiality of the information by opposing the
`
`Motion to Seal. The documents or information shall remain under seal
`
`unless the Board determines that some or all of it does not qualify for
`
`confidential treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the
`
`information submitted to the Board, the submitting party shall file
`
`confidential and non-confidential versions of its submission, together
`
`with a Motion to Seal the confidential version setting forth the reasons
`
`why the information redacted from the non-confidential version is
`
`confidential and should not be made available to the public. A party
`
`may challenge the confidentiality of the information by opposing the
`
`Motion to Seal. The non-confidential version of the submission shall
`
`clearly indicate the locations of information that has been redacted. The
`
`confidential version of the submission shall be filed under seal. The
`
`redacted information shall remain under seal unless the Board
`
`determines that some or all of the redacted information does not qualify
`
`for confidential treatment.
`
`40407488.1
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`5
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`
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`
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`(B) Documents and Information Exchanged Among the Parties.
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`Documents (including deposition transcripts) and other information
`
`designated as confidential that are disclosed to another party during
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`discovery or other proceedings before the Board shall be clearly marked
`
`as “PROTECTIVE ORDER MATERIAL” and shall be produced in a
`
`manner that maintains its confidentiality.
`
`11. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential information
`
`must return, or certify the destruction of, all copies of the confidential information
`
`to the producing party.
`
`(k)
`
`Standard Acknowledgement of Protective Order. The following form
`
`may be used to acknowledge a protective order and gain access to information
`
`covered by the protective order:
`
`
`
`
`
`40407488.1
`
`6
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00129
`
`U.S. PATENT NO. 8,566,839
`
`
`
`
`
`
`
`ACKNOWLEDGMENT FOR ACCESS
`TO PROTECTIVE ORDER MATERIAL
`
`
`40407488.1
`
`
`
`7
`
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`
`
`
`
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`I _____________________________, affirm that I have
`
`read the Protective Order; that I will abide by its terms;
`
`that I will use the confidential information only in
`
`connection with this proceeding and for no other purpose;
`
`that I will only allow access to support staff who are
`
`reasonably necessary to assist me in this proceeding; that
`
`prior to any disclosure to such support staff I informed or
`
`will inform them of the requirements of the Protective
`
`Order;
`
`that I am personally responsible for
`
`the
`
`requirements of the terms of the Protective Order and I
`
`agree to submit to the jurisdiction of the Office and the
`
`United States District Court for the Eastern District of
`
`Virginia for purposes of enforcing the terms of the
`
`Protective Order and providing remedies for its breach.
`
`_________________________________
`[Signature]
`
`40407488.1
`
`8
`
`
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