`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00131
`
`U.S. PATENT NO. 8,639,267
`
`
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`
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`PATENT OWNER’S UNOPPOSED MOTION TO FILE UNDER SEAL
`PURSUANT TO 37 C.F.R. §§ 42.14 AND 42.54
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`40406706.2
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54, Patent Owner respectfully submits
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`this Patent Owner’s Unopposed Motion to File Under Seal, requesting that the
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`following information remain under seal: portions of Patent Owner’s Response, as
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`well as Exhibits 2015-2018, filed therewith. The under-seal version of the Patent
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`Owner Response, along with the identified under-seal exhibits, have been filed.
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`Patent Owner has conferred with the Petitioner, and the Petitioner does not
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`oppose this motion to seal.
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`Patent Owner respectfully requests that the Board enter the default protective
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`order (See Consolidated Practice Guide at 107-122 (App. B)) in the above captioned
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`case to govern treatment of the documents and information identified herein.
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`I.
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`Good Cause
`For good cause, the Board may “issue an order to protect a party or person
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`from disclosing confidential information.” 37 C.F.R. § 42.54. The rules “identify
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`confidential information in a manner consistent with Federal Rule of Civil Procedure
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`26(c)(1)(G), which provides for protective orders for trade secret or other
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`confidential research, development, or commercial information.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
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`Each of the sets of information below meets this standard, and for the reasons
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`explained there is good cause for why those documents should remain under seal.
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`40406706.2
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`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,
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`redacted version of that Response. The redacted portions on pages 32-33 and 37-38
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`contain confidential Patent Owner regarding licensing negotiations strategy and
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`terms.
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`This information fits within the kinds of information that the Trial Practice
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`guide considers to be “confidential information,” such as “confidential research,
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`development, or commercial information.” 77 Fed. Reg. 48756, 48760.
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`There is good cause for keeping the redacted information contained in Patent
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`Owner’s Response under seal. Publicly revealing the sensitive, competitive
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`information could put the parties at a disadvantage in the marketplace.
`
`Exhibit 2015: Licensing Negotiation Communication
`B.
`Exhibit 2015 contains confidential information about Patent Owner’s
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`licensing strategy. This information fits squarely within the kinds of information that
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`the Trial Practice guide considers to be “confidential information,” such as
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`“confidential research, development, or commercial information.” 77 Fed. Reg.
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`48756, 48760.
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`There is good cause for Patent Owner’s confidential product design and
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`manufacture specifications under seal. Publicly revealing the sensitive, competitive
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`information would put Patent Owner at a disadvantage in the marketplace.
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`40406706.2
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`3
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`
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`C. Exhibits 2016-2018: License Agreements
`Exhibits 2016, 2017 and 2018, filed under seal, are confidential settlement
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`and license agreements. These documents contain details of confidential licensing
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`negotiations and financial terms. The public release of these documents and
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`references to these documents would harm both parties’ competitive standing in their
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`future patent acquisition and monetization efforts by disclosing negotiation tactics
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`and the parties’ process for the sale and acquisition of patents.
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`There is good cause for keeping these documents under seal.
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`II. Certification of Conference
`Pursuant to 37 C.F.R. §§ 42.54(a), Patent Owner certifies that it has in good
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`faith conferred with Petitioners’ counsel. Petitioners’ counsel does not oppose this
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`motion to seal.
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`Both Petitioners and Patent Owner agree to abide by the parties’ stipulated
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`Protective Order pending a decision by the Board on the motion for entry thereof.
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`III. Request for Conference Call with the Board
`Should the Board not be inclined to grant the present Unopposed Motion to
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`File Under Seal, Patent Owner hereby requests a conference call with the Board to
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`discuss any concerns prior to the Board issuing a decision on the Motion.
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`40406706.2
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`4
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`IV. Conclusion
`Patent Owner respectfully requests that the Board grant this Unopposed
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`Motion to File Under Seal, and keep the following documents under seal: the under-
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`seal, unredacted version of the Patent Owner Response, and Exhibits 2015-2018.
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`
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`
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`Date: August 19, 2022
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`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr, LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
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`
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`
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`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
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`40406706.2
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`5
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`
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`Certification of Service Under 37 C.F.R. § 42.6(e))
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`
`The undersigned hereby certifies that Patent Owner’s Unopposed Motion to
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`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
`
`Larissa S. Bifano
`Jonathan Hicks
`Joseph Wolfe
`
`
`
`Date: August 19, 2022
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`
`
`
`
`
`
`/Brian R. Michalek/
`(Reg. No. 65,816)
`
`
`
`40406706.2
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`6
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00131
`
`U.S. PATENT NO. 8,639,267
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`PROTECTIVE ORDER
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`The following Default Protective Order will govern the filing and treatment
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`of confidential information in the proceeding:
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`Default Protective Order
`This protective order governs the treatment and filing of confidential
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`information, including documents and testimony.
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`6.
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`Confidential information shall be clearly marked “PROTECTIVE
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`ORDER MATERIAL.”
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`7.
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`Access to confidential information is limited to the following
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`individuals who have executed the acknowledgment appended to this order:
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`(A) Parties. Persons who are owners of a patent involved in the
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`proceeding and other persons who are named parties to the proceeding.
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`(B) Party Representatives. Representatives of record for a party in
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`the proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who
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`further certify in the Acknowledgement that they are not a competitor
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`to any party, or a consultant for, or employed by, such a competitor with
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`respect to the subject matter of the proceeding.
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`(D)
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`In-house counsel. In-house counsel of a party.
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`(E) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are
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`2
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`reasonably necessary to assist those persons in the proceeding shall not
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`be required to sign an Acknowledgement, but shall be informed of the
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`terms and requirements of the Protective Order by the person they are
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`supporting who receives confidential information.
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`(F) The Office. Employees and representatives of the United States
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`Patent and Trademark Office who have a need for access to the
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`confidential information shall have such access without the requirement
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`to sign an Acknowledgement. Such employees and representatives
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`shall include the Director, members of the Board and their clerical staff,
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`other support personnel, court reporters, and other persons acting on
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`behalf of the Office.
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`8.
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`Employees (e.g., corporate officers), consultants, or other persons
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`performing work for a party, other than those persons identified above in (d)(2)(A)–
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`(E), shall be extended access to confidential information only upon agreement of the
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`parties or by order of the Board upon a motion brought by the party seeking to
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`disclose confidential
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`information
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`to
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`that person and after signing
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`the
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`Acknowledgment. The party opposing disclosure to that person shall have the
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`burden of proving that such person should be restricted from access to confidential
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`information.
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`3
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`9.
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`Persons receiving confidential information shall use reasonable efforts
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`to maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which
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`persons not authorized to receive the information shall not have access;
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`(B) Otherwise using
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`reasonable
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`efforts
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`to maintain
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`the
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`confidentiality of the information, which efforts shall be no less
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`rigorous than those the recipient uses to maintain the confidentiality of
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`information not received from the disclosing party;
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`(C) Ensuring that support personnel of the recipient who have access
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`to the confidential information understand and abide by the obligation
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`to maintain the confidentiality of information received that is
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`designated as confidential; and
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`(D) Limiting the copying of confidential information to a reasonable
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`number of copies needed for conduct of the proceeding and maintaining
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`a record of the locations of such copies.
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`10. Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along
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`with a Motion to Seal. The Motion to Seal should provide a non-
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`4
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`confidential description of the nature of the confidential information
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`that is under seal, and set forth the reasons why the information is
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`confidential and should not be made available to the public. A party
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`may challenge the confidentiality of the information by opposing the
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`Motion to Seal. The documents or information shall remain under seal
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`unless the Board determines that some or all of it does not qualify for
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`confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file
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`confidential and non-confidential versions of its submission, together
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`with a Motion to Seal the confidential version setting forth the reasons
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`why the information redacted from the non-confidential version is
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`confidential and should not be made available to the public. A party
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`may challenge the confidentiality of the information by opposing the
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`Motion to Seal. The non-confidential version of the submission shall
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`clearly indicate the locations of information that has been redacted. The
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`confidential version of the submission shall be filed under seal. The
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`redacted information shall remain under seal unless the Board
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`determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`5
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`(B) Documents and Information Exchanged Among the Parties.
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`Documents (including deposition transcripts) and other information
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`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
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`as “PROTECTIVE ORDER MATERIAL” and shall be produced in a
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`manner that maintains its confidentiality.
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`11. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential information
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`must return, or certify the destruction of, all copies of the confidential information
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`to the producing party.
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`(k)
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`Standard Acknowledgement of Protective Order. The following form
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`may be used to acknowledge a protective order and gain access to information
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`covered by the protective order:
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`
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`6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00131
`
`U.S. PATENT NO. 8,639,267
`
`ACKNOWLEDGMENT FOR ACCESS
`TO PROTECTIVE ORDER MATERIAL
`
`
`
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`7
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`I _____________________________, affirm that I have
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`read the Protective Order; that I will abide by its terms;
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`that I will use the confidential information only in
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`connection with this proceeding and for no other purpose;
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`that I will only allow access to support staff who are
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`reasonably necessary to assist me in this proceeding; that
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`prior to any disclosure to such support staff I informed or
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`will inform them of the requirements of the Protective
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`Order;
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`that I am personally responsible for
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`the
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`requirements of the terms of the Protective Order and I
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`agree to submit to the jurisdiction of the Office and the
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`United States District Court for the Eastern District of
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`Virginia for purposes of enforcing the terms of the
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`Protective Order and providing remedies for its breach.
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`_________________________________
`[Signature]
`
`8
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`
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