`Patent No. 10,621,228
`
`
`
`
`
`
`
`
`
`Paper No.
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. et al,
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`
`Inter Partes Review No. IPR2022-00222
`
`
`JOINT MOTION TO SEAL
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`
`
`Patent Owner MemoryWeb, LLC (“MemoryWeb”) and Petitioner Samsung
`
`
`
`Joint Motion to Seal
`
`Electronics Co., Ltd. (“Samsung”) jointly submit this Motion to Seal (“Motion”)
`
`Patent Owner’s Demonstrative Exhibit in support of its Motion to Terminate
`
`(“Patent Owner’s Demonstrative”) (Exhibit 2116) and Petitioner’s Demonstrative
`
`Exhibit
`
`(“Petitioner’s Demonstrative”)
`
`(Exhibit
`
`1047)
`
`(collectively,
`
`“Demonstratives”). The parties jointly submit this Motion to safeguard information
`
`designated confidential by third party Unified, Samsung, and MemoryWeb pursuant
`
`to the Protective Order.1 See Paper 47. The parties will provide redacted versions of
`
`the Demonstratives once they have had the opportunity to consult with the relevant
`
`parties to determine the extent of the redactions.
`
`
`
`As discussed below, the Demonstratives rely on and discuss the confidential
`
`information disclosed in exhibits previously filed under seal. See Paper 51; Paper
`
`54; Paper 56.2
`
`
`1 The relevant parties with respect to this Motion are Samsung Electronics Co., Ltd.
`
`(“Samsung” or “Petitioner”) and Unified Patents, LLC (“Unified”).
`
`2 The Board has yet to grant Patent Owner’s Motion to Seal its Motion to Terminate
`
`(Paper 51), Petitioner’s Motion to Seal its Response to the Motion to Terminate
`
`(Paper 54), and Patent Owner’s Motion to Seal its Reply in Support of its Motion to
`
`Terminate (Paper 56).
`
`1
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`I. MOTION TO SEAL
`
`
`
`Joint Motion to Seal
`
`In an inter parties review, it is the default rule that all filings are publicly
`
`available. 35 U.S.C. § 326(a)(1); 37 C.F.R. § 42.14. Where an exhibit contains
`
`confidential information, a party may file “a motion to seal with a proposed
`
`protective order as to the confidential information.”3 See 37 C.F.R. § 42.55; see also
`
`35 U.S.C. § 326(a)(1). A motion to seal will only be granted if the movant
`
`demonstrates “good cause.” 37 C.F.R. § 42.54(a). Good cause exists if the movant
`
`“demonstrate[s] 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 the confidentiality outweighs the
`
`strong public interest in having an open record.” Argentum Pharm. LLC v. Alcon
`
`Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (citing 37
`
`C.F.R. § 42.54(a)). All four prongs are satisfied here.
`
`First, the Demonstratives and the exhibits cited therein contain non-public,
`
`highly confidential proprietary business information pertaining to Petitioner’s
`
`
`3 Patent Owner filed an unopposed motion for entry of a Protective Order (Paper 47)
`
`which the Board has yet to grant. All relevant parties have executed the Protective
`
`Order.
`
`2
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`contractual relationship with Unified and confidential communications between
`
`Joint Motion to Seal
`
`
`
`MemoryWeb and Unified. This information includes confidential commercial
`
`information that Unified, Samsung, and MemoryWeb have not made, and do not
`
`intend to make, publicly available. The parties also understand that this information
`
`was produced pursuant to the Protective Order. As discussed above, redacted
`
`versions of the Demonstratives are forthcoming.
`
`Second, public disclosure of this information would expose the relevant
`
`parties’ confidential business activities. The Demonstratives and the exhibits cited
`
`therein contain information that the relevant parties maintain as confidential. The
`
`parties believe that the public will not be harmed by sealing the confidential business
`
`information.
`
`Third, the Demonstratives are directly relevant to whether Samsung is a real
`
`party in interest (“RPI”) to Unified’s IPR and will be used in support of the parties’
`
`arguments at the oral hearing. See Unified Patents, LLC v. MemoryWeb, LLC,
`
`IPR2021-01413. The parties must rely on confidential information to present
`
`arguments related to whether Samsung is an RPI to Unified’s IPR.
`
`Fourth, on balance, the interest in maintaining confidentiality outweighs the
`
`public interest in having an open record. Accordingly, the redacted portions of the
`
`Demonstratives (which are forthcoming) should be sealed. The parties respectfully
`
`request that the Board grant this Motion.
`
`3
`
`
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`II. GOOD CAUSE EXISTS FOR SEALING THE MOTION TO
`TERMINATE AND THE RELEVANT EXHIBITS
`In deciding whether to seal exhibits, the Board must find “good cause” and
`
`Joint Motion to Seal
`
`must “strike a balance between the public’s interest in maintaining a complete and
`
`understandable file history and the parties’ interest in protecting truly sensitive
`
`information.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
`
`Paper 36 at 4 (PTAB Apr. 5, 2013).
`
`The Demonstratives contain screenshots of exhibits and other information that
`
`have been marked “Confidential” or “HIGHLY CONFIDENTIAL – ATTORNEYS’
`
`EYES ONLY” under the Protective Order in this case. As such, the Demonstratives
`
`contain sensitive business information that was previously filed under seal in this
`
`proceeding. The parties and the other relevant parties assert that this sensitive
`
`business information has not been published or otherwise made publicly available.
`
`The Demonstratives rely on and discusses the confidential aspects of exhibits
`
`previously filed under seal. Redacted versions of the Demonstratives are
`
`forthcoming.
`
`The balance favors protecting the relevant parties’ confidential information.
`
`The information in the Demonstratives is not related to patentability, the scope of
`
`the ʾ228 patent, or any matter generally impacting the public interest in evaluating
`
`the ʾ228 patent. Rather, the information sought to be sealed relates to whether
`
`4
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`Petitioner is an RPI to the Unified IPR. The information relates to business dealings
`
`Joint Motion to Seal
`
`
`
`between Unified and its members, including Petitioner. Unified has represented this
`
`information is not known to the public. See, e.g., Unified Patents, IPR2021-01413,
`
`Paper 24 at 7. The information also relates to Unified’s confidential dealings with
`
`MemoryWeb.
`
`The relevant exhibits were provided with the expectation that they would
`
`remain confidential, pursuant to the Protective Order. The Board should seal this
`
`information so that the parties can rely on the Demonstratives at the oral hearing
`
`without the chance of incidental public exposure of confidential business
`
`information. The public interest is well-served in keeping this information
`
`confidential.
`
`III. NON-CONFIDENTIAL VERSIONS
`
`As required by the Board’s Trial Practice Guide, the Default Protective Order,
`
`and the agreed-upon Protective Order, non-confidential redacted versions of the
`
`Demonstratives are forthcoming. The parties will submit redacted versions after the
`
`relevant parties have had the opportunity to review following submission of the
`
`Motion. The redactions will be limited in nature and scope to the confidential
`
`information.
`
`IV. REQUEST FOR CONFERENCE CALL WITH THE BOARD
`
`Should the Board not be inclined to grant the present Motion, the parties
`
`5
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`hereby request a conference call with the Board to discuss any concerns prior to the
`
`Joint Motion to Seal
`
`
`
`Board issuing a decision on the Motion.
`
`V. CONCLUSION
`
`For the foregoing reasons, the parties respectfully request that the Board seal
`
`and protect the relevant parties’ confidential information in the unredacted versions
`
`of the Demonstratives.
`
`Respectfully submitted,
`
`Dated: November 17, 2023
`
`
`
`By:
`
`
`
`/Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
`
`Attorney for Patent Owner
`
`By: /Hyun Jin In/
`Hyun Jin In
`Reg. No. 70,014
`Fish & Richardson P.C.
`60 South Sixth Street,
`Suite 3200
`Minneapolis, MN 55402
`
`Attorney for Petitioner
`
`6
`
`
`
`IPR2022-00222
`Patent No. 10,621,228
`
`
`
`
`
`Joint Motion to Seal
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion to
`
`Seal was served on November 17, 2023, upon the following parties via electronic
`
`service:
`
`IPR39843-0117IP1@fr.com
`
`PTABInbound@fr.com
`
`axf-ptab@fr.com
`
`jjm@fr.com
`
`in@fr.com
`
`cgreen@fr.com
`
`Counsel for Petitioner, Samsung Electronics Co., Ltd.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
`
`
`
`
`1
`
`