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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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`APPLE INC.,
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`Petitioner
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`
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`v.
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`BILLJCO LLC,
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`Patent Owner
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`CASE: IPR2022-00426
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`U.S. PATENT NO. 8,761,804
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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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`40627537.1
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`
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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
`
`well as Exhibits 2028-2031, filed therewith. The under-seal version of the Patent
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`Owner Response, along with the identified under-seal exhibits, are being filed
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`concurrently with this motion.
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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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`40627537.1
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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 33-35 and 39-40
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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.
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`B.
`Exhibit 2028: Licensing Negotiation Communication
`Exhibit 2028 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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`40627537.1
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`3
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`C. Exhibits 2029-2031: License Agreements
`Exhibits 2029, 2030 and 2031, 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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`40627537.1
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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 2028-2031.
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`
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`Date: October 11, 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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`Respectfully Submitted,
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`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
`
`Courtland C. Merrill
`(pro hac vice)
`Saul Ewing Arnstein & Lehr, LLP
`33 South Sixth Street, Suite 4750
`Minneapolis, MN 55402
`Tel: (612) 225-2943
`Courtland.Merrill@saul.com
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`Counsel for Patent Owner, BillJCo, LLC
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`40627537.1
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`5
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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, BillJCo, LLC’s
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`Unopposed Motion to File Under Seal Pursuant to 37 C.F.R. §§ 42.14 and 42.54 was
`served electronically via e-mail on October 11, 2022 in its entirety on the following
`counsel of record for the Petitioner:
`
`
`Larissa.Bifano@dlapiper.com
`Joseph.Wolfe@us.dlapiper.com
`Zack.Conrad@dlapiper.com
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`Larissa S. Bifano
`Joseph W. Wolfe
`Zachary Conrad
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`
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`Date: October 11, 2022
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`
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`
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`/Brian R. Michalek/
`(Reg. No. 65,816)
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`
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`40627537.1
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`6
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