Paper 12
`
`
`Trials@uspto.gov
`571-272-782 Entered: January 14, 2025
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NIKE, INC.,
`Petitioner,
`v.
`SHERRYWEAR LLC,
`Patent Owner.
`
`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)1
`
`
`
`Before MEREDITH C. PETRAVICK, LYNNE H. BROWNE and
`ZHENYU YANG, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting In Part Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 This Order applies to both of the listed cases. We exercise our discretion
`to issue one Order to be filed in each case. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
`
`
`Trials@uspto.gov
`571-272-782 Entered: January 14, 2025
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NIKE, INC.,
`Petitioner,
`v.
`SHERRYWEAR LLC,
`Patent Owner.
`
`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)1
`
`
`
`Before MEREDITH C. PETRAVICK, LYNNE H. BROWNE and
`ZHENYU YANG, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Granting In Part Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 This Order applies to both of the listed cases. We exercise our discretion
`to issue one Order to be filed in each case. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
`
`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`INTRODUCTION
`I.
`On December 20, 2024, Patent Owner filed a Motion to Seal in each
`of the above identified proceedings (collectively, “Patent Owner’s Motions
`to Seal”). Paper 9.2 Patent Owner’s Motions to Seal do not propose a
`protective order for entry in these proceedings. Patent Owner represents that
`Petitioner does not oppose Patent Owner’s Motions to Seal. Id. at 2.
`For the reasons discussed below, we grant in part Patent Owner’s
`Motions to Seal and enter the Board’s Default Protective Order.
`
`II. MOTIONS TO SEAL
`Patent Owner’s Motions to Seal seek to seal Exhibit 2005, and
`portions of Exhibit 2001, and Patent Owner’s Preliminary Response (Paper
`8). See id. at 1 (“Patent Owner . . . submits this motion to seal SherryWear’s
`Opposition to Institution, exhibit 2001, and exhibit 2005.”). Patent Owner
`concurrently filed Exhibits 2066 and 2067, which presumably identify
`portions of Exhibit 2001 and Patent Owner’s Preliminary Response to be
`sealed.
`The record of an inter partes review shall be made available to the
`public, except as otherwise ordered, and a document filed with a motion to
`seal shall be treated as sealed until the motion is decided. 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. Only “confidential information” may be
`protected against public disclosure. 35 U.S.C. § 316(a)(7); 37 C.F.R.
`§ 42.54. The Board observes a strong public policy in favor of making
`
`
`2 For convenience, all citations in this Order are to IPR2024-01122. Patent
`Owner filed similar motion and exhibits in IPR2024-01124.
`
`2
`
`
`
`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`information filed in inter partes review proceedings open to the public. See
`Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27
`at 3–4 (PTAB Jan. 19, 2018) (informative).
`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`§ 42.54(a). The moving party bears the burden of showing that the relief
`requested should be granted. 37 C.F.R. § 42.20(c). That includes a
`sufficient showing 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.
`Argentum, Paper 27 at 3–4; see also Corning Optical Commc’ns RF, LLC v.
`PPC Broadband, Inc., IPR2014-00440, Paper 46 at 2 (PTAB April 6, 2015)
`(requiring a showing that information has not been “excessively redacted”).
`Patent Owner explains that Exhibit 2005 is a license to a third party
`that “contains a confidentiality provision” and “public production of the
`exhibit would violate the confidentiality provision.” Paper 9, 1. As such,
`Patent Owner “requests that Exhibit 2005 be stricken from the docket.” Id.
`We note that Exhibit 2005 has already been expunged from the
`records of these proceedings. Accordingly, Patent Owner’s Motions to Seal
`are dismissed as moot with respect to Exhibit 2005.
`Patent Owner further explains that “[t]he same confidentiality
`provision also forbids public disclosure of the existence of the license.”
`Paper 9, 1. The information Patent Owner seeks to seal in Exhibit 2001 and
`
`3
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`Patent Owner’s Preliminary Response (Paper 8) relates to “references to the
`license in Exhibit 2005.” Id.
`Upon review of Exhibit 2001 and Patent Owner’s Preliminary
`Response (Paper 8), as well as concurrently filed Exhibits 2066 and 2067
`(proposed redacted versions), we are persuaded that good cause exists to seal
`the unredacted versions because they contain confidential licensing
`information whose public disclosure would likely result in a concrete harm.
`
`III. ENTRY OF PROTECTIVE ORDER
`The Board may, for good cause, issue a protective order “to protect a
`party or person from disclosing confidential information.” 37 C.F.R.
`§ 42.54(a). A protective order is not entered by default but must be
`proposed by one or more parties and must be approved and entered by the
`Board. Patent Trial and Appeal Board Consolidated Trial Practice Guide
`19–20, 107 (Nov. 2019) (“Trial Practice Guide”).3 The Trial Practice Guide
`sets forth specific guidelines on proposing a protective order and provides a
`Default Protective Order. See Trial Practice Guide 19–20, 107–122.
`Patent Owner’s Motions to Seal do not propose a protective order.
`Neither Patent Owner nor Petitioner has requested entry of a protective order
`in these proceedings. In this circumstance, in the absence of a proposed
`protective order from either party, we determine that the Board’s entry of the
`Default Protective Order set forth in the Trial Practice Guide is appropriate
`because no prejudice is shown and Petitioner does not oppose Patent
`Owner’s Motions to Seal.
`
`3 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
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`
`
`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`We note that the parties may later propose modifications to the
`Default Protective Order and the Board will generally accept such proposed
`changes if they are consistent with the integrity and efficient administration
`of the proceedings. Trial Practice Guide 115. For example, the parties may
`agree to provide additional tiers or categories of confidential information,
`such as “Attorneys’ Eyes Only,” and the Board will presumptively accept
`agreed-to changes that provide additional categories of confidentiality as
`long as they are reasonable and adequately define what types of materials
`are to be included in the additional categories. Id. at 115–116.
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motions to Seal are granted with
`respect to Exhibit 2001 and Patent Owner’s Preliminary Response (Paper 8)
`in IPR2024-01122, and Exhibit 2001 and Patent Owner’s Preliminary
`Response (Paper 8) in IPR2024-01124;
`FURTHER ORDERED that the public versions of Exhibit 2001 and
`Patent Owner’s Preliminary Response (Paper 8) in IPR2024-01122, and the
`public versions of Exhibit 2001 and Patent Owner’s Preliminary Response
`(Paper 8) in IPR2024-01124 shall be filed within 5 business days from entry
`of this Order;
`FURTHER ORDERED that Patent Owner’s Motions to Seal are
`dismissed as moot with respect to Exhibit 2005 in IPR2024-01122, and
`Exhibit 2005 in IPR2024-01124; and
`FURTHER ORDERED that the Default Protective Order attached
`below be entered in each of the above identified proceedings.
`
`5
`
`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`DEFAULT PROTECTIVE ORDER
`The following Default Protective Order will govern the filing and treatment
`of confidential information in the above identified proceedings:
`Default Protective Order
`This protective order governs the treatment and filing of confidential
`information, including documents and testimony.
`1. Confidential information shall be clearly marked “PROTECTIVE
`ORDER MATERIAL.”
`
`
`2. 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) 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 reasonably necessary to assist those persons in the proceeding
`shall not be required to sign an Acknowledgement, but shall be
`
`6
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`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.
`
`3. 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.
`
`4. 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;
`
`7
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`(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.
`
`5. 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-
`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.
`
`8
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`(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.
`(B) Documents and Information Exchanged Among the Parties.
`Documents (including deposition transcripts) and other information
`designated as confidential that are disclosed to another party during
`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.
`
`6. 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.
`
`
`9
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`
`(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:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NIKE, INC.,
`Petitioner,
`v.
`SHERRYWEAR LLC,
`Patent Owner.
`
`IPR2024-01122 (or IPR2024-01124)
`Patent 9,289,016 B1 (or Patent 9,723,878 B1)
`
`
`
`
`
`
`Standard Acknowledgment for Access to Protective Order Material
`
`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
`
`10
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`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]
`
`
`
`
`
`
`11
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`
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`IPR2024-01122 (Patent 9,289,016 B1)
`IPR2024-01124 (Patent 9,723,878 B1)
`
`FOR PETITIONER:
`
`W. Todd Baker
`Noah S. Frank
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`noah.frank@kirkland.com
`
`
`FOR PATENT OWNER:
`
`Micah Drayton
`CALDWELL INTELLECTUAL PROPERTY LAW
`mdrayton@caldwellip.com
`
`
`
`
`
`
`12
`
`
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