`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00124
`U.S. Patent No. 8,540,152
`
`_____________
`
`PETITIONER’S UNOPPOSED MOTION TO SEAL
`PETITIONER’S AUTHORIZED REPLY BRIEF TO PATENT OWNER’S
`PRELIMINARY RESPONSE AND DECLARATION OF SEAN REILLY
`PURSUANT TO 37 C.F.R. § 42.54
`
`
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`Pursuant to 37 C.F.R. § 42.54, Petitioner Askeladden LLC (“Askeladden”)
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`hereby moves to seal portions of Petitioner’s Authorized Reply Brief to Patent
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`Owner’s Preliminary Response (“the Brief”) and the Declaration of Sean Reilly
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`(“the Declaration”), both filed concurrently herewith. Petitioner has conferred
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`with Patent Owners and the Patent Owners have advised they do not oppose this
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`motion. The parties have agreed to entry of the Board’s Default Protective Order,
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`and, pursuant to Section 4(A)(ii) of that Order, Petitioner is also filing partially
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`redacted public versions of its Brief and Declaration.
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`I.
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`Good cause exists for sealing Petitioner’s confidential information.
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`The Office Patent Trial Practice Guide provides that “the rules aim to strike
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`a balance between the public’s interest in maintaining a complete and
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012). Under the Board’s
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`rules, “confidential information [is identified] in a manner consistent with Federal
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`Rule of Civil Procedure 26(c)(1)(G), which provides for protective orders for trade
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`secret or other confidential research, development, or commercial information.”
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`Id. (citing 37 C.F.R. § 42.54).
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`Askeladden is the sole real party-in-interest in this proceeding. Patent
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`Owners allege that another entity, The Clearing House, is a real party-in-interest.
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`See IPR2015-00124, Paper 15, at 55. On February 17, 2015, the Board directed
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`1
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`Askeladden to “present evidence to support its apparent position that Askeladden is
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`the sole real party-in-interest” (Paper No. 16). Askeladden is submitting the Brief
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`and Declaration attached hereto in response to the Board’s February 17, 2015
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`Order.
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`Askeladden’s responsive Brief and Declaration delineate and discuss in
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`detail the evidence that shows Askeladden alone controls the prosecution, direction
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`and funding of this IPR. See, e.g., Unified Patents Inc. v. Dragon Intellectual
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`Property, LLC, IPR2014-01252, Paper 37 (B.P.A.I. 2015). In particular, the
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`narrowly-tailored excerpts that Askeladden seeks to seal discuss details of
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`Askeladden’s organizational structure, business processes, financing, and
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`operational guidelines, which are confidential.
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`Askeladden has a strong interest in maintaining the confidentiality of its
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`internal business structure and strategy. On the other hand, there is no
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`countervailing interest that would counsel against grant of the present motion. The
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`Patent Owners do not oppose this motion. And, the sealed information has nothing
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`to do with the underlying substantive matters and questions at-issue in the IPR
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`proceeding. Therefore, grant of the present motion will have no effect on the
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`public’s interest in “maintaining a complete and understandable file history.”
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`Moreover, it is undisputed that neither Petitioner nor any alleged real party-
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`in-interest has been sued on the patent at-issue. Thus, the Petition will not be time-
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`2
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`barred regardless of the Board’s decision on the real party-in-interest.
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`Accordingly, the Brief and Declaration relate only to a non-dispositive, non-
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`substantive issue such that sealing them will not inhibit public access to a complete
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`and understandable file history.
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`II.
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`Certification of Non-Publication
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`On behalf of Petitioner, undersigned counsel certifies that the information
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`identified as confidential and sought to be sealed has not, to their knowledge, been
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`published or otherwise made public.
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`III. Certification of Conference with Opposing Party
`Pursuant to 37 C.F.R. § 42.54 and Proposed Protective Order
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`Petitioner has conferred in good faith with Patent Owners regarding this
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`Motion to Seal. Patent Owners do not oppose the motion, and the parties have
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`agreed to entry of the Board’s Default Protective Order, attached as Appendix A.
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board seal
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`the Brief and Declaration regarding the real party-in-interest, which Petitioner files
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`concurrently herewith.
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`3
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`Respectfully submitted,
`
`/Frank A. DeLucia, Jr./
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, New York 10104-3800
`Facsimile: (212) 218-2200
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105, the undersigned certifies
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`that on this date, a true and correct copy of this Petitioner’s Unopposed Motion to
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`Seal and Appendix A thereto was served via email on the Patent Owner’s counsel
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`at the following address indicated in the Patent Owner’s Mandatory Notices.
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`bbuchheit@gmail.com
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`Dated: February 23, 2015
`
`/Frank A. DeLucia, Jr./
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
`
`5
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`
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`APPENDIX A
`DEFAULT PROTECTIVE ORDER
`77 Fed. Reg. 48771
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00124
`U.S. Patent No. 8,540,152
`
`_____________
`
`PROTECTIVE ORDER
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`Finding good cause exists to enter a Protective Order governing the
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`disclosure and treatment of confidential information produced in this inter partes
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`review, it is ordered:
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`1.
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`Confidential information shall be clearly marked “PROTECTIVE ORDER
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`MATERIAL.”
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`2.
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`Access to confidential information is limited to the following individuals
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`who have executed the acknowledgment appended to this order:
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`(A)
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`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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`A-1
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`(B)
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`Party Representatives. Representatives of record for a party in the
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`proceeding.
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`(C)
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`Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject matter
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`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) Other Employees of a Party. Employees, consultants or other persons
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`performing work for a party, other than in-house counsel and in-house counsel’s
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`support staff, who sign the Acknowledgement shall be extended access to
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`confidential information only upon agreement of the parties or by order of the
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`Board upon a motion brought by the party seeking to disclose confidential
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`information to that person. The party opposing disclosure to that person shall have
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`the burden of proving that such person should be restricted from access to
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`confidential information.
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`(F)
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`The Office. Employees and representatives of the Office who have a
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`need for access to the confidential information shall have such access without the
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`requirement to sign an Acknowledgement. Such employees and representatives
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`shall include the Director, members of the Board and their clerical staff, other
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`support personnel, court reporters, and other persons acting on behalf of the Office.
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`A-2
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`(G)
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`Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to sign an
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`Acknowledgement, but shall be informed of the terms and requirements of the
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`Protective Order by the person they are supporting who receives confidential
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`information.
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`3.
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`Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons
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`not authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality of
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`the information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the disclosing
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`party;
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`(C)
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`Ensuring that support personnel of the recipient who have access to
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`the confidential information understand and abide by the obligation to maintain the
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`confidentiality of information received that is 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 a record of
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`the locations of such copies.
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`A-3
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`4.
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`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)
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`A party may file documents or information with the Board
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`under seal, together with a non-confidential description of the nature of the
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`confidential information that is under seal and the reasons why the information is
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`confidential and should not be made available to the public. The submission shall
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`be treated as confidential and remain under seal, unless, upon motion of a party
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`and after a hearing on the issue, or sua sponte, the Board determines that the
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`documents or information do not to qualify for 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 confidential and
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`non-confidential versions of its submission, together with a Motion to Seal the
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`confidential version setting forth the reasons why the information redacted from
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`the non-confidential version is confidential and should not be made available to the
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`public. The non-confidential version of the submission shall clearly indicate the
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`locations of information that has been redacted. The confidential version of the
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`submission shall be filed under seal. The redacted information shall remain under
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`seal unless, upon motion of a party and after a hearing on the issue, or sua sponte,
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`A-4
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`
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`the Board determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties.
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`Information designated as confidential that is disclosed to another party during
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`discovery or other proceedings before the Board shall be clearly
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`marked as “PROTECTIVE ORDER MATERIAL” and shall be produced in a
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`manner that maintains its confidentiality.
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`A-5
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00124
`U.S. Patent No. 8,540,152
`
`_____________
`
`Acknowledgment for Access to Protective Order Material
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`I _____________________________, affirm that I have read the Protective Order;
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`that I will abide by its terms; that I will use the confidential information only in
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`connection with this proceeding and for no other purpose; that I will only allow
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`access to support staff who are reasonably necessary to assist me in this
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`proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`A-6
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`
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`________________________
`
`By
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`___________________
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`Date: ___________________
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`A-7
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`