Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 23
`Entered: December 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GEOTAB INC., AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Cases1
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`ORDER
`Patent Owner’s Motion to Seal
`Petitioner’s Motion to Seal and Motion for Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 23
`Entered: December 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GEOTAB INC., AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Cases1
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`ORDER
`Patent Owner’s Motion to Seal
`Petitioner’s Motion to Seal and Motion for Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`A.
`
`Patent Owner’s Motion to Seal
`
`
`
`On October 25, 2016, pursuant to 37 C.F.R. § 42.14, Patent Owner
`
`filed a Motion to Seal requesting sealing of Exhibit 2008. Paper 16, 1
`
`(“Patent Owner’s Mot. to Seal”).2 Although Patent Owner does not include
`
`an express certificate of conference in its request, Patent Owner represents
`
`that its request to seal is at the behest of Petitioner TV Management, Inc.,
`
`d/b/a GPS North America (“GPSNA”), who purportedly requested that
`
`Patent Owner “file Exhibit 2008 under seal.” Patent Owner’s Mot. to Seal 1.
`
`Patent Owner represents that Exhibit 2008, in its entirety, is “confidential
`
`settlement negotiations between [Patent Owner] and GPSNA.” Id. We note
`
`that dollar amounts have been redacted from Exhibit 2008.
`
`Petitioners’ Motion to Seal
`B.
`and for Entry of Default Protective Order
`
`
`
`On November 1, pursuant to 37 C.F.R. §§ 42.14 and 42.54, Petitioners
`
`GPSNA and Geotab Inc. (“Geotab”) (collectively, “Petitioners”) filed a
`
`Motion to Seal requesting sealing of Exhibits 1011, 1012, and 1013, and for
`
`entry of the Board’s default protective order. Paper 19, 1 (“Petitioners’ Mot.
`
`to Seal”).3 Petitioners’ Motion to Seal seeks to seal exhibits that Petitioners
`
`
`2 Identification of Exhibits and Papers herein, unless otherwise indicated,
`refer to those filed in IPR2016-01061. The corresponding Papers and
`Exhibits in each of the other proceedings are: Paper 15 (IPR2016-01062);
`Paper 16 (IPR2016-01063); and Paper 16 (IPR2016-01064).
`
`3 The corresponding Papers and Exhibits in each of the other proceedings
`are: Paper 17 and Exhibits 1012, 1013, and 1014 (IPR2016-01062); Paper
`18 and Exhibits 1014, 1015, and 1016 (IPR2016-01063); and Paper 18 and
`Exhibits 1012, 1013, and 1014 (IPR2016-01064).
`
`2
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`represent contain “confidential information such as account numbers and
`
`amounts of funds.” Petitioners’ Mot. to Seal 1–2.
`
`
`
`Petitioners certify that they “attempted in good faith to confer with
`
`Patent Owner” regarding the filing of the Motion to Seal and the default
`
`protective order. Petitioners’ Mot. to Seal. 3. In particular, Petitioners
`
`represent that they “contacted Patent Owner via email on October 31, 2016
`
`to discuss the confidentiality of the evidence and the Default Protective
`
`Order,” but “Patent Owner did not respond.” Id.; see 37 C.F.R. § 42.54 (a)
`
`(requiring certification of a meet-and-confer between the parties).
`
`Petitioners’ Motion to Seal was filed on November 1, 2016. Paper 19.
`
`Patent Owner has not filed an opposition to Petitioners’ motion.
`
`C. Analysis
`
`
`
`There is a strong public policy in favor of making information filed in
`
`an inter partes review open to the public, especially because these
`
`proceedings determine the patentability of claims in issued patents and,
`
`therefore, affect the rights of the public. Under 35 U.S.C. § 326(a)(1) and 37
`
`C.F.R. § 42.14, the default rule is that all papers filed in an inter partes
`
`review are open and available for access by the public; a party, however,
`
`may file a concurrent motion to seal, and the information at issue is sealed
`
`pending the outcome of the motion. It is, however, only “confidential
`
`information” that is protected from disclosure. 35 U.S.C. § 316(a)(7); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14,
`
`2012).
`
`
`
`The standard for granting a motion to seal is “for good cause.” 37
`
`C.F.R. § 42.54. The party moving to seal bears the burden of proof of
`
`3
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`showing entitlement to the requested relief, and establishing that information
`
`sought to be sealed is confidential information. 37 C.F.R. § 42.20(c).
`
`
`
`Patent Owner filed Exhibit 2008 in support of its Motion to
`
`Terminate.4 Patent Owner represents that Exhibit 2008 contains business
`
`confidential information in the form of “confidential settlement
`
`negotiations.” Patent Owner’s Mot. to Seal 1. As noted above, Patent
`
`Owner purportedly filed this motion at the behest of Petitioner GPSNA.
`
`
`
`Petitioners filed Exhibits 1011, 1012, and 1013 in support of the
`
`Opposition to Patent Owner’s Motion to Terminate.5 Petitioners represent
`
`that Exhibit 10116 is a declaration by William Steckel, which includes, in
`
`Exhibits A and C, “confirmations for the transfer of funds” that include
`
`“confidential financial information such as account numbers and amounts of
`
`funds.” Petitioners’ Mot. to Seal. 1. Petitioners similarly represent that
`
`Exhibit 10127 is a declaration by Steven Hill, which includes, in Exhibit A,
`
`“wire transfer confirmations” and thus also contains “confidential financial
`
`information.” Id. at 1–2. Petitioners additionally represent that Exhibit
`
`
`4 In IPR2016-01061, Paper 17. Similar papers exist in the other
`proceedings.
`
`5 In IPR2016-01061, Paper 18. Similar papers exist in the other
`proceedings.
`
`6 Exhibit 1012 in IPR2016-10162 and IPR2016-01063; Exhibit 1014 in
`IPR2016-01063.
`
`7 Exhibit 1013 in IPR2016-10162 and IPR2016-01063; Exhibit 1015 in
`IPR2016-01063.
`
`4
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`10138 is a declaration by Michael Femel that includes, as Exhibit A, a Joint
`
`Defense Agreement, which Petitioners represent “is privileged work
`
`product.” Id. at 2. Petitioners also represent that Exhibit B to the Femel
`
`Declaration contains “confirmations for transfers of funds,” which
`
`Petitioners represent is “confidential financial information.” Id. Petitioners
`
`have filed redacted versions of each of these exhibits publicly. Id. at 1.
`
`
`
`We agree that Exhibit 2008 and Exhibits 1011, 1012, and 1013
`
`appear, on their face, to contain confidential business information. Further,
`
`these exhibits are offered as evidence directed an issue unrelated to the
`
`patentability of the patents at issue, namely, a Motion to Terminate
`
`involving a question of real party-in-interest. We, therefore, are persuaded
`
`that Patent Owner shows good cause for sealing Exhibit 2008 in its entirety,
`
`and Petitioners show good cause for sealing Exhibits 1011, 1012, and 1013
`
`in their entirety. Accordingly, we grant Patent Owner’s Motion to Seal and
`
`Petitioners’ Motion to Seal.
`
`
`
`The parties are advised that, according to the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012) (“Trial Practice
`
`Guide”):
`
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a
`petition to institute a trial or 45 days after final judgment in a
`trial. There is an expectation that information will be made
`public where the existence of the information is referred to in a
`decision to grant or deny a request to institute a review or is
`
`8 Exhibit 1014 in IPR2016-10162 and IPR2016-01063; Exhibit 1016 in
`IPR2016-01063.
`
`
`
`5
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`identified in a final written decision following a trial. A party
`seeking to maintain the confidentiality of information, however,
`may file a motion to expunge the information from the record
`prior to the information becoming public. [37 C.F.R.] § 42.56.
`
`
`
`IT IS:
`
`
`
`ORDERED that Patent Owner’s Motion to Seal is granted and Exhibit
`
`2008 shall be sealed in each case; and
`
`
`
`ORDERED that Petitioners’ Motion to Seal is granted and Exhibits
`
`1011, 1012, and 1013 (IPR2016-01061); Exhibits 1012, 1013, and 1014
`
`(IPR 2016-01062); Exhibits 1014, 1015, and 1016 (IPR 2016-01063); and
`
`Exhibits 1012, 1013, and 1014 (IPR 2016-01064) shall be sealed in their
`
`
`
`respective cases.
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`PETITIONERS:
`
`
`Vivek Ganti
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`perdiemIPR@hkw-law.com
`
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`PERDIEM-IPR@quinnemanuel.com
`
`
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`7
`
`
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