Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 8
` Entered: October 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2019-01011(Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 8
` Entered: October 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2019-01011(Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motion to Seal
`37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`Petitioner filed a Motion to Seal certain materials filed with the
`
`Petition in each of the instant proceedings.1 The Motions are substantially
`
`similar, and we refer to the papers and exhibits filed in Case IPR2019-01011
`
`for convenience. Petitioner moves to seal portions of the following
`
`materials, providing public, redacted versions for the documents:
`
`Document
`
`Declaration of Michael Hulse
`
`Declaration of Yosh Moriarty
`
`Exhibit
`1004
`
`1031
`
`
`See Mot. 1. Petitioner filed the unredacted versions of the documents in the
`
`Patent Trial and Appeal Board End to End (PTAB E2E) system as “Board
`
`Only.” Petitioner states in the Motion that it conferred with Patent Owner,
`
`and Patent Owner indicated that it does not oppose this Motion and agrees to
`
`the protective order proposed by Petitioner. Mot. 5. Patent Owner did not
`
`file an opposition to the Motion or otherwise object to the designation of the
`
`unredacted versions as “Board Only.”
`
`There is a strong public policy in favor of making information filed in
`
`an inter partes review open to the public, especially because the proceeding
`
`determines the patentability of claims in an issued patent and, therefore,
`
`affects the rights of the public. Under 35 U.S.C. § 316(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
`
`
`1 See IPR2019-01011, Paper 6 (“Mot.”); IPR2019-01012, Paper 6.
`
`2
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`is protected from disclosure. 35 U.S.C. § 316(a)(7). In that regard, the
`
`Office Patent Trial Practice Guide provides:
`
`The rules aim to 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.
`
`. . .
`
`Confidential Information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
`
`77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012).
`
`The standard for granting a motion to seal is “for good cause.”
`
`37 C.F.R. § 42.54(a).2 The filing party bears the burden of proof in showing
`
`entitlement to the relief requested in a motion to seal. 37 C.F.R. § 42.20(c).
`
`Petitioner argues that the Declarations3 include “confidential and
`
`commercially sensitive business information” regarding “(1) Apple’s
`
`internal systems for managing and tracking documents and information,
`
`including an identification of those systems and/or their histories of use
`
`within Apple, (2) Apple’s internal document naming conventions,
`
`(3) Apple’s internal workflow for publishing documents, and (4) internal
`
`
`2 Petitioner filed Exhibits 1004 and 1031 with the Petition, but did not file its
`Motion concurrently with the Petition in accordance with 37 C.F.R. § 42.55.
`Under the circumstances, and because the Motion is unopposed, we waive
`the requirements of 37 C.F.R. § 42.55 and evaluate the Motion on the merits.
`See 37 C.F.R. § 42.5(b). The parties, however, are reminded to follow the
`Board’s rules during the instant proceedings.
`
`3 The Declarations include separate documents as “Attachments.” The
`parties are reminded to file individual documents as separately numbered
`exhibits. See 37 C.F.R. § 42.63.
`
`3
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`metadata and/or properties assigned to Apple documents.” Mot. 2.
`
`Petitioner argues that this information “originated from Apple’s internal
`
`systems (as shown and described in the Declarations), is not publicly
`
`available, and has been and continues to be intended to remain confidential.”
`
`Id.
`
`Petitioner argues that it faces concrete harm if its confidential
`
`information is released to the public because the information provides details
`
`about how it operates, providing specific insight into its operations with
`
`respect to internal systems, documentation, and information. Id. Petitioner
`
`argues that if this information were subject to public access, Petitioner’s
`
`processes would be subject to copying by competitors. Id. Petitioner further
`
`argues that the public identification of its internal systems would create
`
`security risks because, for example, would-be attackers could gain insight
`
`into the structure of its internal file systems, databases, and servers, thereby
`
`putting at risk additional confidential information, including Petitioner’s
`
`technical, financial, and customer information. Id. at 2–3. Petitioner also
`
`argues that there exists a genuine need to rely on the Declarations in these
`
`proceedings because they allegedly support the date of public availability of
`
`Exhibits 1007 and 1032, which are used in the asserted grounds of
`
`unpatentability. Id. at 3.
`
`Petitioner asserts that the Declarations have not been excessively
`
`redacted, and the non-redacted portions of the Declarations include detailed
`
`information about the identity and employment of the declarant,
`
`non-confidential details about the contents and history of Exhibits 1007 and
`
`1032, and identification of the dates of public availability of Exhibits 1007
`
`and 1032. Id. Petitioner argues that, on balance, the harm to it in making
`
`4
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`the redacted information available outweighs any interest in releasing it to
`
`the public. Id.
`
`Upon reviewing the materials sought to be sealed, and Petitioner’s
`
`arguments regarding their confidential nature, we are persuaded that good
`
`cause exists to seal them. We also note that the redacted portions of the
`
`materials appear to be tailored narrowly to only confidential information.
`
`Petitioner provides a proposed protective order agreed to by the
`
`parties attached as Appendix A to the Motions to Seal, along with a
`
`comparison showing changes made to the Board’s default protective order as
`
`Appendix B. Mot. 4–5. Petitioner contends that the changes are necessary
`
`to minimize security risks and protect Petitioner’s confidential information
`
`from competitors. Id. Specifically, Petitioner creates an additional
`
`designation “PROTECTIVE ORDER MATERIAL – OUTSIDE
`
`ATTORNEYS’ EYES ONLY” for confidential material and restricts the
`
`material to Outside Counsel, Experts, Office Staff, and Support Personnel.
`
`Id. at 4. Petitioner also modifies the default protective order to provide that
`
`Support Personnel shall also include support personnel of outside counsel of
`
`record for a party in the proceeding. Id.
`
`The July 2019 Update to the Office Patent Trial Practice Guide sets
`
`forth the following guidance for situations where the parties propose
`
`modifications to the Default Protective Order:
`
`Modifications to the Default Protective Order: The parties may
`propose modifications to the Default Protective Order. The
`Board will consider changes agreed to by the parties, and
`generally with accept such proposed changes if they are
`consistent with the integrity and efficient administration of the
`proceedings. For example, the parties may agree to modify the
`Default Protective Order to provide additional tiers or
`categories of confidential information, such as “Attorneys’ Eyes
`
`5
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`Only.” 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. The
`Board will not accept overly inclusive definitions that
`encourage the parties to categorize all or most of their discovery
`materials as “Attorneys’ Eyes Only.”
`
`Trial Practice Guide Update (July 2019) 57–58, available at
`
`https://www.uspto.gov/TrialPracticeGuide3.
`
`We have reviewed the additional sections added to the proposed
`
`protective order and are persuaded that they are appropriate under the
`
`circumstances. In particular, the modifications are reasonable and
`
`adequately define the types of materials that will be included in the
`
`Attorneys’ Eyes Only category, specifically “confidential information that
`
`the designating party reasonably believes to be sensitive business
`
`information, the disclosure of which is likely to cause significant harm to the
`
`business or competitive position of the designating party or would violate
`
`confidentiality agreements with third parties.” Mot. A-3–A-4. This
`
`provision is not overly inclusive and does not encourage the parties to
`
`categorize all or most of their discovery materials as “Attorneys’ Eyes
`
`Only.” The proposed modification is also consistent with the efficient
`
`administration of the proceedings because it places additional restrictions on
`
`the parties and their counsel, but not on the Office or the public accessing
`
`non-confidential materials from the Office. Furthermore, we are persuaded
`
`that the modification to provide that Support Personnel also includes support
`
`personnel of outside counsel of record for a party in the proceeding is
`
`reasonable. Id. Consequently, the proposed protective order will be entered
`
`and will govern the treatment and filing of confidential information in the
`
`6
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`instant proceedings, and the requested materials will be sealed pursuant to
`
`that order.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motions to Seal in the instant
`
`proceedings are granted; and
`
`FURTHER ORDERED that Petitioner’s proposed protective order is
`
`entered and shall govern the treatment and filing of confidential information
`
`in the instant proceedings.
`
`7
`
`
`
`IPR2019-01011 (Patent 9,633,373 B2)
`IPR2019-01012 (Patent 9,779,419 B2)
`
`
`PETITIONER:
`
`Gabrielle Higgins
`Scott McKeown
`Victor Cheung
`Christopher Bonny
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`scott.mckeown@ropesgray.com
`victor.cheung@ropesgray.com
`christopher.bonny@ropesgray.com
`
`
`PATENT OWNER:
`
`Barry Bumgardner
`Matthew Juren
`Thomas Cecil
`NELSON BUMGARDNER ALBRITTON P.C.
`barry@nelbum.com
`matthew@nelbum.com
`tom@nelbum.com
`
`
`
`
`8
`
`
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