Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 39
`Date: July 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO, and
`FEDERAL RESERVE BANK OF ST. LOUIS,
`Petitioner,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`Patent Owner.
`_______________
`
`Case CBM2017-00036
`Patent 8,768,840 B2
`_______________
`
`Before MICHAEL W. KIM, WILLIAM V. SAINDON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part and Denying-in-Part Petitioner’s Motions to Seal
`37 C.F.R. §§ 42.5, 42.54
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 39
`Date: July 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO, and
`FEDERAL RESERVE BANK OF ST. LOUIS,
`Petitioner,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`Patent Owner.
`_______________
`
`Case CBM2017-00036
`Patent 8,768,840 B2
`_______________
`
`Before MICHAEL W. KIM, WILLIAM V. SAINDON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part and Denying-in-Part Petitioner’s Motions to Seal
`37 C.F.R. §§ 42.5, 42.54
`
`
`
`
`
`
`
`CBM2017-00036
`Patent 8,768,840 B2
`
`
`I.
`
`INTRODUCTION
`
`On May 19, 2017, Petitioner filed a motion to seal its Reply to Patent
`Owner’s Preliminary Response (Paper 8) along with Exhibits 1023 and 1024.
`Paper 9 (“First Mot.” or “First Motion”). With the First Motion, Petitioner filed a
`redacted version of its Reply and Exhibit 1023. See Papers 10 (Petitioner’s Reply
`(redacted)) and 11 (Exhibit 1023 (redacted)). On January 10, 2018, Petitioner filed
`a second motion to seal portions of its Reply to the Patent Owner Response
`(Paper 27). See Paper 30 (“Second Mot.” or “Second Motion”). Petitioner also
`filed a redacted version of its Reply to the Patent Owner Response. See Paper 28.
`Both parties have also filed certain papers and exhibits under seal without a
`corresponding motion to seal. Patent Owner filed Patent Owner’s Sur-Reply to
`Petitioner’s Reply to the Patent Owner Preliminary Response (Paper 12, “Sur-
`Reply”) and the Declaration of William O. Bozeman, III in Support of Patent
`Owner’s Sur-Reply (Paper 13, “Second Bozeman Declaration”) under seal without
`a corresponding motion to seal these papers. Patent Owner filed a redacted version
`of the Second Bozeman Declaration (see Paper 14), but did not file a redacted
`version of its Sur-Reply. Petitioner filed a copy of its demonstratives under seal
`without a corresponding motion to seal. See Ex. 1025 (sealed version of
`Petitioner’s demonstratives). Petitioner did include a redacted version of its
`demonstratives. See Ex. 1026 (redacted version of Petitioner’s demonstratives).
`In both its motions to seal, Petitioner represents that these papers and
`exhibits “summarize[] confidential communications exchanged between The
`Federal Reserve Bank of Atlanta (one of the named Petitioners) and Bozeman
`Financial (the Patent Owner) concerning Petitioners’ alleged infringement of U.S.
`Patent Nos. 6,754,640 and 8,768,840, and Bozeman Financial’s related proposals.”
`First Mot. 2; Second Mot. 1. Petitioner contends that “[t]hese communications
`
`2
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`CBM2017-00036
`Patent 8,768,840 B2
`
`were exchanged after the parties executed a Mutual Confidentiality Agreement,
`which requires the parties not to disclose to third parties Confidential Information,
`or even the existence of any discussions or disclosures covered under the
`Agreement.” Id. (citing Paper 6, Ex. 5 ¶ 2(e)-(f))). Patent Owner does not oppose
`these requests.
`Following the oral hearing and at our request (see Tr. 75:11–77:4), the
`parties submitted a redacted version of Exhibit 1024. See Exhibit 1024 (redacted).1
`Petitioner’s Motions are granted-in-part and denied-in-part.
`
`II. ANALYSIS
`
`“The Board may, for good cause, issue an order to protect a party or person
`from disclosing confidential information.” 37 C.F.R. § 42.54(a). “There is a
`strong public policy for making all information filed in a quasi-judicial
`administrative proceeding open to the public.” Garmin Int’l v. Cuozzo Speed
`Techs., LLC, Case IPR2012–00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper
`34). The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`§ 42.54. That standard includes showing that the information addressed in the
`motion to seal is truly confidential, and that such confidentiality outweighs the
`strong public interest in having the record open to the public. See Garmin, slip op.
`at 2–3. The moving party bears the burden of showing that the relief requested
`should be granted, and establishing that the information sought to be sealed is
`confidential information. 37 C.F.R. § 42.20(c).
`A.
`Exhibits 1025 and 1026
`Exhibits 1025 and 1026 are unredacted and redacted, respectively, copies of
`Petitioner’s demonstratives. See Ex. 1025 (sealed version of Petitioner’s
`
`
`1 Exhibit 1024 is filed in the PTAB E2E system as Exhibit 2011.
`
`3
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`CBM2017-00036
`Patent 8,768,840 B2
`
`demonstratives); Ex. 1026 (unsealed version of Petitioner’s demonstratives). As
`we explained in a previous order, Patent Owner agreed to waive any confidentiality
`in the sealed portions of the demonstratives. See Paper 36, 3. Thus, we directed
`Petitioner to refile its demonstratives as a public document. Petitioner has done so.
`See Ex. 1027. In order to minimize confusion in the record, we expunge
`Exhibits 1025 and 1026 because they are redundant to Exhibit 1027. See 37 C.F.R.
`§ 42.7.
`Exhibit 1024
`B.
`Exhibit 1024 consists of an email and attached memorandum from Patent
`Owner’s counsel to Petitioner, dated September 29, 2016. As we explained above,
`following the oral hearing, the parties have filed a redacted version of
`Exhibit 1024. The parties seek only limited redactions in the memorandum,
`consisting of licensing rates (Ex. 1024, 18) and one limitation of the claim
`mapping Patent Owner performed of Petitioner’s products (Ex. 1024, 20). The
`parties also seek to redact some emails contained in the appendices to the
`memorandum. See Ex. 1024, 31, 50–52. As we noted above, Petitioner sought to
`seal Exhibit 1024 because it “summarize[d], and/or comprise[d] confidential
`communications exchanged between The Federal Reserve Bank of Atlanta (one of
`the named Petitioners) and Bozeman Financial (the Patent Owner) concerning
`Petitioners’ alleged infringement of U.S. Patent Nos. 6,754,640 and 8,768,840, and
`Bozeman Financial’s related proposals.” First Mot. 2. Petitioner submits “[t]hese
`communications were exchanged after the parties executed a Mutual
`Confidentiality Agreement, which requires the parties not to disclose to third
`parties Confidential Information, or even the existence of any discussions or
`disclosures covered under the Agreement.” Id. (citing Paper 6, Ex. 5 at ¶ 2(e)-(f)).
`
`4
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`CBM2017-00036
`Patent 8,768,840 B2
`
`
`Here, the parties have provided a redacted version with only limited
`redactions. The information currently sought to be sealed relates to confidential
`licensing rates and communications only tangentially related to the current dispute.
`We did not rely on any of the material sought to be sealed. We determine that
`Petitioner has shown good cause to maintain the redacted portions of Exhibit 1024
`under seal. Thus, we grant Petitioner’s First Motion to Seal with respect to
`Exhibit 1024.
`Exhibit 1023
`C.
`Exhibit 1023 is the Declaration of Richard M. Fraher in Support of
`Petitioner’s Reply. See Ex. 1023; Paper 11. Petitioner filed a redacted version of
`Exhibit 1023. See Paper 11 (redacted version of Exhibit 1023). Petitioner seeks to
`seal a portion (Paragraphs 8–14) of Exhibit 1023 because the redacted paragraphs
`“summarize, and/or comprise confidential communications exchanged between
`The Federal Reserve Bank of Atlanta (one of the named Petitioners) and Bozeman
`Financial (the Patent Owner) concerning Petitioners’ alleged infringement of U.S.
`Patent Nos. 6,754,640 and 8,768,840, and Bozeman Financial’s related proposals.”
`First Mot. 2. We relied on some of the portions of Exhibit 1023 that Petitioner
`seeks to seal in our Final Written Decision.
`At this time, Petitioner has not shown good cause to seal Paragraphs 8–14 of
`Exhibit 1023. When the redactions to Exhibit 1023 were filed, the parties had not
`yet agreed to a redacted version of Exhibit 1024. Instead, pursuant to the parties’
`Mutual Confidentiality Agreement (“MCA”) mentioned above, Petitioner believed
`that any reference to the post-MCA discussions between the parties should be kept
`confidential. See First Mot. 2. However, the parties have now reached an
`agreement to provide a public version of Exhibit 1024. Nearly all of the redacted
`paragraphs of Exhibit 1023 discuss portions of Exhibit 1024 that are now in the
`
`5
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`CBM2017-00036
`Patent 8,768,840 B2
`
`public record. Indeed, our review of Exhibit 1023 suggests that there may be only
`one sentence in Paragraph 13 that relates to information in Exhibit 1024 that has
`not been made public, and thus, that the parties seek to seal. Moreover, we have
`relied on some of the testimony in Exhibit 1014 reaching our Final Written
`Decision. Therefore, we deny Petitioner’s First Motion to Seal with respect to
`Exhibit 1023.
`Because we recognize there may be some information that we did not rely
`on that the parties legitimately may still seek to seal, we will allow the parties
`another opportunity to seek to seal this information, in a Joint Motion to Seal, as
`we will explain below.
`D.
`Petitioner’s Replies (Papers 8 and 27)
`Petitioner also sought to seal portions of its Reply to the Patent Owner
`Preliminary Response (First Mot. 2) and portions of its Reply to the Patent Owner
`Response (Second Mot. 1). Petitioner sought to seal these portions for the same
`reasons it sought to seal Paragraphs 8–14 of Exhibit 1023. See First Mot. 2;
`Second Mot. 1. As with Exhibit 1023, the material Petitioner seeks to seal is now
`almost entirely public because the parties have agreed to a redacted version of
`Exhibit 1024. Thus, we deny Petitioner’s First Motion to Seal, with respect to
`Paper 8, and Petitioner’s Second Motion to Seal in its entirety.
`Because we recognize there may be some information that we did not rely
`on that the parties may legitimately still seek to seal in these papers, we will allow
`the parties another opportunity to seek to seal this information, in a Joint Motion to
`Seal, as we will explain below.
`E.
`Patent Owner’s Papers and Exhibits (Papers 12 and 13)
`With respect to Patent Owner’s sealed submissions (Papers 12 and 13), we
`note that, despite our directives, Patent Owner has never filed a motion to seal
`
`6
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`
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`CBM2017-00036
`Patent 8,768,840 B2
`
`Papers 12 and 13. See Paper 20, 2–3. Moreover, although Patent Owner provided
`a redacted version of the Second Bozeman Declaration (Paper 13), see Paper 14,
`Patent Owner never provided a redacted version of Paper 12 (Patent Owner’s Sur-
`Reply). The material that Patent Owner seeks to seal largely relates to
`Exhibit 1024. Based on our review of Papers 12 and 13, we determine that these
`papers do contain limited amounts of the information that the parties have sought
`to redact in Exhibit 1024. Therefore, we will maintain those Papers 12 and 13
`under seal for the time being, subject to the opportunity for the parties to file a
`Joint Motion to Seal discussed below.
`F.
`Leave to File a Joint Motion to Seal
`As we discussed above, we are denying the parties’ current efforts to seal
`certain papers and exhibits because the parties seek to seal information that is not
`confidential. However, we recognize that these exhibits and papers do contain
`some information that we have determined already that the parties have shown
`good cause to seal. In an effort to allow the parties to protect this potentially
`confidential information, we will grant them leave to file a Joint Motion to Seal
`these papers and exhibits. The parties are directed to meet and confer about
`proposed redactions to Papers 8, 12, 13, and 27, and Exhibit 1023. The parties’
`proposed redactions should not seek to seal any information that is now public or
`that was relied upon in reaching our Final Written Decision. After they have met
`and conferred and agreed upon redactions, the parties should file one Joint Motion
`to Seal any information in Papers 8, 12, 13, and 27, and Exhibit 1023, which they
`still believe is confidential. The parties should file their new proposed redactions
`together with their Joint Motion to Seal. The parties will have 20 business days
`after the date of this Order to file the Joint Motion to Seal. The parties are advised
`that this is their final opportunity to request to seal confidential information and
`
`7
`
`
`
`CBM2017-00036
`Patent 8,768,840 B2
`
`file properly redacted papers. Should the parties fail to file the indicated joint
`motion to seal, or propose excessive redactions, the Board may exercise its
`discretion and unseal Exhibit 1023 and Papers 8, 12, 13, and 27 in their entirety.
`
`
`
`III. ORDER
`ORDERED that, Petitioner’s First Motion to Seal, with respect to
`
`Exhibit 1024, is granted;
`FURTHER ORDERED that, Petitioner’s Motions to Seal, with respect to
`Petitioner’s Reply to the Preliminary Response (Paper 8), Petitioner’s Reply to the
`Patent Owner Response (Paper 27), and Exhibit 1023, are denied;
`FURTHER ORDERED that the parties are directed to meet-and-confer
`regarding new redacted versions of Papers 8, 12, 13, and 27 and Exhibit 1023;
`FURTHER ORDERED that the parties are granted leave to file a Joint
`Motion to Seal, which shall be due, no later than, 20 business days after this Order;
`FURTHER ORDERED that, if the parties do not file a timely Joint Motion
`Seal we may unseal Exhibit 1023 and Papers 8, 12, 13, and 27; and
`
`FURTHER ORDERED that Exhibits 1025 and 1026 are expunged.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`CBM2017-00036
`Patent 8,768,840 B2
`
`For Petitioner:
`
`Natasha H. Moffitt
`Holmes J. Hawkins III
`Abby L. Parsons
`KING & SPALDING LLP
`nmoffitt@kslaw.com
`hhawkins@kslaw.com
`aparsons@kslaw.com
`
`
`For Patent Owner:
`
`John W. Goldschmidt, Jr.
`FERENCE AND ASSOCIATES
`jgoldschmidt@ferencelaw.com
`
`Thomas J. Maiorino
`MAIORINO LAW GROUP LLC
`tmaiorinolaw@comcast.net
`
`
`
`9
`
`
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