UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`
`Petitioner
`
`v.
`
`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`
`Patent Owner
`
`____________
`
`Case IPR2012-00001
`Patent 6,778,074
`____________
`
`
`
`PATENT OWNER’S REVISED MOTION TO SEAL
`
`
`
`In compliance with the Board’s March 14, 2013 Decision (Paper 34), Patent
`
`Owner Cuozzo Speed Technologies LLC (hereinafter “Patent Owner”) respectfully
`
`submits this Revised Motion to Seal certain documents contained in Exhibits 3000
`
`and 4000 accompanying its Response (Paper 31) and Motion to Amend (Paper 32),
`
`both filed March 11, 2013.
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`
`Petitioner
`
`v.
`
`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`
`Patent Owner
`
`____________
`
`Case IPR2012-00001
`Patent 6,778,074
`____________
`
`
`
`PATENT OWNER’S REVISED MOTION TO SEAL
`
`
`
`In compliance with the Board’s March 14, 2013 Decision (Paper 34), Patent
`
`Owner Cuozzo Speed Technologies LLC (hereinafter “Patent Owner”) respectfully
`
`submits this Revised Motion to Seal certain documents contained in Exhibits 3000
`
`and 4000 accompanying its Response (Paper 31) and Motion to Amend (Paper 32),
`
`both filed March 11, 2013.
`
`
`
`Patent Owner appreciates the Board’s permission to submit this Revised
`
`
`
`Motion to Seal and the guidance provided in its Decision. In accordance with the
`
`Decision, Patent Owner identifies the following fewer Exhibits B, I, J, K, L, and P
`
`of Exhibits 3000 and 4000 containing confidential information and explains the
`
`good cause for placing them under seal. Patent Owner certifies conference and
`
`agreement with Petitioner Garmin International, Inc. et al. (hereinafter
`
`“Petitioner”) regarding the proposed protective order and the scope of the proposed
`
`protective order. Finally, Patent Owner provides a copy of the default protective
`
`order set forth in the Office Patent Trial Practice Guide as the proposed protective
`
`order.
`
`I. Good Cause Exists for Sealing Certain Confidential Information.
`
`
`
`The following Exhibits contain confidential information:
`
`A. Exhibit B of Exhibits 3000 and 4000 (Giuseppe Cuozzo’s Driver History
`Report).
`
`Confidential personal information on Exhibit B of Exhibits 3000 and 4000
`
`includes inventor Giuseppe Cuozzo’s driving record maintained by the State of
`
`New Jersey. Disclosure of the information in the record would result in
`
`embarrassment to Mr. Cuozzo. (Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48760 (Aug. 14, 2012); Fed. R. Civ. P. Rule 26(c)(1)(G)). Although driving
`
`records are available from the New Jersey Motor Vehicle Commission, their
`
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`confidential nature is demonstrated by the need to submit the driver’s license
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`Attorney’s Docket No.: CUO0001-RE
`Page 3
`
`
`
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`number and last four digits of the driver’s social security number in order to obtain
`
`a copy.
`
`B. Exhibits I and J of Exhibits 3000 and 4000 (Attorney’s Patentability Search
`Report and Inventor’s comments thereto).
`
`These two exhibits include information protected by the attorney-client
`
`privilege and although Patent Owner’s reliance upon the facts set forth therein
`
`effects a narrow waiver of the privilege for purposes of this inter partes review and
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`between these parties, Patent Owner respectfully requests the Board seal these
`
`documents in furtherance of Patent Owner’s and inventor’s intent and effort to
`
`limit the extent of any waiver and guard against unnecessary litigation concerning
`
`the issue of a broad waiver, which would cause Patent Owner and the inventor
`
`Giuseppe Cuozzo undue burden, expense, and oppression.
`
`To be clear, Patent Owner does not intend to limit Petitioner’s discovery
`
`efforts in this proceeding relating to the facts in these documents that are relevant
`
`to the inventor’s declaration and assertion of pre-filing conception and diligent
`
`reduction to practice. Patent Owner asserts, however, that any waiver of the
`
`attorney-client privilege relating to this matter is narrow and does not affect a
`
`broad waiver of the privilege such that communications with IPR counsel or trial
`
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`counsel in the related district court action are discoverable. If these documents are
`
`Attorney’s Docket No.: CUO0001-RE
`Page 4
`
`
`
`
`not sealed, third-parties may argue their publication affects a broad waiver of the
`
`privilege, imposing unnecessary and undue burden and expense on Patent Owner
`
`and inventor. Id.
`
`C. Exhibit K of Exhibits 3000 and 4000 (Inventor’s Agreement with Invention
`Submission Corporation).
`
`This exhibit constitutes confidential business information relating to the
`
`inventor’s agreement with Invention Submission Corporation (hereinafter “ISC”),
`
`the financial terms of the agreement with ISC, and details about the inventor’s
`
`efforts to seek legal counsel to seek patent protection. If published, this
`
`information potentially would expose the inventor to embarrassment, undue
`
`burden, expense, and oppression as a result of his interaction with ISC and expose
`
`confidential business information relating to his engagement of ISC for
`
`promotional work. Id.
`
`D. Exhibit L of Exhibits 3000 and 4000 (Inventor’s receipt for payments to
`Invention Submission Corporation under Agreement).
`
`This exhibit constitutes confidential personal financial information that
`
`potentially would cause the inventor embarrassment if published. The manner and
`
`amount of his payments to ISC under their agreement reveals information about his
`
`personal financial status. Id.
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`Page 5
`
`E. Exhibit P of Exhibits 3000 and 4000 (Personal check from Inventor’s
`Family).
`
`This exhibit constitutes confidential personal financial information of the
`
`inventor’s family member including checking account and bank information.
`
`Publication of this information may cause embarrassment, oppression, and possibly
`
`would expose the inventor’s family to criminal attempts to access their personal
`
`financial accounts. Id.
`
`II. Certification of Non-Publication.
`
`On behalf of Patent Owner, undersigned counsel certifies the information
`
`sought to be sealed by this Revised Motion to Seal has not been published or
`
`otherwise made public. Efforts to maintain the confidentiality of this information
`
`have been undertaken by Patent Owner in a related district court proceeding. In
`
`that proceeding, this information was produced under the Protective Order entered
`
`in that case and designated confidential.
`
`III. Certification of Conference with Opposing Party Pursuant to 37
`C.F.R. § 42.54.
`
`Patent Owner has in good faith conferred with Petitioner and has reached
`
`agreement with Petitioner as to the scope of the proposed protective order.
`
`Petitioner has stated to Patent Owner that Petitioner will not oppose any revised
`
`motion to seal regarding Exhibits B, I, J, K, L, and P of Exhibits 3000 and 4000, as
`
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
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`described above. Petitioner has further stated to Patent Owner that Petitioner
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`Attorney’s Docket No.: CUO0001-RE
`Page 6
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`
`
`
`agrees to the Board’s default protective order.
`
`IV. Revised Exhibits 3001 and 4001 (Cuozzo Declaration with Non-
`Protective Order Material) and Revised Exhibits 3000 and 4000
`(Protective Order Material of Cuozzo Declaration)
`
`Patent Owner respectfully submits the attached Revised Exhibits 3001 and
`
`4001, which replace Exhibits 3001 and 4001 filed with Patent Owner’s Response
`
`(Paper 31) and Motion to Amend (Paper 32), respectively, on March 11, 2013.
`
`Specifically, Revised Exhibits 3001 and 4001 each include the Declaration of
`
`Giuseppe A. Cuozzo Pursuant to 37 C.F.R. § 1.131 with non-protective order
`
`material, i.e., Exhibits A, C-H, and M-O.
`
`Further, Patent Owner respectfully submits the attached Revised Exhibits
`
`3000 and 4000, which replace Exhibits 3000 and 4000 filed with Patent Owner’s
`
`Response (Paper 31) and Motion to Amend (Paper 32), respectively, on March 11,
`
`2013. Specifically, Revised Exhibits 3000 and 4000 each include protective order
`
`material of the Declaration of Giuseppe A. Cuozzo Pursuant to 37 C.F.R. § 1.131,
`
`i.e., Exhibits B, I, J, K, L, and P.
`
`
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`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`V. Proposed Protective Order.
`
`
`
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`Attorney’s Docket No.: CUO0001-RE
`Page 7
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`
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`The Protective Order attached hereto as Exhibit 5000 is the Board’s Default
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`Protective Order to which the Parties agree to be bound in this matter. Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48771 (Aug. 14, 2012).
`
`Respectfully submitted,
`
`
`
`/John R. Kasha/
`John R. Kasha, Reg. No. 53,100
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
`
`Cabrach J. Connor
`Reed Scardino LLP
`301 Congress Ave. Ste. 1250
`Austin, Texas 78701
`(512) 615-5989
`(512) 474-2622 facsimile
`Email: cconnor@reedscardino.com
`
`David Skeels
`Friedman Suder & Cooke
`604 East 4th Street
`Suite 200
`Fort Worth, TX 76012
`Email: skeels@fsclaw.com
`
`
`Attorneys for Cuozzo Speed Technologies
`LLC
`(IPR Trial No. 2012-00001)
`
`
`
`Case No.: IPR2012-00001
`Patent No: 6,778,074
`
`
`
`
`Attorney’s Docket No.: CUO0001-RE
`Page 8
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 21st day of March 2013, a true and correct copy
`
`of Patent Owner’s Revised Motion to Seal including Exhibit 5000, and Revised
`
`Exhibits 3000, 3001, 4000, and 4001has been provided, via electronic mail to
`
`counsel of record as follows:
`
`jbailey@hoveywilliams.com (Jennifer C. Bailey, Lead Counsel)
`sbrown@hoveywilliams.com (Scott R. Brown, Back-Up Counsel)
`jcrawford@hoveywilliams.com (Justin Crawford, Paralegal)
`
`
`Respectfully submitted,
`
`/John R. Kasha/
`John R. Kasha, Reg. No. 53,100
`Attorney for Cuozzo Speed Technologies
`LLC
`
`
`
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886, telephone
`(301) 340-3022, facsimile
`Email: john.kasha@kashalaw.com
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