Trials@uspto.gov
`571-272-7822
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` Paper 36
`Entered: April 5, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2012-00001 (JL)
`Patent 6,778,074
`____________
`
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Revised Motion to Seal
`37 C.F.R. §§ 42.14 and 42.54
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`571-272-7822
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` Paper 36
`Entered: April 5, 2013
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2012-00001 (JL)
`Patent 6,778,074
`____________
`
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Revised Motion to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
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`Case IPR 2012-00001
`Patent 6,778,074
`
`INTRODUCTION
`
`On March 11, 2013, Cuozzo filed a Motion to Seal requesting to seal the
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`exhibits of the Declaration of Inventor Giuseppe A. Cuozzo, which includes
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`Exhibits A-P within Exhibits 3000 and 4000.1 (Paper 33.) The exhibits contain
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`factual evidence to support Cuozzo’s patentability contention that Inventor
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`Giuseppe A. Cuozzo invented the claimed subject matter before the dates of certain
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`prior art relied on by Garmin.
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`That initial motion was denied by the Board in a decision dated March 14,
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`2013. (Paper 34.) In that decision, the Board issued guidance on what should be
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`contained in a proper motion to seal evidence, and provided Cuozzo an opportunity
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`to file a Revised Motion to Seal in accordance with the guidance.
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`
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`On March 21, 2013, Cuozzo filed a Revised Motion to Seal, limiting the
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`exhibits requested to be sealed to Exhibits B, I, J, K, L, and P contained in Revised
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`Exhibits 3000 and 4000 (labeled as “Protective Order Material”). Cuozzo moved
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`Exhibits A, C-H, and M-O to Revised Exhibits 3001 and 4001 which are open to
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`the public. The Board appreciates Cuozzo’s effort to comply with the guidance.
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`Cuozzo also submitted a copy of the Board’s default protective order as the
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`proposed protective order (Exhibit 5000). (Revised Motion, 7: ¶ V.) Because the
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`parties agree to the terms of the protective order, the Board hereby enters the
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`
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`1 Patent owner’s exhibits should have been numbered in the range of 2001-2999.
`See 37 C.F.R. § 42.63(c). In the interest of efficiency in this case, the Board
`exercises its discretion to accept the improperly numbered exhibits. 37 C.F.R. §§
`42.1(b) and 42.5(b).
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`2
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`Case IPR 2012-00001
`Patent 6,778,074
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`protective order. As a consequence, the default protective order governs the
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`treatment and filing of confidential information of this proceeding.
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`DISCUSSION
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`There is a strong public policy for making all information filed in a quasi-
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`judicial administrative proceeding open to the public, especially in an inter partes
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`review which determines the patentability of claims in an issued patent and
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`therefore affects the rights of the public. Under 35 U.S.C. § 316(a)(1), the default
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`rule is that all papers filed in an inter partes review are open and available for
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`access by the public; and a party may file a concurrent motion to seal and the
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`information at issue is sealed pending the outcome of the motion.
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`Similarly, 37 C.F.R. § 42.14 provides:
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`The record of a proceeding, including documents and things,
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`shall be made available to the public, except as otherwise ordered. A
`party intending a document or thing to be sealed shall file a motion to
`seal concurrent with the filing of the document or thing to be sealed.
`The document or thing shall be provisionally sealed on receipt of the
`motion and remain so pending the outcome of the decision on the
`motion.
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`
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`It is, however, only “confidential information” that is protected from
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`disclosure. 35 U.S.C. § 316(a)(7)(“The Director shall prescribe regulations -- . . .
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`providing for protective orders governing the exchange and submission of
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`confidential information”). In that regard, note the Office Trial Practice Guide,
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`77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), which provides:
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`3
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`Case IPR 2012-00001
`Patent 6,778,074
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`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.
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`
`* * *
`
`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.
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`
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`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
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`§ 42.54. Cuozzo as the moving party has the burden of proof in showing
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`entitlement to the requested relief. 37 C.F.R. § 42.20(c). We need to know why
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`the information sought to be sealed constitutes confidential information.
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`A motion to seal is required to include a proposed protective order and a
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`certification that the moving party has in good faith conferred or attempted to
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`confer with the opposing party in an effort to come to an agreement as to the scope
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`of the proposed protective order for this inter partes review. 37 C.F.R. § 42.54.
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`
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`Cuozzo represents that it has conferred with Garmin and that Garmin does
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`not oppose Cuozzo’s Revised Motion to Seal. (Revised Motion, 5: ¶ III.) We note
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`that the due date for any opposition by Garmin has passed and Garmin has filed no
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`opposition. Cuozzo also represents that in a related district court proceeding the
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`same information was produced under a protective order and designated as
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`confidential. (Revised Motion, 5: ¶ II.) Those representations are by themselves
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`an insufficient showing of good cause but provide an illuminating context. Also
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`4
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`Case IPR 2012-00001
`Patent 6,778,074
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`illuminating is the fact that the Declaration of Inventor Giuseppe A. Cuozzo was
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`submitted by Cuozzo without any portion thereof being covered by a motion to
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`seal and has been available to the public since its submission on March 11, 2013.
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`(Exs. 3001 and 4001.)
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`Revised Exhibits 3000 and 4000 (labeled as “Protective Order Material”),
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`under seal provisionally, contain the following:
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`Exhibit B is the New Jersey driving record of Giuseppe A. Cuozzo,
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`the named inventor of Cuozzo’s involved patent in this inter partes review;
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`Exhibit I is a communication from Invention Submission Corporation to an
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`attorney who performed an initial patentability search based on Giuseppe A.
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`Cuozzo’s invention disclosure, forwarding the remarks of Inventor Giuseppe A.
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`Cuozzo with regard to the patents listed on the initial search report;
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`Exhibit J is a formal Patentability Search Report provided by an attorney to
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`Inventor Giuseppe A. Cuozzo;
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`Exhibit K is an agreement executed between Inventor Giuseppe A. Cuozzo
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`and Invention Submission Corporation;
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`Exhibit L includes a copy of a cashier’s check payable to Invention
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`Submission Corporation and copies of Invention Submission Corporation’s
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`receipts of check and case payments from Inventor Giuseppe A. Cuozzo; and
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`Exhibit P is a copy of a personal check made payable to the United States
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`Patent and Trademark Office for the filing fee of Cuozzo’s involved Patent
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`5
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`6,778,074.
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`Case IPR 2012-00001
`Patent 6,778,074
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`Upon consideration of Cuozzo’s Revised Motion to Seal, we determine that
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`there is good cause for granting the Revised Motion to Seal with respect to
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`Exhibits B, K, L, and P, but not Exhibits I and J.
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`Personal Confidential Information That Has No Relevance
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`
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`Exhibit B, Inventor Giuseppe A. Cuozzo’s driving record in the state of New
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`Jersey as of August 30, 2012, is confidential personal information and does not
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`have much, if anything, to do with the merits of this case. The entirety of the
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`record was submitted by Cuozzo to support the assertion in the Declaration of
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`Inventor Giuseppe Cuozzo (Exs. 3001 and 4001, 3: ¶ 8) that he was ticketed for
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`speeding on November 29, 1999. As for the specific speeding ticket on November
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`29, 1999, that is disclosed already in ¶ 8 of the Declaration of Inventor Giuseppe
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`A. Cuozzo. The public’s interest in having access to Exhibit B is minimal, if any.
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`Exhibit L includes a copy of a cashier’s check remitted by Inventor
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`Giuseppe A. Cuozzo to Invention Submission Corporation and copies of Invention
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`Submission Corporation’s receipts of check and cash payments from the inventor.
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`With regard to this exhibit, Cuozzo’s revised motion states:
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`This exhibit constitutes confidential personal financial
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`information that potentially would cause the inventor embarrassment
`if published. The manner and amount of his payments to ISC
`[Invention Submission Corporation] under their agreement reveals
`information about his personal financial status.
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`(Revised Motion, 4: ¶ D.)
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`The payment amounts as well as the manner of payment, e.g., check or cash,
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`are already described in the Declaration of Inventor Giuseppe Cuozzo. (Exs. 3001
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`Case IPR 2012-00001
`Patent 6,778,074
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`and 4001: 7: ¶ 19.) Paragraph 19 of the Declaration of Inventor Giuseppe Cuozzo
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`(Ex. 3001 and Ex. 4001) reveals even more information on the manner of payment,
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`including the source account of some of the money used to make a payment. The
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`public’s interest in having access to Exhibit L is little to none.
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`Exhibit P is a copy of a personal check in the amount of $370 made payable
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`to the United States Patent and Trademark Office. With regard to this exhibit,
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`Cuozzo’s revised motion states:
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`The exhibit constitutes confidential personal financial
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`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.
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`(Revised Motion, 5: ¶ E.)
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`We agree with Cuozzo that bank and account number information is
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`confidential and if revealed, potentially may cause harm effected via criminal
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`means. We also see no relevance of the bank name and account number
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`information to the merits of this case. As for the amount of the payment, name of
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`family member writing the check, and identification of the payee, that information
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`is already revealed in ¶ 23 of the Declaration of Inventor Giuseppe A. Cuozzo
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`(Exs. 3001 and 4001). The public’s interest in having access to the information in
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`Exhibit P is none.
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`As discussed previously, there is a strong public policy for making all
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`information filed in an inter partes review open to the public. Factual evidence
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`7
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`Case IPR 2012-00001
`Patent 6,778,074
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`submitted in a trial to support a party’s case for patentability must be made
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`available to the public, unless there is good cause for protecting the evidence.
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`35 U.S.C. § 316(a); 37 C.F.R. § 42.14. A moving party has the burden of proof to
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`establish that it is entitled to the requested relief. 37 C.F.R. § 42.20.
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`Here, when determining whether Cuozzo has established good cause for
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`sealing the evidence, we balance Cuozzo’s needs in protecting the above-identified
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`personal confidential information and the public’s interest in maintaining a
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`complete and understandable file history of this inter partes review of the ’074
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`patent. Based on our review as discussed above, we determine that there is good
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`cause for protecting Exhibits B, K, L, and P by placing them under seal because
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`the information is personal confidential and has little relevance to the merits of any
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`substantive issue. We see little harm to the public’s interest in restricting access to
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`the information.2
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`Unimportant Business Confidential Information
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`Exhibit K is an agreement or business contract between Inventor Giuseppe
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`A. Cuozzo and Invention Submission Corporation with regard to commercializing
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`2 To minimize cost, delay, and burden on the parties and Board, parties should not
`submit confidential personal information which clearly has little relevance to the
`merits of the case, such as account number on a check, social security number, and
`full driving record. Non-useful personal confidential information in a document
`should be redacted when the document is submitted and the submission should be
`accompanied by a paper noting the reasons for the redaction. Similarly, moving to
`seal information when that information is contained in a public document filed by
`the moving party also leads to inefficient use of resources and should be avoided.
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`8
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`Case IPR 2012-00001
`Patent 6,778,074
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`and patenting the inventor’s disclosed invention and the associated fees. The
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`details of this agreement are unimportant to the merits of this case. Cuozzo
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`characterizes this exhibit as confidential business information. We agree. The
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`public’s interest in having access to Exhibit K is minimal. Upon consideration of
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`the foregoing, we determine there is good cause to grant the motion to seal with
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`respect to Exhibit K.
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`Waived Attorney-Client Privilege Information
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`Exhibits I and J are communications between Inventor Giuseppe A. Cuozzo
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`and his attorney. Cuozzo correctly notes that ordinarily, with respect to these
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`exhibits, attorney-client privilege applies. However, these exhibits were submitted
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`on Cuozzo’s own initiative to support Cuozzo’s contention that its claims are
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`patentable over the cited prior art. In particular, they were submitted by Cuozzo to
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`show pre-filing conception and diligence toward constructive reduction to practice.
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`Cuozzo understands that as to these two exhibits, it has waived the attorney-
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`client privilege with respect to the issues of pre-filing conception and diligence
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`toward constructive reduction to practice. Nevertheless, Cuozzo contends that
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`others may argue, however incorrectly, that the waiver is broad and therefore
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`attorney-client communication in this proceeding and in related civil action on
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`other issues should become discoverable. According to Cuozzo, making these two
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`exhibits available to the public could impose a heavy burden on Cuozzo to defend
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`against the broad-waiver argument which, although without merit, likely would be
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`raised by other parties.
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`9
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`Case IPR 2012-00001
`Patent 6,778,074
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`We are unpersuaded by Cuozzo’s arguments. In support of a substantive
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`argument, Cuozzo on its own volition filed Exhibits I and J, thus waiving attorney-
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`client privilege and the confidentiality associated with such privilege. The public
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`has an interest in knowing what information Cuozzo believes is important in
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`determining a substantive issue in the case. There is a strong public policy for
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`making all information filed in an inter partes review in support of a substantive
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`argument open to the public so that a complete and understandable file history is
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`maintained. Only “confidential information” is protectable from public disclosure
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`upon a showing of good cause. See 35 U.S.C. §§ 316(a)(1) and (a)(7).
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`The contention that others will make a general waiver argument against
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`Cuozzo if the Board does not seal Exhibits I and J is speculative. The Board
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`should not undermine the public’s interest in having open access to pertinent
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`information, simply for the purpose of making Cuozzo’s litigation strategy of
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`choice less costly to Cuozzo.
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`Cuozzo broadly represents that the same information is subject to a
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`protective order and designated confidential in a related district court litigation.
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`However, it is not known whether in that unidentified litigation, the information of
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`Exhibits I and J were submitted by Cuozzo for the same purpose as that for which
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`those exhibits have been submitted in this case, i.e., to prove pre-filing conception
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`and reasonable diligence toward constructive reduction to practice.
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`Balancing Cuozzo’s alleged burden with the strong public interest in having
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`open access to factual evidence submitted by a party in support of a substantive
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`contention, we determine that the public interest outweighs Cuozzo’s alleged
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`10
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`Case IPR 2012-00001
`Patent 6,778,074
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`burden. Therefore, Cuozzo failed to establish that there is good cause to seal
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`Exhibits I and J.
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`For the foregoing reasons, Cuozzo’s Revised Motion to Seal is granted-in-
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`CONCLUSION
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`part. It is
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`ORDERED that with respect to Exhibits B, K, L, and P, the motion is
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`granted; these exhibits will be kept under seal; the protective order (Exhibit 5000)
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`is entered and governs the treatment and filing of the confidential information of
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`this proceeding;
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`FURTHER ORDERED that with respect to Exhibits I and J, the motion is
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`denied; and
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`FURTHER ORDERED that within one week of the date of this decision
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`Cuozzo shall either (1) request rehearing of this decision, or (2) move Exhibits I
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`and J in Revised Exhibits 3000 and 4000 (currently designated as private) to within
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`the publically available Exhibits 3001 and 4001, the same way it had previously
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`moved Exhibits A, C-H, M, and O from private to public, after which time all but
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`the latest version of Exhibits 3000 and 4000 and Exhibits 3001 and 4001 will be
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`expunged from the record.
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`11
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`12
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`Case IPR 2012-00001
`Patent 6,778,074
`
`For PETITIONER
`
`Jennifer C. Bailey
`Scott Brown
`HOVEY WILLIAMS LLP
`jbailey@hoveywilliams.com
`jcrawford@hoveywilliams.com
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`
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`For PATENT OWNER
`
`John R. Kasha
`Kelley Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
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