`572-272-7822
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`Paper 133
`Entered: April 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ILLUMINA, INC.
`Petitioner,
`V.
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`THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
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`Case IPR2012-00006
`US Patent 7,713,698
`_________
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`
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`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ
`Administrative Patent Judges.
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`LANE, Administrative Patent Judge.
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`DECISION
`Miscellaneous Motion
`37 C.F.R. § 42.56
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`IPR2012-00006
`Patent 7,713,698
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`I. Introduction
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`The parties have filed a paper entitled “JOINT MOTION FOR
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`PRESERVATION OF THE RECORD PENDING APPEAL AND MOTION TO
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`EXPUNGE CONFIDENTIAL INFORMATION UNDER RULE 42.56”. (“Joint
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`Motion,” Paper 131). In the Joint Motion, the parties ask that the record in the
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`proceeding be preserved pending outcome of a possible appeal “including
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`preservation of all sealed documents in non-public form.” (Joint Motion at 1).
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`Alternatively, the parties ask that the information filed under seal be expunged
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`from the record pursuant to 37 C.F.R. § 42.56 so that the information will not be
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`made public. The parties ask that, if the Board denies the Joint Motion, they be
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`permitted to file alternate redacted versions of the information that was filed under
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`seal “to ensure that only a minimum amount of confidential information is
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`disclosed.” (Joint Motion at 1).
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`II. Discussion
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`The parties were permitted to file certain information under seal in
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`accordance with 37 C.F.R. § 42.54(a) such that the record contains public and non-
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`public versions of this information. (See, e.g., Decision granting motion to seal
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`2
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`IPR2012-00006
`Patent 7,713,698
`(Paper 83). The non-public versions ordinarily become publicly available after
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`final judgment. See Office Patent Trial Practice Guide at 77 Fed. Reg. 48756,
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`48761 (Aug. 14, 2012))
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`However, a party may file a motion to expunge confidential information from
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`the record if wishing to preserve its confidentiality. 37 C.F.R. 42.56. Here the
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`parties ask that the record be preserved as is, i.e., without removal or disclosure to
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`the public of the information filed under seal, “pending a possible appeal” or,
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`alternatively, expunged from the record.
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`Under the present circumstances, it is reasonable to maintain the record
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`undisturbed pending outcome of any appeal that is taken. At the conclusion of any
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`appeal proceeding, or if no appeal is taken, the parties should contact the Board so
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`that the Joint Motion may be renewed. If the parties do not contact the Board, then
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`the information filed under seal will be made public in due course. See Office
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`Patent Trial Practice Guide at 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012))
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`3
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`IPR2012-00006
`Patent 7,713,698
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`III.
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`Order
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`It is
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` ORDERED that that portion of the Joint Motion seeking expungement is
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`DISMISSED without prejudice to the parties renewing the Joint Motion as set forth
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`herein;
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` FURTHER ORDERED that the parties shall contact the Board at the
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`conclusion of any appeal proceeding or if no appeal is taken, so that the Joint
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`Motion may be renewed; and
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`FURTHER ORDERED that the record shall remain undisturbed as discussed
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`herein until such time as the Joint Motion is renewed or, if the parties fail to contact
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`the Board as required herein, the information filed under seal shall be made public.
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`4
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`IPR2012-00006
`Patent 7,713,698
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`PETITIONER:
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`Robert Lawler
`illuminaiprs@reinhartlaw.com
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`James Morrow
`illuminaiprs@reinhartlaw.com
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`PATENT OWNER:
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`John White
`jwhite@cooperdunham.com
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`Anthony Zupcic
`ColumbiaIPR@fchs.com
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`5
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