`572-272-7822
`
`
`
`
`
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`Paper 145
`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.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
`
`Case IPR2012-00007
`US Patent 7,790,869
`_________
`
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`
`DECISION
`Miscellaneous Motion
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`IPR2012-00007
`Patent 7,790,869
`
`I. Introduction
`
`The parties have filed a paper entitled “JOINT MOTION FOR
`
`
`
`PRESERVATION OF THE RECORD PENDING APPEAL AND MOTION TO
`
`EXPUNGE CONFIDENTIAL INFORMATION UNDER RULE 42.56”. (“Joint
`
`Motion,” Paper 143). In the Joint Motion, the parties ask that the record in the
`
`proceeding be preserved pending outcome of a possible appeal “including
`
`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
`
`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
`
`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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`
`
`2
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`
`
`IPR2012-00007
`Patent 7,790,869
`public versions of this information. (See, e.g., Decision granting motion to seal
`
`(Paper 92)). The non-public versions ordinarily become publicly available after
`
`final judgment. See Office Patent Trial Practice Guide at 77 Fed. Reg. 48756,
`
`48761 (Aug. 14, 2012))
`
`However, a party may file a motion to expunge confidential information from
`
`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.
`
`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
`
`appeal proceeding, or if no appeal is taken, the parties should contact the Board so
`
`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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`IPR2012-00007
`Patent 7,790,869
`
`
`III.
`
`Order
`
`It is
`
` ORDERED that that portion of the Joint Motion seeking expungement is
`
`DISMISSED without prejudice to the parties renewing the Joint Motion as set forth
`
`herein;
`
` 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
`
`Motion may be renewed; and
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`FURTHER ORDERED that the record shall remain undisturbed as discussed
`
`herein until such time as the Joint Motion is renewed or, if the parties fail to contact
`
`the Board as required herein, the information filed under seal shall be made public.
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`4
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`
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`IPR2012-00007
`Patent 7,790,869
`
`
`
`
`PETITIONER:
`
`Robert Lawler
`illuminaiprs@reinhartlaw.com
`
`James Morrow
`illuminaiprs@reinhartlaw.com
`
`
`PATENT OWNER:
`
`John White
`jwhite@cooperdunham.com
`
`Anthony Zupcic
`ColumbiaIPR@fchs.com
`
`
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`5
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`
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