Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 63
`Entered: March 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Expunging Sealed Information after Final Written Decision
`37 C.F.R. § 42.56
`
`
`
`
`
`Patent Owner filed an unopposed motion requesting to expunge sealed
`Exhibits 2006, 2007, 2010, 2011, 2012, and 2013 and Paper 29 from the
`record, pursuant to 37 C.F.R. § 42.56. Paper 60, 1 (“Mot.”). The motion
`indicates that Petitioner does not oppose the request. Id.
`Sealed information ordinarily becomes publicly available after final
`judgment. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`
`571-272-7822
`
`
`
`
`Paper 63
`Entered: March 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Expunging Sealed Information after Final Written Decision
`37 C.F.R. § 42.56
`
`
`
`
`
`Patent Owner filed an unopposed motion requesting to expunge sealed
`Exhibits 2006, 2007, 2010, 2011, 2012, and 2013 and Paper 29 from the
`record, pursuant to 37 C.F.R. § 42.56. Paper 60, 1 (“Mot.”). The motion
`indicates that Petitioner does not oppose the request. Id.
`Sealed information ordinarily becomes publicly available after final
`judgment. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`48761 (Aug. 14, 2012). A party may file a motion to expunge confidential
`information from the record, however, if wishing to preserve its
`confidentiality. 37 C.F.R. § 42.56.
`A strong public policy exists for making information filed in an inter
`partes review publicly available. 37 C.F.R. § 42.12; see also 77 Fed. Reg. at
`48760–61. We must balance the public’s interest in maintaining a complete
`and understandable file history with the party’s interest in protecting truly
`sensitive information. 77 Fed. Reg. at 48760.
`In our decision of February 5, 2015, we determined that good cause
`existed to seal Exhibit 2006 (Declaration of Partha Dutta), Exhibits 2007,
`2010, 2011, 2012, and 2013 (collectively, “the AT&T documents”) and
`corresponding portions of Paper 29 (unredacted Patent Owner’s Response),
`because they contain confidential information related to the development of
`the GeoPlex product by AT&T. See Paper 36, 2–3.
`During the subsequent course of the trial, however, testimony of
`Michah Lerner called into question whether the sealed information was truly
`confidential. See Paper 59, 2. Dr. Lerner testified that he taught college
`courses and wrote a textbook based upon the technology involved in the
`GeoPlex project. Ex. 2019 ¶ 4. We, thus, informed Patent Owner that any
`motion to expunge confidential information after the final judgement should
`address whether the sealed information is truly confidential. Paper 59, 2.
`In this regard, Patent Owner proffers additional testimony of Dr.
`Lerner explaining that the information contained exclusively in the AT&T
`documents is confidential and was not used in college courses or in the
`preparation of his book. Ex. 2024 ¶ 8. We are satisfied by Dr. Lerner’s
`explanation that the information did not become public through his actions
`
`2
`
`
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`and determine that good cause exists to continue to treat the AT&T
`documents and the corresponding portions of the Declaration of Partha Dutta
`and the Patent Owner’s Response as confidential. See Paper 36; see also
`Mot. 1–4 (addressing the confidentiality of the AT&T documents).
`
`Patent Owner proffered the AT&T documents to corroborate the
`testimony of Mr. Dutta regarding an issue of prior invention. See Paper 54,
`13. In our Final Written Decision,1 we were not persuaded that the
`information in the AT&T documents sufficiently corroborated Mr. Dutta’s
`testimony and relied upon other evidence as providing sufficient
`corroboration to establish prior invention. Id. at 13–15. Our decision, thus,
`does not rely upon the confidential information in the AT&T documents and
`the corresponding portions of the Declaration of Partha Dutta and the Patent
`Owner’s Response and the confidential information is not necessary to
`understand our decision. As such, any public interest in making this
`confidential information available is minimal. See Mot. 4–5.
`Upon consideration of the above, we are persuaded by Patent Owner
`that the public’s interest in maintaining a complete and understandable file
`history does not outweigh the need to protect the confidential information in
`the AT&T documents. Accordingly, the AT&T documents, the unredacted
`Patent Owner’s Response, and the Declaration of Partha Dutta are expunged
`from the record.
` Unlike for the Patent Owner’s Response, the record does not contain
`a redacted version of the Declaration of Partha Dutta. Only portions of the
`Declaration refer to the confidential information in the AT&T documents
`
`
`1 The time period to appeal our Final Written Decision, pursuant to 35
`U.S.C. § 141(c) has expired without any appeal being filed. See Mot. 3.
`
`3
`
`
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`and, thus, only those portions should be removed from the record. In its
`Motion, Patent Owner indicates that it is willing to file such a redacted copy
`of the Declaration. Mot. 5. No later than April 1, 2016, Patent Owner must
`file a copy of the Declaration of Parth Dutta having only the confidential
`information redacted.
`Our decision of February 5, 2015 also sealed Exhibits 2008 and 2009.
`See Paper 36, 2–3. Patent Owner does not request that we expunge Exhibits
`2008 and 2009 and indicates that Dr. Lerner used materials from these
`exhibits in his college courses and textbook. See Mot. 1, 4. Accordingly,
`Exhibits 2008 and 2009 are unsealed.
`
`
`It is:
`ORDERED that Patent Owner’s Motion to Expunge is granted and
`Exhibits 2006, 2007, 2010, 2011, 2012, and 2013 and Paper 29 are
`expunged;
`FURTHER ORDERED that Exhibits 2008 and 2009 are unsealed; and
`FURTHER ORDERED that, no later than April 1, 2016, Patent
`Owner should file a copy of Exhibit 2006 with the confidential information
`redacted.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-00587
`Patent No. 6,826,694 B1
`
`
`PETITIONER:
`Kenneth R. Adamo
`Eugne Goryunov
`Kirkland & Ellis LLP
`Kenneth.adamo@kirkland.com
`Eugene.goryunov@kirkland.com
`
` PATENT OWNER:
`Brenton R. Babcock
`Ted M. Cannon
`Knobbe, Martens, Olson & Bear, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`
`
`
`5
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