Trials@uspto.gov Paper 75
`Tel: 571-272-7822 Entered: December 4, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.,
`Petitioner,
`v.
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`Case IPR2014-00936
`Patent 7,196,477 B2
`_______________
`
`
`Before KEN B. BARRETT, WILLIAM V. SAINDON, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
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`DECISION
`Granting Petitioner’s Renewed Motion to Expunge
`37 C.F.R. § 42.56
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`Tel: 571-272-7822 Entered: December 4, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA) LTD.,
`SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD., ATICO
`INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL USA, INC.,
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN FLORIDA),
`CHIEN LUEN INDUSTRIES CO., LTD., INC. (CHIEN LUEN CHINA),
`COLEMAN CABLE, LLC, NATURE’S MARK, RITE AID CORP., SMART
`SOLAR, INC., AND TEST RITE PRODUCTS CORP.,
`Petitioner,
`v.
`SIMON NICHOLAS RICHMOND,
`Patent Owner.
`_______________
`
`Case IPR2014-00936
`Patent 7,196,477 B2
`_______________
`
`
`Before KEN B. BARRETT, WILLIAM V. SAINDON, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Renewed Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`IPR2014-00936
`Patent 7,196,477 B2
`
`
`A Final Written Decision in this proceeding was issued on December
`15, 2015. Paper 67. Petitioner filed a Motion to Expunge certain materials
`filed under seal on January 29, 2016. Paper 68. We denied that Motion as
`untimely because the time for appeal had yet to expire. Paper 69. We
`instructed Petitioner to request to file a Renewed Motion to Expunge upon
`expiration of the time frame for appeal. Id. Patent Owner filed a Notice of
`Appeal on February 16, 2016. Paper 70. The parties later agreed to dismiss
`the appeal. Ex. 1067. Upon receiving authorization from the panel,
`Petitioner filed a Renewed Motion to Expunge Confidential Exhibits on
`November 21, 2017 (Paper 72) and Patent Owner filed an Opposition (Paper
`73).1 We grant Petitioner’s Motion.
`Petitioner moves to expunge Exhibits 1018, 1021, 1031, 1042–1044,
`and 1046 (the “Subject Exhibits”). Mot. 1. Petitioner identifies the sensitive
`nature of the contents of the Subject Exhibits, which we addressed
`previously in our Final Written Decision. Id. at 3–4. In our Final Written
`Decision, we granted Petitioner’s Motion to Seal the Subject Exhibits. Paper
`67, 5–6. As we stated then:
`The [Subject] Exhibits generally relate to an
`internal corporate resolution, listings of financial
`account numbers, and invoices for attorney fees.
`See [Paper 43] 3–4. The redacted versions of these
`documents, upon which we relied in our denial of
`Patent Owner’s Motion to Terminate (Paper 56),
`sufficiently disclose the basis for our decision, so
`there is little public interest in making the non-
`redacted versions publicly available. Accordingly,
`
`1 Petitioner also filed a Reply. Paper 74. The parties, however, only were
`authorized to file a Motion and Opposition. Accordingly, the Reply will be
`expunged. See 37 C.F.R. § 42.7(a).
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`IPR2014-00936
`Patent 7,196,477 B2
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`Petitioner has shown good cause for sealing
`Exhibits 1018 and 1031, and portions of 1021,
`1042–44, and 1046.
`Id. Our consideration of the Subject Exhibits was not necessary for our
`determination of whether the challenged claims of the challenged patent
`were shown to be unpatentable, but rather only to our determination of
`whether Petitioner had properly identified all real parties in interest. Further,
`as we stated in our Final Written Decision, our analysis of the real party in
`interest issue was resolvable based on the non-redacted versions of the
`Subject Exhibits. Accordingly, the public interest in having a complete
`record is satisfied sufficiently without disclosure of the Subject Exhibits. In
`view of this and the sensitive and financial nature of the documents,
`Petitioner has established good cause for expunging the Subject Exhibits.
`
`Patent Owner opposes Petitioner’s Motion. Patent Owner states that it
`intends to file a petition for a writ of certiorari in a related case involving a
`different patent, IPR2014-00935, in which the Federal Circuit affirmed the
`Final Written Decision. Opp. 2. Patent Owner also alleges that Petitioner’s
`request “is an attempt to ‘beat the clock’ on the Supreme Court’s decision in
`Oil States Energy Services or is motivated by some other undisclosed
`strategy.” Id. at 3. Patent Owner alleges that there may be “unintended
`consequences that have not been fully considered or briefed” if we were to
`expunge the documents. Id.
`
`Patent Owner’s arguments are not persuasive. First, Patent Owner
`misconstrues our instructions, which allowed Petitioner to move to expunge
`sensitive documents in each case after the time for appeal expired. For
`example, we expunged documents in IPR2014-00938 when Patent Owner
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`IPR2014-00936
`Patent 7,196,477 B2
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`did not appeal. Expunging documents in this case, for which there is no
`outstanding appeal, satisfies our previously stated instructions.
`
`Patent Owner’s argument that Petitioner’s request to expunge
`documents is an attempt to “beat the clock” or “motivated by some other
`undisclosed strategy” for which there may be “unintended consequences that
`have not been fully considered or briefed” is unpersuasive. This was Patent
`Owner’s opportunity to consider and brief such unintended consequences in
`its Opposition, yet it alludes to no cogent reason why Petitioner’s
`confidential documents should remain in the record. This case is terminated
`and final; nothing we do here in our limited, post-final administrative
`context changes that or affects the Director’s statutory requirement to issue a
`certificate.
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`
`ORDER
`
`
`
`It is hereby:
`ORDERED that Petitioner’s Renewed Motion to Expunge
`Confidential Information (Paper 72) is granted;
`FURTHER ORDERED that all non-public versions of Exhibits 1018,
`1021, 1031, 1042–1044, and 1046 are to be expunged from the record;
`FURTHER ORDERED that any public version of the Subject
`Exhibits will remain in the record; and
`FURTHER ORDERED that Paper 74 is to be expunged from the
`record.
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`IPR2014-00936
`Patent 7,196,477 B2
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`PETITIONER:
`
`Mark Nelson
`Mark.nelson@dentons.com
`
`Daniel Valenzuela
`Daniel.valenzuela@dentons.com
`
`Lissi Mojica
`Lissi.mojica@dentons.com
`
`Kevin Greenleaf
`Kevin.greenleaf@dentons.com
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`PATENT OWNER:
`
`Theodore Shiells
`tfshiells@shiellslaw.com
`
`Marcus Benavides
`marcusb@tlpmb.com
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