UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL INC.,
`Patent Owner.
`
`Patent No. 6,476,351
`
`
`Inter Partes Review No. 2015-00024
`
`
`PATENT OWNER'S MOTION TO EXPUNGE
`UNDER 37 C.F.R § 42.56
`
`
`
`
`
`la-1321677
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL INC.,
`Patent Owner.
`
`Patent No. 6,476,351
`
`
`Inter Partes Review No. 2015-00024
`
`
`PATENT OWNER'S MOTION TO EXPUNGE
`UNDER 37 C.F.R § 42.56
`
`
`
`
`
`la-1321677
`
`
`
`IPR2015-00024
`
`I.
`
`RELIEF REQUESTED
`
`
`
`Docket No.: 614142800100
`
`
`
`Pursuant to the Trial Practice Guide and 37 C.F.R. § 42.56, Patent Owner
`
`Lazare Kaplan International Inc. (“LKI”) requests that the Board expunge
`
`confidential exhibits 2008, 2023, and 1021 from the record. This motion is
`
`unopposed by Petitioner Tiffany and Company (“Tiffany”).
`
`II. GOOD CAUSE EXISTS FOR EXPUNGING THE CONFIDENTIAL
`EXHIBITS
`
`The Trial Practice Guide states that confidential information subject to a
`
`Protective Order ordinarily becomes public 45 days after final judgment in a trial.
`
`77 Fed. Reg. 48756, 48761. A party may preserve the confidentiality of such
`
`information by filing a motion to expunge under 37 C.F.R. § 42.56, which
`
`“balances the needs of the parties to submit confidential information with the
`
`public interest in maintaining a complete and understandable file history for public
`
`notice purposes.” Id. In this case, the parties filed confidential exhibits, but LKI
`
`provided an explanation of information contained in those exhibits sufficient for
`
`the public to understand the file history. Moreover, the Board did not rely on the
`
`confidential exhibits in its Final Written Decision (“Decision”). Thus, now that the
`
`Board’s Decision is a final judgment, the Board should expunge the confidential
`
`exhibits from the record.
`
`Procedural Background
`
`A.
`On October 6, 2014, Tiffany petitioned for inter parts review of claims 1
`
`la-1321677
`
`1
`
`
`
`IPR2015-00024
`
`and 7 of U.S. Patent No. 6,476,351, assigned to LKI. (Paper 2.) The Board
`
`Docket No.: 614142800100
`
`
`
`
`
`instituted review on April 20, 2015. (Paper 7.)
`
`On August 5, 2015, LKI submitted a Patent Owner Response (Paper 12),
`
`with confidential Exhibits 2008 and 2023 (discussed in more detail below). LKI
`
`also submitted an unopposed Motion to Seal the confidential exhibits under the
`
`terms of the default Protective Order. (Paper 13.) LKI’s Motion to Seal describes
`
`the information included in the confidential exhibits.
`
`On November 17, 2015, Tiffany filed Reply to Patent Owner’s Response
`
`(Paper 24) with an unopposed Motion to Seal confidential Exhibit 1021 (discussed
`
`in more detail below).
`
`On April 13, 2016, the Board issued a Final Written Decision finding claims
`
`1 and 7 unpatentable over the prior art. (Paper 34.) In the Decision, the Board
`
`granted the Motions to Seal, and stated that “[w]e note that none of the sealed
`
`information was relied upon or disclosed in this Decision.” (Paper 34 at 41.)
`
`The due date for appealing the Board’s Decision was June 15, 2016. LKI
`
`did not appeal.
`
`B.
`
`Publishing Exhibit Nos. 2008, 2023, and 1021 Does Not Serve the
`Public Interest
`
`The public interest is not advanced by publishing confidential exhibits 2008,
`
`2023, and 1021 because 1) LKI provided a description of the confidential
`
`information contained in those exhibits sufficient for the public to understand the
`
`la-1321677
`
`2
`
`
`
`IPR2015-00024
`
`file history, and the 2) Board did not rely on the confidential information in
`
`Docket No.: 614142800100
`
`
`
`
`
`rendering its Decision,
`
`LKI submitted confidential business information of third-party Gemological
`
`Institute of America (“GIA”) to support its arguments on objective indicia of
`
`non-obviousness. Exhibit 2023 includes raw data regarding the number of laser
`
`inscriptions performed by GIA pursuant to license agreements between LKI and
`
`GIA. Exhibit 2008 is a confidential version of the declaration of William Moryto,
`
`which references the raw data in Exhibit 2023. Exhibit 1021, filed by Tiffany, is a
`
`confidential version of the deposition transcript of William Moryto, in which
`
`Mr. Moryto was questioned about Exhibits 2008 and 2023.
`
`In its Motion to Seal (Paper 13), LKI described the nature of the confidential
`
`inscription information, in a manner sufficient for the public to understand LKI’s
`
`objective indicia of non-obviousness arguments. For example, LKI noted that
`
`under two license agreements “LKI was paid a royalty based on the number of
`
`inscriptions performed by GIA using the licensed technology. The number of
`
`inscriptions is the raw data provided in Ex. 2023.” (Paper 13 at 3.)
`
`The Board recognized the confidentiality of GIA’s inscription information
`
`and found good cause to seal these exhibits. (Paper 34 at 41.) The Board also
`
`noted that it did not rely on this confidential information in its Decision. (Id.)
`
`Therefore, the public interest in viewing GIA’s confidential inscription
`
`la-1321677
`
`3
`
`
`
`IPR2015-00024
`
`information—including raw inscription numbers—is minimal because it not
`
`Docket No.: 614142800100
`
`
`
`
`
`necessary to understand the file history, including the Board’s Decision. The
`
`Board should therefore maintain the confidentiality of GIA’s inscription
`
`information that it previously sealed by now expunging it from the record.
`
`III. CONCLUSION
`For the reasons set forth above, Patent Owner respectfully requests the
`
`Board expunge Exhibits 2008, 2023, and 1021 from the record pursuant to 37
`
`C.F.R § 42.56.
`
`Dated: July 15, 2016
`
`
`
`
`la-1321677
`
`Respectfully submitted,
`
`/Mehran Arjomand/
`Mehran Arjomand
`Registration No. 48,231
`Attorneys for Patent Owner
`Morrison & Foerster LLP
`707 Wilshire Boulevard
`Los Angeles, CA 90017-3543
`Telephone: 213.892.5200
`
`Fahd Hussein Patel
`Registration No. 61,780
`Morrison & Foerster LLP
`2000 Pennsylvania Ave, NW
`Suite 6000
`Washington, D.C. 20006
`Telephone: 202.778.1658
`
`Attorneys for Patent Owner
`
`4
`
`
`
`IPR2015-00024
`
`
`
`
`
`Docket No.: 614142800100
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached PATENT OWNER'S MOTION TO
`
`EXPUNGE was served as of the below date by e-mail on the Petitioner at the
`
`following correspondence address(es):
`
`/Mehran Arjomand/
`Mehran Arjomand
`
`
`
`P. Weston Musselman, Jr.
`Adam R. Shartzer
`Ricardo J. Bonilla
`musselman@fr.com
`shartzer@fr.com
`rbonilla@fr.com
`PTABInbound@fr.com
`IPR29266-0014IP1@fr.com
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`Dated: July 15, 2016
`
`
`
`
`la-1321677
`
`5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
