Paper No. _____
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`Date Filed: March 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CAPTIONCALL, L.L.C.,
`Petitioner
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`v.
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`ULTRATEC, INC.,
`Patent Owner
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`Case IPR2015-00637
`Patent No. 8,908,838
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`PATENT OWNER’S AND PETITIONER’S JOINT MOTION TO
`EXPUNGE UNDER 37 C.F.R. § 42.56
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`Submitted Electronically Via E2E
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`Date Filed: March 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CAPTIONCALL, L.L.C.,
`Petitioner
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`v.
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`ULTRATEC, INC.,
`Patent Owner
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`Case IPR2015-00637
`Patent No. 8,908,838
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`PATENT OWNER’S AND PETITIONER’S JOINT MOTION TO
`EXPUNGE UNDER 37 C.F.R. § 42.56
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`Submitted Electronically Via E2E
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`Case: IPR2015-00637
`U.S. Patent No. 8,908,838
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.56 and the Board’s authorization of September 7,
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`2016 (Paper 98 at 18), Patent Owner, Ultratec, Inc., and Petitioner, CaptionCall,
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`L.L.C., hereby move jointly to expunge sealed Papers 46, 48, 67, 68, 80, and 89
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`(“Papers”), and sealed Exhibits (“Exhibits”) 2071, 2086, 2091, 2106, 2107, 2121,
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`and 2123.
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`The Papers and Exhibits were each filed under seal because they contain
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`information the Parties identified as confidential. As discussed in detail below, the
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`Papers and Exhibits concern Patent Owner’s sealed Motion to Dismiss the Petition
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`for Failure to Name All Real Parties-in-Interest. Paper 46 is the Motion to Dismiss,
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`Paper 48 is the associated Motion to Seal, Paper 68 is the Patent Owner’s Reply in
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`Support of its Motion to Dismiss, Paper 67 is the associated Motion to Seal, and the
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`Exhibits 2086, 2091, 2106, and 2107 are documents submitted solely in support of
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`the Motion to Dismiss. Additionally, Exhibit 2121—which was later re-filed as
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`Exhibit 2123—is Patent Owner’s demonstratives containing sealed portions on the
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`subject of Patent Owner’s Motion to Dismiss (Paper 46), and Paper 80 is the
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`associated Motion to Seal. Paper 89 is the sealed hearing transcript as it relates to
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`Patent Owner’s Motion to Dismiss. See Paper 83 at 2 (ordering that a portion of the
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`hearing will be closed to the public because Patent Owner expects “discuss[ing]
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`information and exhibits it submitted under seal relative to its Motions to Dismiss”).
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`1
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`Case: IPR2015-00637
`U.S. Patent No. 8,908,838
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`Finally, Exhibit 2071 is a sealed September 19, 2014 letter submitted solely in
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`support of Patent Owner’s Motion for Additional Discovery under 37 C.F.R. §
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`42.51(B)(2) (Paper 29) also in relation to its Motion to Dismiss.
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`II.
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`PROCEDURAL BACKGROUND
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`On September 7, 2016, the Board issued its Final Written Decision and held
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`that claims 1-30 of U.S. Patent No. 8,908,838 have been shown by Petitioner to be
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`unpatentable. Paper 98 at 119. The Board denied Patent Owner’s Motion to Dismiss
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`and the Papers and Exhibits were not relied upon for the Board’s unpatentability
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`determinations in the Final Written Decision. See Paper 98; Paper 99.
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`The Board ordered in the Final Written Decision that the Parties may move to
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`expunge confidential information from the record after any appeals concluded.
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`Paper 98 at 18. Patent Owner filed a notice of appeal on November 8, 2016 (Paper
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`102). On January 18, 2022, Patent Owner filed an unopposed motion to dismiss the
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`appeal, which the Federal Circuit granted on January 19, 2022. See Ultratec, Inc. v.
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`CaptionCall, LLC, Dkt. No. 26 in Appeal No. 17-1210 (Fed. Cir.). The Parties thus
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`request that the Board expunge the Exhibits and Papers.
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`III. APPLICABLE LEGAL STANDARD
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`47 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial
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`or after final judgment in a trial, a party may file a motion to expunge confidential
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`information from the record.” The Board has previously explained that a party
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`U.S. Patent No. 8,908,838
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`moving to expunge has to show that: i) “any information sought to be expunged
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`constitutes confidential information[;]” and ii) the movant’s interest in expunging
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`the information “outweighs the public’s interest in maintaining a complete and
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`understandable file history.” RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 62
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`at 3 (P.T.A.B. Sept. 9, 2014). The regulations identify confidential information as
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`“a trade secret or other confidential research, development, or commercial
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`information.” 37 C.F.R. § 42.54(a)(7). The Board must strike “a balance between
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`the public’s interest in maintaining a complete and understandable file history and
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`the parties’ interest in protecting truly sensitive information.” 77 Fed. Reg. 48756,
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`48760 (Aug. 14, 2012).
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`IV.
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` REASONS FOR THE RELIEF REQUESTED
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`For the reasons set forth below, good cause exists to expunge the
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`aforementioned Papers and Exhibits from the record because they contain
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`information that the Parties identified as confidential and were sealed on that basis.
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`Additionally, the material that the Parties seek to expunge is not required for a
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`complete understanding of the record.
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`A. The Papers and Exhibits Contain Confidential Information
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`Exhibit 2071 is a September 19, 2014 letter containing previously proposed
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`license terms between Patent Owner and Petitioner, which are of a competitively
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`U.S. Patent No. 8,908,838
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`sensitive nature, are not available to the public, and are treated by the Parties as
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`confidential. It further references information regarding actual licensing provisions
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`between Patent Owner and its business partners. Public knowledge of Patent
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`Owner’s licensing strategy and terms could cause serious harm to Patent Owner’s
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`licensing negotiations in the future, and therefore, the Parties seek to expunge this
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`letter.
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`Exhibits 2086 and 2091 were also filed by Patent Owner under seal in support
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`of its Motion to Dismiss (Paper 46), and, as noted in Patent Owner’s corresponding
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`Motion to Seal (Paper 48), Petitioner has maintained that said documents and any
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`reference to their contents is confidential. See Paper 48 at 3-6 (describing in detail
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`the confidentiality of these Exhibits). In light of this, the Parties seek to expunge
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`Exhibits 2086 and 2091.
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`Exhibits 2106 and 2107 were produced by Petitioner in the concurrent
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`litigation in the Western District of Wisconsin, Ultratec, Inc. v. Sorenson
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`Communications, Inc., 14-cv-66-jdp (W.D. Wisc.), and are designated “Highly
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`Confidential – Outside Counsel Only Information” under the Protective Order
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`U.S. Patent No. 8,908,838
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`entered in that matter.1 After seeking and obtaining an Order from the district court
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`granting relief from the Protective Order’s restrictions (Exhibits 2087, 2088, and
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`2108) and obtaining leave from the Board (Paper 52), Patent Owner filed the
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`information under seal in this proceeding on March 14, 2016 (Paper 57).
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`Both Exhibits 2106 and 2107 contain sensitive, non-public financial
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`information related to Petitioner and related entities. See Paper 57 at 2. Neither
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`Petitioner nor any of the entities related to it are public companies. The document
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`entitled Sorenson Holdings, LLC’s Financial Report for the Quarter Ended March
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`31, 2015 (Exhibit 2107) states that it is confidential and was prepared solely for use
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`by note holders or related investors. The document entitled Sorenson Holdings, LLC
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`Consolidated Financial Statements December 31, 2014 and 2013 (Exhibit 2106)
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`contains consolidated financial reports for 2014 and 2013. Petitioner has maintained
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`that such information is confidential. See Ex. 2085 at 1-2. Thus, the Parties seek to
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`expunge Exhibits 2106 and 2107 to maintain the confidentiality of Petitioner’s
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`sensitive, non-public financial information.
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`1 The court’s order re-designated the information “Highly Confidential -
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`Outside Counsel Only Information,” removing the prosecution bar restriction. Ex.
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`2108 at 1.
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`U.S. Patent No. 8,908,838
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`Patent Owner’s Motion to Dismiss (Paper 46) and Patent Owner’s associated
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`Motion to Seal (Paper 48) cite and discuss the information contained in Exhibits
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`2086 and 2109 in detail. Further, Patent Owner’s Reply in Support of its Motion to
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`Dismiss (Paper 68) and Patent Owner’s associated Motion to Seal (Paper 67), cite
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`and discuss the information contained in Exhibits 2086, 2091, 2106 and 2107 in
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`detail. Thus, they should be expunged to maintain the confidentiality of Petitioner’s
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`information.
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`Exhibit 2121 is Patent Owner’s demonstrative exhibit, which was refiled as
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`Exhibit 2123. Portions of Exhibits 2121 and 2123 discuss the Parties’ confidential
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`information as it relates to the above-mentioned Exhibits filed by Patent Owner in
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`support of Patent Owner’s Motion to Dismiss. The accompanying Motion to Seal
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`(Paper 80) cites and discusses that confidential information in detail. Paper 89 is the
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`sealed hearing transcript of the Parties’ April 6, 2016 hearing before the Board, also
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`containing confidential information as it relates to the above-mentioned Exhibits
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`filed by Patent Owner in support of Patent Owner’s Motion to Dismiss. Thus,
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`Exhibits 2121 and 2123, and Papers 80 and 89 should also be expunged to maintain
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`the confidentiality of the Parties’ sealed information.
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`U.S. Patent No. 8,908,838
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`B. The Confidential Information Is Not Required for a Complete
`Understanding of the Record
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`The Papers and Exhibits are not necessary for a complete understanding of
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`the record. First, none of the Papers or Exhibits was relied upon by either the Patent
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`Owner or the Petitioner for any argument concerning the patentability of the claims.
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`Second, the Board did not rely on any of the Papers or Exhibits in issuing its
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`unpatentability determinations in the Final Written Decision. Third, the appeal has
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`concluded; Patent Owner voluntarily moved to dismiss its appeal of the Board’s
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`Final Written Decision, which the Federal Circuit granted on January 19, 2022. See
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`Ultratec, Inc. v. CaptionCall, LLC, Dkt. No. 26 in Appeal No. 17-1210 (Fed. Cir.).
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`And fourth, the Board’s Order denying Patent Owner’s Motion to Dismiss is public
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`in its entirety (Paper 99) and the record includes non-confidential versions of Patent
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`Owner’s Motion to Dismiss the Petition for Failure to Name All Real Parties-in-
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`Interest (Paper 49), and Patent Owner’s Reply in Support of its Motion to Dismiss
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`(Paper 69), thereby maintaining public access to any information relevant to this
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`IPR. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
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`Paper 97 at 2 (P.T.A.B. Apr. 15, 2015) (finding that redacted versions already part of
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`the record “maintain the essence” of the confidential material contained within each
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`of the papers allowing the public to “maintain[] a complete and understandable
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`history” of the present proceeding). Thus, the “public interest in maintaining a
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`U.S. Patent No. 8,908,838
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`complete and understandable file history for public notice purposes” will not be
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`affected by expunging the Papers or Exhibits, particularly when balanced against
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`“the needs of the parties to submit confidential information.” Trial Practice Guide,
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`77 Fed. Reg. at 48761.
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`Additionally, the Board repeatedly has granted motions to expunge in similar
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`circumstances. See Google LLC v. Seven Networks, LLC, IPR2018-01048, Paper 38
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`at 3-4 (P.T.A.B. Mar. 29, 2019) (finding good cause exists to expunge confidential
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`versions of papers, exhibits, and the institution decision that concern real party-in-
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`interest and privy issues, but are not relevant to the merits of the case); Jiawei Tech.
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`Ltd. v. Richmond, IPR2014-00935, Paper 71 at 3 (P.T.A.B. July 23, 2018) (finding
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`that “consideration of the [subject exhibits] was not necessary for the panel’s
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`determination of whether the challenged claims of the challenged patent were shown
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`to be unpatentable, but rather only to [the Board’s] determination of whether
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`[petitioner] had properly identified all real parties in interest”); Depuy Orthopaedics,
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`Inc. v. Orthopaedic Hosp., IPR2015-00510, Paper 21, at 2-3 (P.T.A.B. Sept. 15,
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`2015) (expunging unredacted versions of Patent Owner Preliminary Response and
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`confidential exhibits upon denial of institution, because Board’s decision did not
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`rely upon those documents); Paramount Home Ent. Inc. v. Nissim Corp., IPR2014-
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`00962, 2014 WL 7398906, at *8 (P.T.A.B. Dec. 29, 2014) (expunging from record
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`Case: IPR2015-00637
`U.S. Patent No. 8,908,838
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`an exhibit Patent Owner sought to have sealed because Board’s decision did not rely
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`upon that information); Atrium Med. Corp. v Davol Inc., IPR2013-00189, 2014 WL
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`1510823, at *2 (P.T.A.B. Apr. 15, 2014) (expunging confidential documents after
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`termination of proceeding, because Board did not consider any of those documents
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`in any decision).
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`V. CONCLUSION
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`For the above reasons, the Parties respectfully request that the Board protect
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`their confidential information and expunge sealed Papers 46, 48, 67, 68, 80, and 89
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`and sealed Exhibits 2071, 2086, 2091, 2106, 2107, 2121, and 2123.
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`VI. CONFERENCE CALL WITH THE BOARD
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`Should the Board deem it necessary, the Parties are available for a conference
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`with the Board to discuss any issues arising from the present motion.
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`Respectfully submitted,
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`Date: March 4, 2022
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`Date: March 4, 2022
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`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Petitioner
`CaptionCall, L.L.C.
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`By: /Michael J. Curley/
`Michael J. Curley
`Registration No. 63,251
`Counsel for Patent Owner
`Ultratec, Inc.
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`Case: IPR2015-00637
`U.S. Patent No. 8,908,838
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`and Petitioner’s Joint Motion to Expunge Under 37 C.F.R. § 42.56 was served on
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`counsel of record on March 4, 2022 by filing this document through the End-to-End
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`System, as well as delivering a copy via electronic mail to counsel of record for the
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`Patent Owner at the following addresses:
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`Michael Jaskolski - michael.jaskolski@quarles.com
`Martha Snyder - martha.snyder@quarles.com
`Stephen J. Gardner - stephen.gardner@quarles.com
`Michael J. Curley - michael.curley@quarles.com
`Nikia L. Gray - nikia.gray@quarles.com
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`Date: March 4, 2022
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`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Petitioner
`CaptionCall, L.L.C.
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`10
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