Trials@uspto.gov
`571.272.7822
`
` Paper 105
` Entered: June 23, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-00637
`Patent 8,908,838 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper 105
` Entered: June 23, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-00637
`Patent 8,908,838 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`IPR2015-00637
`Patent 8,908,838 B2
`
`
`INTRODUCTION
`I.
`With our authorization, and pursuant to 37 C.F.R. § 42.56, Ultratec,
`Inc. (“Patent Owner”) and CaptionCall, L.L.C. (“Petitioner”) (jointly, “the
`parties”) filed a joint motion seeking to expunge sealed Papers 46, 48, 67,
`68, 80, and 89 (“Papers”), and sealed Exhibits 2071, 2086, 2091, 2106,
`2107, 2121, and 2123 (“Exhibits”). Paper 104 (“Motion” or “Mot.”).
`“[A]fter final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” See 37 C.F.R. § 42.56. On
`September 7, 2016, we entered a Final Written Decision (Paper 98)
`(“Decision” or “Dec.”), which was appealed by Patent Owner (Paper 102).
`On September 8, 2016, we denied Patent Owner’s Motion to Dismiss.
`Paper 99. On January 19, 2022, the United States Court of Appeals for the
`Federal Circuit granted Patent Owner’s motion to voluntarily dismiss its
`appeal of the Final Written Decision, in Ultratec, Inc. v. CaptionCall, LLC,
`Dkt. No. 26 in Appeal No. 17-1210 (Fed. Cir.). Mot. 2. On March 4, 2022,
`the parties filed this Motion. For the reasons discussed below, the Joint
`Motion is granted.
`
`II. DISCUSSION
`A strong public policy exists for making open to the public all
`information filed in this administrative proceeding. Only “confidential
`information” is protected from disclosure. 35 U.S.C. § 316(a)(7) (“The
`Director shall prescribe regulations . . . providing for protective orders
`governing the exchange and submission of confidential information.”). The
`Consolidated Trial Practice Guide (“TPG”) states that:
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`is an expectation that information will be made public where the
`
`2
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`IPR2015-00637
`Patent 8,908,838 B2
`
`
`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule 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. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`Consolidated Trial Practice Guide at 21–22 (Nov. 2019), available at
`http://www.uspto.gov/TrialPracticeGuideConsolidated. “The rules aim to
`strike a balance between the public’s interest in maintaining a complete and
`understandable file history and the parties’ interest in protecting truly
`sensitive information.” Id. at 19.
`A. Description of Papers
`Paper 46 is Patent Owner’s Motion to Dismiss the Petition for Failure
`to Name All Real Parties-In-Interest. (A redacted version is publicly
`available in Paper 49.) We granted Patent Owner’s Motion to Seal the
`redacted portions of Paper 46. Dec. 18. Paper 48 is Patent Owner’s Motion
`to Seal the following documents: Exhibit 2086 (“Mediation Notice”); the
`redacted portions of Paper 46 (Motion to Dismiss) that refer to the
`Mediation Notice, mediation, or previous motions to seal; Exhibit 2091 (an
`e-mail); and Paper 48 itself. This Motion was granted. Dec. 18. Paper 67 is
`Patent Owner’s Motion to Seal the Patent Owner’s Reply in Support of its
`Motion to Dismiss (Paper 68), and Paper 67 itself. This Motion was
`granted. Dec. 18. Paper 68 is Patent Owner’s Reply in Support of its
`Motion to Dismiss. We granted Patent Owner’s Motion to Seal the redacted
`portions of this Paper. Id. Paper 80 is Patent Owner’s Motion to Seal Patent
`
`3
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`IPR2015-00637
`Patent 8,908,838 B2
`
`
`Owner’s Demonstratives in Exhibit 2121, and Paper 80 itself. This Motion
`was granted. Id. Paper 89 is the Record of Oral Hearing for a portion of the
`April 6, 2016 hearing (after 11:37 a.m.), and is labeled “Confidential –
`Protective Order Material.” In this Paper, the discussion is limited to the
`Motion to Dismiss. A redacted, public version, reporting the portion of the
`hearing before 11:25 a.m., is in Paper 90. See Dec. 2, Paper 83.
`B. Description of Exhibits
`Exhibit 2071 “is a sealed September 19, 2014 letter submitted solely
`in support of Patent Owner’s Motion for Additional Discovery.” Mot. 2.
`The Exhibit was named in a Motion to Seal (Paper 29, revised in Paper 42),
`which was granted. Dec. 17. As noted earlier in regard to Paper 48, Exhibit
`2086 is a “Notice of Mediation.” The Motion to seal this exhibit was
`granted. Id. at 18. As noted earlier in regard to Paper 48, Exhibit 2091 is an
`e-mail. The Motion to seal this exhibit was granted. Id. Exhibit 2106 is
`titled “Sorenson Holdings, LLC Consolidated Financial Statements.” Patent
`Owner filed a Motion to Seal this exhibit (Paper 57), which was granted
`(Dec. 18). Exhibit 2107 is titled “Sorenson Holdings, LLC Financial Report
`for the Quarter Ended March 31, 2015.” Patent Owner filed a Motion to
`Seal this exhibit (Paper 57), which was granted (Dec. 18). Exhibits 2121
`and 2123 each are titled “Patent Owner’s Demonstratives for Oral Hearing.”
`Exhibit 2123 (and the redacted, public version in Exhibit 2124) was filed to
`replace Exhibit 2121 (and the redacted, public version in Exhibit 2122).
`Mot. 1. A Motion to Seal Exhibit 2121 was filed in Paper 80, and the
`Exhibit number was updated in Paper 85. The Motion to seal both Exhibits
`2121 and 2123 was granted. Dec. 18.
`
`4
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`IPR2015-00637
`Patent 8,908,838 B2
`
`
`The Parties’ Contentions
`C.
`The parties contend that for all the named Papers and Exhibits, which
`were filed under seal and were never made public, “good cause exists to
`expunge the aforementioned Papers and Exhibits from the record because
`they contain information that the Parties identified as confidential and were
`sealed on that basis. Additionally, the material that the Parties seek to
`expunge is not required for a complete understanding of the record.” Mot. 3.
`As to that point, the parties further contend:
`First, none of the Papers or Exhibits was relied upon by either
`the Patent Owner or the Petitioner for any argument concerning
`the patentability of the claims. Second, the Board did not rely
`on any of the Papers or Exhibits in issuing its unpatentability
`determinations in the Final Written Decision. Third, the appeal
`has concluded; Patent Owner voluntarily moved to dismiss its
`appeal of the Board’s Final Written Decision, which the Federal
`Circuit granted on January 19, 2022. [] And Fourth, the
`Board’s Order denying Patent Owner’s Motion to Dismiss is
`public in its entirety (Paper 99) and the record includes non-
`confidential versions of Patent Owner’s Motion to Dismiss the
`Petition for Failure to Name All Real Parties-in-Interest
`(Paper 49), and Patent Owner’s Reply in Support of its Motion
`to Dismiss (Paper 69), thereby maintaining public access to any
`information relevant to this IPR.
`Mot. 7 (citation omitted).
`Because we agree with the statements by the parties, we are persuaded
`by the parties’ contentions that expunging Papers 46, 48, 67, 68, 80, and 89,
`and Exhibits 2071, 2086, 2091, 2106, 2107, 2121, and 2123, would protect
`confidential information without harming the public’s interest in maintaining
`a complete and understandable file history. The redacted, public versions of
`the identified documents will be retained in the record for public access.
`
`
`5
`
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`IPR2015-00637
`Patent 8,908,838 B2
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Expunge Papers 46, 48, 67, 68,
`80, and 89, and Exhibits 2071, 2086, 2091, 2106, 2107, 2121, and 2123, is
`granted.
`
`
`
`
`
`6
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`IPR2015-00637
`Patent 8,908,838 B2
`
`
`
`
`
`PETITIONER:
`
`Ruben Munoz
`Eric Klein
`Todd Landis
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`eklein@akingump.com
`tlandis@akingump.com
`
`
`
`FOR PATENT OWNER:
`
`Michael Jaskolski
`Michael J. Curley
`Martha Jahn Snyder
`Nikia L. Gray
`Stephen J. Gardner
`QUARLES & BRADY, LLP
`michael.jaskolski@quarles.com
`michael.curley@quarles.com
`martha.snyder@quarles.com
`nikia.gray@quarles.com
`stephen.gardner@quarles.com
`
`7
`
`
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