Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 31
`Entered: March 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC., KAPSCH TRAFFICCOM IVHS
`HOLDING CORP., KAPSCH TRAFFICCOM IVHS TECHNOLOGIES
`HOLDING CORP., KAPSCH TRAFFICCOM U.S. CORP., and
`KAPSCH TRAFFICCOM HOLDING CORP.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00808 (Patent 6,229,443 B1)
`Case IPR2015-00814 (Patent 6,690,264 B2)
`Case IPR2015-00818 (Patent 8,237,568 B2)
`Case IPR2015-00819 (Patent 8,325,044 B2)1
`____________
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motions to Compel Discovery, Petitioner’s Motions to Seal,
`and Conduct of the Proceedings
`37 C.F.R. §§ 42.5, 42.14, and 42.54
`
`
`1 This Decision addresses issues pertaining to all four cases. We exercise
`our discretion to issue a single Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`Paper 31
`Entered: March 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC., KAPSCH TRAFFICCOM IVHS
`HOLDING CORP., KAPSCH TRAFFICCOM IVHS TECHNOLOGIES
`HOLDING CORP., KAPSCH TRAFFICCOM U.S. CORP., and
`KAPSCH TRAFFICCOM HOLDING CORP.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00808 (Patent 6,229,443 B1)
`Case IPR2015-00814 (Patent 6,690,264 B2)
`Case IPR2015-00818 (Patent 8,237,568 B2)
`Case IPR2015-00819 (Patent 8,325,044 B2)1
`____________
`
`Before JUSTIN T. ARBES, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motions to Compel Discovery, Petitioner’s Motions to Seal,
`and Conduct of the Proceedings
`37 C.F.R. §§ 42.5, 42.14, and 42.54
`
`
`1 This Decision addresses issues pertaining to all four cases. We exercise
`our discretion to issue a single Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2015-00808, IPR2015-00814
`IPR2015-00818, IPR2015-00819
`
`
`Petitioner Entities
`On February 23, 2016, Petitioner indicated by email to the Board that
`Petitioner entities Kapsch TrafficCom IVHS Holding Corp., Kapsch
`TrafficCom IVHS Technologies Holding Corp., and Kapsch TrafficCom
`U.S. Corp. have merged with Petitioner entity Kapsch TrafficCom Holding
`Corp. Petitioner shall file updated mandatory notice information reflecting
`the change in the Petitioner entities. Once Petitioner does so, the case
`captions shall reflect the change going forward.
`
`
`Case IPR2015-00808
`Patent Owner did not file a Response in Case IPR2015-00808. On
`February 1, 2016, Patent Owner indicated by email to the Board that it
`sought authorization to file a motion for adverse judgment. We authorized
`the motion by email on February 3, 2016. Any motion for adverse judgment
`in the proceeding shall be filed within five business days.
`
`Motions to Compel Discovery
`Petitioner filed a Motion to Compel Discovery in Cases
`IPR2015-00814 (Paper 24), IPR2015-00818 (Paper 25), and IPR2015-00819
`(Paper 27). On February 24, 2016, Petitioner indicated by email to the
`Board that it intends to withdraw its Motions to Compel Discovery.
`Accordingly, the Motions will be considered withdrawn.
`
`
`Motions to Seal
`Petitioner filed a Motion to Seal in Cases IPR2015-00814 (Paper 27),
`IPR2015-00818 (Paper 28), and IPR2015-00819 (Paper 30). Petitioner
`
`
`
`2
`
`
`
`IPR2015-00808, IPR2015-00814
`IPR2015-00818, IPR2015-00819
`
`seeks to seal (1) deposition copies of the confidential settlement agreement
`that was sealed previously in these proceedings,2 (2) portions of the
`deposition transcripts of Patent Owner’s declarant, Jack Goldberg, and
`(3) portions of Petitioner’s Reply in each proceeding referring to the
`confidential settlement agreement or confidential portions of the deposition
`transcripts. Petitioner provides redacted and unredacted versions of the
`deposition transcript and Reply in each proceeding, and states that Patent
`Owner does not oppose the Motion to Seal.
`The standard for granting a motion to seal is “for good cause.”
`37 C.F.R. § 42.54(a). Petitioner, as movant, bears the burden of proof in
`showing entitlement to the requested relief, and must explain why the
`information sought to be sealed constitutes confidential information.
`See 35 U.S.C. § 316(a)(7); 37 C.F.R. § 42.20(c); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). Upon reviewing the
`materials sought to be sealed, and Petitioner’s arguments regarding their
`confidential nature, we are persuaded that good cause exists to seal them.
`We also note that the redacted portions of the materials appear to be tailored
`narrowly to only confidential information. The Motions to Seal will be
`conditionally granted for the duration of the proceedings. If the final written
`decision in any proceeding substantively relies on information in a sealed
`document, the document may be unsealed by an Order of the Board. If any
`sealed document contains no information substantively relied on in the final
`written decision, the document may be expunged from the record by an
`
`
`2 See, e.g., IPR2015-00814, Paper 26 (conditionally granting-in-part Patent
`Owner’s motion to seal and entering Patent Owner’s proposed protective
`order).
`
`
`
`3
`
`
`
`IPR2015-00808, IPR2015-00814
`IPR2015-00818, IPR2015-00819
`
`Order of the Board. The materials will be sealed pursuant to the protective
`order previously entered in these proceedings. See, e.g., IPR2015-00814,
`Ex. 2049.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, within five business days of this Decision, Petitioner
`shall file updated mandatory notice information in each of the instant
`proceedings reflecting the change in the Petitioner entities, pursuant to
`37 C.F.R. § 42.8, and update its information accordingly in the Patent
`Review Processing System (PRPS);
`FURTHER ORDERED that, within five business days of this
`Decision, Patent Owner shall either file a motion for adverse judgment in
`Case IPR2015-00808, pursuant to 37 C.F.R. § 42.73(b), or contact the Board
`by email to Trials@uspto.gov if it does not intend to file such a motion;
`FURTHER ORDERED that Petitioner’s Motions to Compel
`Discovery in Cases IPR2015-00814, IPR2015-00818, and IPR2015-00819
`are considered withdrawn; and
`ORDERED that Petitioner’s Motions to Seal in Cases
`IPR2015-00814, IPR2015-00818, and IPR2015-00819 are conditionally
`granted, and the materials sought to be sealed shall remain under seal
`pursuant to the previously entered protective order in each proceeding.
`
`
`
`
`
`4
`
`
`
`IPR2015-00808, IPR2015-00814
`IPR2015-00818, IPR2015-00819
`
`PETITIONER:
`
`Gregg F. LoCascio
`Nathan S. Mammen
`KIRKLAND & ELLIS LLP
`gregg.locascio@kirkland.com
`nathan.mammen@kirkland.com
`
`
`
`PATENT OWNER:
`
`Noel C. Gillespie
`Victor M. Felix
`Robert H. Sloss
`PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
`gail.poulos@procopio.com
`
`
`
`
`
`5
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