Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
` Paper 29
` Entered: February 4, 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 IPR2015-00814 (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
`Patent Owner’s Motions to Seal and
`Motions to Deem Response and Exhibits as Timely Filed
`37 C.F.R. §§ 42.5, 42.14, and 42.54
`
`
`1 This Decision addresses issues pertaining to all three 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.
`
`
`Tel: 571-272-7822
`
`
`
` Paper 29
` Entered: February 4, 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 IPR2015-00814 (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
`Patent Owner’s Motions to Seal and
`Motions to Deem Response and Exhibits as Timely Filed
`37 C.F.R. §§ 42.5, 42.14, and 42.54
`
`
`1 This Decision addresses issues pertaining to all three 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.
`
`
`
`IPR2015-00814, IPR2015-00818
`IPR2015-00819
`
`
`Motions to Seal
`In each of the instant proceedings, Patent Owner filed a Motion to
`Seal two exhibits: (1) a confidential settlement agreement between Patent
`Owner and a third party, and (2) a declaration from Jack Goldberg that
`discusses the settlement agreement and other issues regarding the challenged
`patent in the respective proceeding.2 Patent Owner provides a proposed
`protective order with its Motions. Ex. 2049. Petitioner did not file an
`opposition to any of the Motions.
`There is a strong public policy in favor of making information filed in
`an inter partes review open to the public, especially because the proceeding
`determines the patentability of claims in an issued patent and, therefore,
`affects the rights of the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
`§ 42.14, the default rule is that all papers filed in an inter partes review are
`open and available for access by the public; a party, however, may file a
`concurrent motion to seal and the information at issue is sealed pending the
`outcome of the motion. It is, however, only “confidential information” that
`is protected from disclosure. 35 U.S.C. § 316(a)(7). In that regard, the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14,
`2012) provides:
`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.
`. . .
`
`2 See IPR2015-00814, Paper 19 (“Mot. To Seal”), Exs. 2030, 2044;
`IPR2015-00818, Paper 20, Exs. 2032, 2049; IPR2015-00819, Paper 22,
`Exs. 2032, 2049. Patent Owner filed similar documents in each proceeding.
`Unless otherwise noted, references to papers and exhibits herein are to those
`filed in Case IPR2015-00814.
`
`
`
`2
`
`
`
`IPR2015-00814, IPR2015-00818
`IPR2015-00819
`
`
`Confidential Information: The rules
`identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
`The standard for granting a motion to seal is “for good cause.”
`37 C.F.R. § 42.54(a). The filing party bears the burden of proof in showing
`entitlement to the relief requested in a motion to seal. 37 C.F.R. § 42.20(c).
`Patent Owner states that the settlement agreement and declaration
`“contain highly confidential financial and business terms that derive
`independent commercial value from not being generally known to the
`public, including [Patent Owner’s] competitors, such as Petitioner.”
`Mot. to Seal 1–2. According to Patent Owner, “[t]he terms include a
`financial arrangement between [Patent Owner] and the settling party, and
`terms that secure access to [Patent Owner] to RFID products and technology
`from the settling party which competes in the marketplace with products
`offered by Petitioner.” Id. at 2. Patent Owner relies on the settlement
`agreement in support of its arguments regarding secondary considerations of
`non-obviousness. Paper 20, 58. Upon reviewing the settlement agreement
`and Patent Owner’s arguments regarding its confidential nature, we are
`persuaded that good cause exists to seal it. The Motions to Seal will be
`conditionally granted as to the settlement agreement 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 Order of the Board.
`
`
`
`3
`
`
`
`IPR2015-00814, IPR2015-00818
`IPR2015-00819
`
`
`As to the declarations of Mr. Goldberg, however, we note that much
`of the declarations does not pertain to the settlement agreement and does not
`appear to be confidential. Indeed, Patent Owner cites extensively to the
`declarations in its Responses. Patent Owner has not established good cause
`for sealing the portions of the declarations that do not relate to the settlement
`agreement. Rather than denying the Motions as to the declarations and
`making them immediately available to the public though, we will permit
`Patent Owner to file in each proceeding a redacted version of the declaration
`and a supplemental motion to seal. The supplemental motions should
`explain in detail why each redacted portion of the declarations constitutes
`confidential information. If no supplemental motion to seal is received for
`any proceeding, the respective declaration will be unsealed.
`We also note that Patent Owner filed the settlement agreement in
`Cases IPR2015-00814 and IPR2015-00818 as “Filing Party and Board
`Only” in the Patent Review Processing System (PRPS), but filed the
`agreement as “Parties and Board Only” in Case IPR2015-00819. Patent
`Owner has not provided any justification for maintaining the settlement
`agreement as “Filing Party and Board Only.” The current designations will
`be maintained pending the supplemental motions to seal, and Patent Owner
`should include an explanation in its supplemental motions as to how the
`settlement agreement should be designated.
`Finally, Patent Owner states that its proposed protective order is a
`copy of the Board’s Default Protective Order, “modified to exclude in-house
`counsel or other in-house employees of parties to the proceeding from
`accessing documents marked ‘HIGHLY CONFIDENTIAL PROTECTIVE
`ORDER MATERIAL.’” Mot. to Seal 1, 3. Petitioner did not file an
`
`
`
`4
`
`
`
`IPR2015-00814, IPR2015-00818
`IPR2015-00819
`
`opposition to Patent Owner’s Motions, which requested entry of Patent
`Owner’s proposed protective order. We have reviewed the additional
`Sections 3 and 4 added to the protective order and are persuaded that they
`are appropriate under the circumstances. Consequently, the proposed
`protective order will be entered and will govern the treatment and filing of
`confidential information in the instant proceedings.
`
`
`Motions to Deem Response and Exhibits as Timely Filed
`In each of the instant proceedings, Patent Owner filed a Motion
`requesting that its Response and accompanying exhibits be deemed timely
`filed.3 Patent Owner states that it began the process of filing its Responses
`and accompanying exhibits in PRPS on December 14, 2015 (DUE DATE 1
`as stipulated by the parties), but could not complete all of the filings on time
`due to technical issues with PRPS, such that some documents were filed
`after midnight Eastern time (i.e., on December 15, 2015). Mot. 1–4. Patent
`Owner describes the issues it encountered with PRPS and the efforts it took
`to remedy the problems. Id. Patent Owner also states that it served all of the
`materials on Petitioner on December 14, 2015. Id. at 1. Petitioner did not
`file an opposition to any of the Motions.
`Under the circumstances, we are persuaded that Patent Owner has
`shown good cause for excusing its late filings, and that consideration of the
`materials would be in the interests of justice. See 37 C.F.R. § 42.5(c)(3).
`In the future, the parties are encouraged to begin filings as soon as possible
`and to contact the Board’s support line with any issues during business
`
`
`3 See IPR2015-00814, Paper 21 (“Mot.”); IPR2015-00818, Paper 22;
`IPR2015-00819, Paper 24.
`
`
`
`5
`
`
`
`IPR2015-00814, IPR2015-00818
`IPR2015-00819
`
`hours. The parties also are referred to http://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0 regarding electronic filing procedures.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Seal in each proceeding is
`conditionally granted-in-part with respect to the settlement agreement, and
`denied-in-part with respect to the declaration of Mr. Goldberg;
`FURTHER ORDERED that Patent Owner’s proposed protective order
`filed in each proceeding is entered and shall govern the treatment and filing
`of confidential information in the proceeding;
`FURTHER ORDERED that Patent Owner is authorized to file in each
`proceeding, within five business days of this Decision, a supplemental
`motion to seal;
`FURTHER ORDERED that any opposition to the supplemental
`motion to seal in each proceeding is due within five business days of the
`filing of the respective motion, and no replies are authorized; and
`FURTHER ORDERED that Patent Owner’s Motion in each
`proceeding requesting that its Response and accompanying exhibits be
`deemed timely filed is granted.
`
`
`
`
`
`
`
`
`6
`
`
`
`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
`noel.gillespie@procopio.com
`victor.felix@procopio.com
`robert.sloss@procopio.com
`
`
`
`
`
`7
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