`571-272-7822
`
`
`
`
`Paper 11
`Date: November 12, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This order addresses issues raised in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`I.
`INTRODUCTION
`On November 10, 2015, a conference call was conducted between
`respective counsel for the parties and Judges Horner, Cocks, and Worth.
`Petitioner, J Squared, Inc. d/b/a University Loft Company (“Petitioner”),
`was represented by counsel William F. Bahret. Patent Owner, Sauder
`Manufacturing Company (“Patent Owner”), was represented by counsel
`Thomas N. Young.
`The purpose of the call was to discuss: (1) submission of excerpts
`taken from deposition transcripts in a corresponding patent infringement
`litigation and submission of exhibits accompanying these deposition
`transcripts; (2) filing of certain papers under seal accompanied by a
`protective order; and (3) submission of exhibits supporting a declaration.
`
`
`A. Deposition Transcript and Exhibits
`Patent Owner indicated that it wishes to submit as evidence in support
`of its Patent Owner Response portions of two deposition transcripts from a
`corresponding patent infringement litigation. Petitioner indicated that it
`does not object to the submission of portions of these deposition transcripts.
`Patent Owner and Petitioner sought the Board’s guidance on whether it
`would be acceptable to submit only excerpts of the deposition transcripts or
`whether it would be necessary to submit the entire transcript and
`accompanying exhibits from each deposition. We advised the parties that it
`is not necessary to file entire deposition transcripts in this instance. We
`instructed Patent Owner to submit only those excerpts relied in support of
`the Patent Owner Response. We further instructed Patent Owner to submit
`only those exhibits referenced in the portions of the deposition transcript
`
`2
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`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`submitted by Patent Owner. We noted that if Petitioner feels that further
`portions of the deposition transcripts would be useful to the Board in this
`case, they may submit additional excerpts in any Petitioner Reply.
`
`
`
`
`B. Filing Under Seal and Protective Order
`Patent Owner noted that portions of the depositions transcripts from
`the related patent infringement litigation may contain information that the
`Petitioner deems business confidential information. Patent Owner and
`Petitioner stated that they were amenable to adopting the Board’s default
`protective order, and they sought guidance on the appropriate procedure for
`filing the confidential business information under seal.
`We reminded the parties of the strong public policy that all papers
`filed in an inter partes review are open and available for access by the
`public, and that there is a presumption that any confidential information
`relied on by the Board in a final decision shall become public. The standard
`for granting a motion to seal is “good cause.” 35 U.S.C. §§ 316(a)(1),
`316(a)(7); 37 C.F.R. §§ 42.14, 42.54. The party asserting confidentiality
`bears the burden of showing that the relief requested should be granted.
`37 C.F.R. § 42.20(c). This includes showing that the information is truly
`confidential, and that such confidentiality outweighs the strong public policy
`interest in having an open record.
`We advised the parties that any document filed with a motion to seal
`is treated as sealed until the motion is decided, and that a proposed
`protective order should be filed concurrently with a motion to seal. See
`37 C.F.R. § 42.54(a). Specifically, we informed Patent Owner that if the
`Patent Owner Response includes confidential information, it should be filed
`
`3
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`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
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`with a motion to seal and include as an exhibit to the motion a copy of the
`proposed protective order, along with a redacted, public version of the paper.
`We instructed that even if the parties agree to the Board’s default protective
`order, the parties must file a joint motion to seal accompanied by a proposed
`protective order. Further guidance may be found in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, App. B (August 14, 2012).
`
`
`
`
`C. Exhibits to Declaration
`Patent Owner noted that a declaration it plans to file with the Patent
`Owner Response contains references to exhibits, including video exhibits,
`available on the Internet. Patent Owner sought the Board’s guidance as to
`whether it would be necessary to electronically file these exhibits with the
`Board, or whether providing a link to a URL at which the exhibits could be
`located would be adequate. We advised Patent Owner that any exhibits
`referenced in the Patent Owner Response or accompanying declarations
`must be submitted using the Patent Review Processing System (PRPS).
`Only MPEG format video files (MPEG, MPG, MP1, MP2, MP3, M1A,
`M2A, M1V, MPA, MPV) may be uploaded in PRPS. Password-protected
`files will not be accepted. A single uploaded file may not exceed 25
`megabytes in size. For technical reasons, PRPS is unable to accept files over
`25 megabytes at this time. The parties are encouraged to reduce the file size
`by splitting a large file into multiple smaller files. The parties are directed to
`address all questions related to video excerpt submission issues to Frances
`Han at (571) 272-4612.
`
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`4
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`
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`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
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`D. Changing Due Dates
`At the end of the call, Patent Owner raised the issue of extending the
`due date for filing the Patent Owner Response. We advised that the parties
`may stipulate to different dates for DUE DATES 1 through 5 (earlier or
`later, but no later than DUE DATE 6). We further informed the parties that
`a notice of the stipulation, specifically identifying the changed due dates,
`must be promptly filed. The parties may not stipulate to an extension of
`DUE DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony.
`
`II. ORDER
`
`It is therefore
`ORDERED that the parties are authorized to submit excerpts of the
`two deposition transcripts from the corresponding patent infringement
`litigation;
`FURTHER ORDERED that the parties must submit any exhibits
`referenced in the excerpts of the two deposition transcripts;
`FURTHER ORDERED that exhibits referenced in any declarations,
`including video submissions to the Board, must be submitted in PRPS.
`FURTHER ORDERED that a notice of any stipulation to different
`dates for DUE DATES 1 through 5, specifically identifying the changed due
`dates, must be promptly filed with the Board.
`
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`5
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`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`PETITIONER:
`
`William F. Bahret
`Bahret & Associates LLC
`bahret@bahretlaw.com
`
`Stephen F. Rost
`Taft Stettinius & Hollister LLP
`SRost@taftlaw.com
`
`PATENT OWNER:
`
`Thomas N. Young
`Young Basile Hanlon & MacFarlane P.C.
`litigation@youngbasile.com
`
`Timothy Eagle
`Varnum Riddering Schmidt & Howlett LLP
`teeagle@varnumlaw.com
`
`
`6