Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 32
`
`
`
` Entered: March 28, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRONG, INC.,
`Petitioner,
`
`v.
`
`YEOSHUA SORIAS,
`Patent Owner.
`____________
`
`Case IPR2015-01317
`Patent 8,712,486 B2
`____________
`
`
`Before SALLY C. MEDLEY, GLENN J. PERRY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. § 42.14
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 32
`
`
`
` Entered: March 28, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRONG, INC.,
`Petitioner,
`
`v.
`
`YEOSHUA SORIAS,
`Patent Owner.
`____________
`
`Case IPR2015-01317
`Patent 8,712,486 B2
`____________
`
`
`Before SALLY C. MEDLEY, GLENN J. PERRY, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. § 42.14
`
`
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`Patent Owner filed “Patent Owner’s Motion to Seal and Parties’ Joint
`Request for Entry of Protective Order” (Paper 29) accompanying its
`Response on March 18, 2016.1 For the following reasons, the motion is
`granted and the protective order is entered.
`Protective Order
`The parties have conferred and have reached agreement as to the
`terms and the scope of the Proposed Protective Order. Id. 9–10. Patent
`Owner filed a redline version of the Proposed Protective Order And Default
`Protective Order (Paper 29, Exhibit B) identifying how the Proposed
`Agreed-On Protective Order departs from the Board’s default order
`appearing in the Trial Practice Guide. These difference include modifying
`and/or deleting Sections 2(A), 2(D), and 2(E) to reflect that patent owners,
`named parties to the proceeding, employees, and other similar individuals
`will not be permitted to access confidential information unless a showing
`that access to such confidential information should be granted. Id. 9–10.
`We have reviewed the Proposed Agreed-On Protective Order and
`determine that it is acceptable.
`
`
`
`
`
`
`1 On March 18, 2016, Patent Owner filed a redacted (Paper 27) and
`unredacted (Paper 28) version of their Response. The unredacted Response
`was filed again on March 19, 2016 as Paper 30 with a footer indicating the
`document contains Protective Order Material.
`2
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`2060
`
`Motion to Seal
`In its Motion, Patent Owner seeks to seal certain portions of various
`
`“Confidential Documents,” the Declarations of Mr. David Paris (Ex. 2043)
`and Mr. Yeoshua Sorias (Ex. 2046), and Patent Owner’s Response (Paper
`30). Paper 29, 2–3. Patent Owner has filed non-confidential, redacted
`versions of these documents. According to Patent Owner, these documents
`include confidential business information. Paper 29, 2–8.
`
`A summary of Patent Owner’s assertions regarding each of the
`documents that is the subject of Patent Owner’s Motion to Seal is included
`in the following table:
`Exhibit No.
`Patent Owner’s Reason for Sealing
`2058
`It contains significant confidential information, including
`the identity of the purchaser/distributor and pricing terms,
`throughout. Paper 29, 4.
`It contains significant confidential information, including
`the identities of both the purchaser/distributor and the
`manufacturer, as well as pricing and other business terms,
`throughout. Id.
`It contains significant confidential information, including
`the identities of both the distributor and the purchaser, as
`well as pricing and other business terms, throughout. Id.
`It contains significant confidential information, including
`the identities of both the distributor and the purchaser, as
`well as pricing and other business terms, throughout. Id.
`It contains significant confidential information, including
`the identities of both the distributor and the purchaser, as
`well as pricing and other business terms, throughout. Id.
`at 5.
`It contains significant confidential information, including
`the identity of the purchaser, as well as pricing and other
`business terms. Id.
`
`2078
`
`2074
`
`2075
`
`2076
`
`3
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`2079
`
`2080
`
`2081
`
`2083
`
`2084
`
`2085
`
`2087
`
`2090
`
`2046
`
`2043
`
`It contains significant confidential information, including
`the identity of the distributor, as well as pricing and other
`business terms. Id.
`It contains significant confidential information, including
`the identity of the purchaser, as well as other business
`terms. Id.
`It contains significant confidential information, including
`the identity of the purchaser, as well as other business
`terms. Id. at 6.
`It contains confidential business information, including the
`proportional equity and ownership interests of the
`principals of Zilicon. Id.
`It contains significant confidential information, including
`the identity of the purchaser, as well as pricing and other
`business terms. Id.
`It contains significant confidential information, including
`the identity of the manufacturer, pricing information
`and other business terms, tax information, and the
`manufacturer’s banking information and payment details.
`Id.
`It contains significant confidential information, including
`the identities of both the purchaser/distributor and the
`manufacturer, as well as pricing and other business terms,
`throughout. Id. at 7.
`It contains significant confidential information, including
`the identity of the purchaser, as well as other business
`terms. Id.
`It contains significant confidential business information,
`including the identities of Zilicon’s current, former, and
`potential manufacturers, purchasers, distributors,
`customers, and other business partners, as well as pricing
`and other financial information, throughout. This
`information includes, but is not limited, to confidential
`information reflected in the exhibits identified above. Id.
`Portions of [this] report contain significant confidential
`business information related to Zilicon, including the
`4
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`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`Response
`
`identities of Zilicon’s current, former, and potential
`manufacturers, purchasers, distributors, customers, and
`other business partners, as well as pricing and other
`financial information. This information includes
`confidential information reflected in the exhibits
`identified above. Id. at 7–8.
`The Patent Owner’s Response includes discussions of
`secondary considerations of non-obvious based on
`commercial success. Portions of these arguments include
`significant confidential information, including the identity
`of the manufacturers and other business partners, and
`confidential sales information, including pricing and other
`business terms for the Squirl Charger. This information
`includes confidential information or summaries thereof
`reflected in the exhibits identified above. Id. at 8.
`
`
`
`Patent Owner’s counsel “certifies that based on a diligent
`investigation, the Confidential Documents and requested redacted
`information have not been published or otherwise made public.” Id. at 9.
`
`Petitioner did not file an opposition to Patent Owner’s Motion to Seal.
`
`There is a strong public policy for making all information filed in an
`inter partes review open to the public. Garmin Int’l v. Cuozzo Speed Techs.,
`LLC, IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper 34).
`The standard for granting a motion to seal is “for good cause.” 37 C.F.R.
`§ 42.54(a). For this reason, except as otherwise ordered, the record of an
`inter partes review trial shall be made available to the public. See 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. Motions to seal may be granted for good
`cause; until the motion is decided, documents filed with the motion shall be
`sealed provisionally. See 37 C.F.R. §§ 42.14, 42.54(a). The moving party
`
`5
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`IPR2015-01317
`Patent 8,712,486 B2
`
`bears the burden of showing that there is good cause to seal the record. See
`37 C.F.R. § 42.20(c).
`
`Upon considering the content of the Exhibits along with Patent
`Owner’s representations as to the confidentiality of the information, we
`determine that Patent Owner has shown good cause for sealing the above
`identified documents. Accordingly, Patent Owner’s Motion to Seal the non-
`redacted documents is granted.
`
`Patent Owner is reminded that confidential information that is subject to
`a protective order in these proceedings ordinarily will become public 45 days
`after final judgment in a trial. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,761. Additionally, the parties are reminded that there is an
`expectation that information will be made public where the existence of the
`information is identified in a final written decision following a trial. Id.
`Furthermore, a motion to expunge the information will not necessarily prevail
`over the public interest in maintaining a complete and understandable file
`history.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Parties’ joint request for entry of a modified
`protective order is granted, and the proposed Agreed-On Protective Order
`(Paper 29, Exhibit A) is placed into effect;
`
`FURTHER ORDERED that Patent Owner’s Motion to Seal is
`granted.
`
`
`6
`
`
`
`IPR2015-01317
`Patent 8,712,486 B2
`
`
`FOR PETITIONER:
`Caleb Pollack
`Zeev Pearl
`Daniel Melman
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`cpollack@pearlcohen.com
`zpearl@pearlcohen.com
`dmelman@pearlcohen.com
`
`
`
`FOR PATENT OWNER:
`Mitchell S. Feller
`Jason Wachter
`GOTTLIEB RACKMAN & REISMAN, P.C.
`msfeller@grr.com
`jwachter@grr.com
`
`7
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