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`Date Filed: March 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CAPTIONCALL, L.L.C.,
`Petitioner
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`v.
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`ULTRATEC, INC.,
`Patent Owner
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`Case IPR2015-01355
`Patent No. 5,974,116
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`PATENT OWNER’S AND PETITIONER’S JOINT MOTION TO
`EXPUNGE UNDER 37 C.F.R. § 42.56
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`Submitted Electronically Via E2E
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`Case: IPR2015-01355
`U.S. Patent No. 5,974,116
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.56 and the Board’s order of January 26, 2017
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`(Paper 76 at 2-3), Patent Owner, Ultratec, Inc., and Petitioner, CaptionCall, L.L.C.,
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`hereby move jointly to expunge sealed Papers 29, 31, 41, and 42 (“Papers”), and
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`sealed Exhibits 2010, 2086, 2091, 2093, and 2094 (“Exhibits”).
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`The Papers and Exhibits were each filed under seal because they contain
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`information the Parties identified as confidential. As discussed in detail below, the
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`Papers and Exhibits concern Patent Owner’s sealed Motion to Dismiss the Petition
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`for Failure to Name All Real Parties-in-Interest. Paper 29 is the Motion to Dismiss,
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`Paper 31 is the associated Motion to Seal, Paper 42 is the Patent Owner’s Reply in
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`Support of its Motion to Dismiss, Paper 41 is the associated Motion to Seal, and the
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`Exhibits 2086, 2091, 2093, and 2094 are documents submitted solely in support of
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`the Motion to Dismiss. Additionally, Exhibit 2010 is a sealed September 19, 2014
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`letter submitted solely in support of Patent Owner’s Motion for Additional
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`Discovery under 37 C.F.R. § 42.51(B)(2) (Paper 16) also in relation to Patent
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`Owner’s Motion to Dismiss.
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`II.
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`PROCEDURAL BACKGROUND
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`On December 14, 2016, the Board issued its Final Written Decision and held
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`that claims 1-13, 15, and 18 of U.S. Patent No. 5,974,116 were shown by Petitioner
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`to be unpatentable. Paper 75 at 78. The Board denied Patent Owner’s Motion to
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`U.S. Patent No. 5,974,116
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`Dismiss, and the Papers and Exhibits were not relied upon for the Board’s
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`unpatentability determinations in the Final Written Decision. See Paper 73; Paper
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`75.
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`The Board ordered that the records in IPR2015-01355 be preserved for appeal
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`and that the sealed documents remain under seal at least until 45 days after the
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`expiration of any period for appeal. Paper 75 at 77; Paper 76 at 2-3. Patent Owner
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`filed a notice of appeal on February 14, 2017 (Paper 77). On January 14, 2022,
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`Patent Owner filed an unopposed motion to dismiss the appeal, which the Federal
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`Circuit granted on January 18, 2022. See Ultratec, Inc. v. CaptionCall, LLC, Dkt.
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`Nos. 30, 31 in Appeal No. 17-1659 (Fed. Cir.). The Parties thus request that the
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`Board expunge the Exhibits and Papers.
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`III. APPLICABLE LEGAL STANDARD
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`47 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial
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`or after final judgment in a trial, a party may file a motion to expunge confidential
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`information from the record.” The Board has previously explained that a party
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`moving to expunge has to show that: i) “any information sought to be expunged
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`constitutes confidential information[;]” and ii) the movant’s interest in expunging
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`the information “outweighs the public’s interest in maintaining a complete and
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`understandable file history.” RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 62
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`at 3 (P.T.A.B. Sept. 9, 2014). The regulations identify confidential information as
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`Case: IPR2015-01355
`U.S. Patent No. 5,974,116
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`“a trade secret or other confidential research, development, or commercial
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`information.” 37 C.F.R. § 42.54(a)(7). The Board must strike “a balance between
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`the public’s interest in maintaining a complete and understandable file history and
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`the parties’ interest in protecting truly sensitive information.” 77 Fed. Reg. 48756,
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`48760 (Aug. 14, 2012).
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`IV.
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` REASONS FOR THE RELIEF REQUESTED
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`Good cause exists to expunge the Papers and Exhibits from the record because
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`they contain information that the Parties identified as confidential. Additionally, the
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`material that the Parties seek to expunge is not required for a complete understanding
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`of the record.
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`A. The Papers and Exhibits Contain Confidential Information
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`Exhibit 2010 contains previously proposed license terms between Patent
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`Owner and Petitioner, which are of a competitively sensitive nature, are not available
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`to the public, and are treated by the Parties as confidential. It further references
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`information regarding actual licensing provisions between Patent Owner and its
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`business partners. Public knowledge of Patent Owner’s licensing strategy and terms
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`could cause serious harm to Patent Owner’s licensing negotiations in the future. In
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`light of this, the Parties seek to expunge Exhibit 2010.
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`U.S. Patent No. 5,974,116
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`Exhibits 2093 and 2094 were produced by Petitioner in the concurrent
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`litigation in the Western District of Wisconsin, Ultratec, Inc. v. Sorenson
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`Communications, Inc., 14-cv-66-jdp (W.D. Wisc.), and are designated “Highly
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`Confidential – Outside Counsel Only Information” under the Protective Order
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`entered in that matter.1 After seeking and obtaining an Order from the district court
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`for relief from the Protective Order’s restrictions (Exhibits 2087, 2088, and 2095)
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`and obtaining leave from the Board (Paper 35), Patent Owner filed the information
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`under seal in this proceeding on March 14, 2016. (Paper 37).
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`Both Exhibits 2093 and 2094 contain sensitive, non-public financial
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`information of Petitioner’s related entities. See Paper 37 at 2. Neither Petitioner nor
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`any of the entities related to it are public companies. The document entitled
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`Sorenson Holdings, LLC’s Financial Report for the Quarter Ended March 31, 2015
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`(Exhibit 2094) states that it is confidential and was prepared solely for use by any
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`note holders or related investors. The document entitled Sorenson Holdings, LLC
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`Consolidated Financial Statements December 31, 2014 and 2013 (Exhibit 2093)
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`1 The Court’s Order re-designated the information “Highly Confidential -
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`Outside Counsel Only Information,” removing the prosecution bar restriction. Ex.
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`2095 at 1.
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`contains the consolidated financial reports for 2014 and 2013. Petitioner has
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`maintained that such information is confidential. See Ex. 2085 at 1-2. Thus, the
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`Parties seek to expunge Exhibits 2093 and 2094 to maintain the confidentiality of
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`Petitioner’s sensitive, non-public financial information.
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`Exhibits 2086 and 2091 were also filed by Patent Owner under seal in support
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`of its Motion to Dismiss. As noted in Patent Owner’s corresponding Motion to Seal
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`(Paper 31), Petitioner has maintained that said documents and any reference to their
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`contents is confidential. See Paper 31 at 3-6 (describing in detail the confidentiality
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`of these Exhibits). In light of this, the Parties seek to expunge Exhibits 2086 and
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`2091.
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`Patent Owner’s Motion to Dismiss (Paper 29) and Patent Owner’s associated
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`Motion to Seal (Paper 31), cite and discuss the information contained in Exhibits
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`2086 and 2091 in detail. Further, Patent Owner’s Reply in Support of its Motion to
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`Dismiss (Paper 42), and Patent Owner’s associated Motion to Seal (Paper 41) cite
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`and discuss the information contained in Exhibits 2093 and 2094 in detail. Thus,
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`they should also be expunged to maintain the confidentiality of Petitioner’s
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`information.
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`B. The Confidential Information Is Not Required for a Complete
`Understanding of the Record
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`The Papers and Exhibits are not necessary for a complete understanding of
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`the record. First, none of the Papers or Exhibits was relied upon by either the Patent
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`Owner or the Petitioner for any argument concerning the patentability of the claims.
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`Second, the Board did not rely on any of the Papers or Exhibits in issuing its
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`unpatentability determinations in the Final Written Decision. Third, the appeal has
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`concluded; Patent Owner voluntarily moved to dismiss its appeal of the Board’s
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`Final Written Decision, which the Federal Circuit granted on January 18, 2022. See
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`Ultratec, Inc. v. CaptionCall, LLC, Dkt. Nos. 30, 31 in Appeal No. 17-1659 (Fed.
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`Cir.). And fourth, the Board’s Order denying Patent Owner’s Motion to Dismiss is
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`public in its entirety (Paper 73), and the record includes non-confidential versions of
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`Patent Owner’s Motion to Dismiss the Petition for Failure to Name All Real Parties-
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`in-Interest (Paper 32), and Patent Owner’s Reply in Support of its Motion to Dismiss
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`(Paper 43), thereby maintaining public access to any information relevant to this
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`IPR. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
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`Paper 97 at 2 (P.T.A.B. Apr. 15, 2015) (finding that redacted versions already part of
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`the record “maintain the essence” of the confidential material contained within each
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`of the papers allowing the public to “maintain[] a complete and understandable
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`history” of the present proceeding). Thus, the “public interest in maintaining a
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`U.S. Patent No. 5,974,116
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`complete and understandable file history for public notice purposes” will not be
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`affected by expunging the Papers or Exhibits, particularly when balanced against
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`“the needs of the parties to submit confidential information.” Trial Practice Guide,
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`77 Fed. Reg. at 48761.
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`Additionally, the Board repeatedly has granted motions to expunge in similar
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`circumstances. See Google LLC v. Seven Networks, LLC, IPR2018-01048, Paper
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`38 at 3-4 (P.T.A.B. Mar. 29, 2019) (finding good cause exists to expunge confidential
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`versions of papers, exhibits, and the institution decision that concern real party-in-
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`interest and privy issues, but are not relevant to the merits of the case); Jiawei Tech.
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`Ltd. v. Richmond, IPR2014-00935, Paper 71 at 3 (P.T.A.B. July 23, 2018) (finding
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`that “consideration of the [subject exhibits] was not necessary for the panel’s
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`determination of whether the challenged claims of the challenged patent were shown
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`to be unpatentable, but rather only to [the Board’s] determination of whether
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`[petitioner] had properly identified all real parties in interest”); Depuy Orthopaedics,
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`Inc. v. Orthopaedic Hosp., IPR2015-00510, Paper 21, at 2-3 (P.T.A.B. Sept. 15,
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`2015) (expunging unredacted versions of Patent Owner Preliminary Response and
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`confidential exhibits upon denial of institution, because Board’s decision did not
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`rely upon those documents); Paramount Home Ent. Inc. v. Nissim Corp., IPR2014-
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`00962, 2014 WL 7398906, at *8 (P.T.A.B. Dec. 29, 2014) (expunging from record
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`U.S. Patent No. 5,974,116
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`an exhibit Patent Owner sought to have sealed because Board’s decision did not rely
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`upon that information); Atrium Med. Corp. v Davol Inc., IPR2013-00189, 2014 WL
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`1510823, at *2 (P.T.A.B. Apr. 15, 2014) (expunging confidential documents after
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`termination of proceeding, because Board did not consider any of those documents
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`in any decision).
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`V. CONCLUSION
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`For the reasons set forth herein, Papers 29, 31, 41, and 42 and Exhibits 2010,
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`2086, 2091, 2093, and 2094 should be expunged from the record.
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`VI. CONFERENCE CALL WITH THE BOARD
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`Should the Board deem it necessary, the Parties are available for a conference
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`with the Board to discuss any issues arising from the present motion.
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`Respectfully submitted,
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`Date: March 4, 2022
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`Date: March 4, 2022
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`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Petitioner
`CaptionCall, L.L.C.
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`By: /Michael J. Curley/
`Michael J. Curley
`Registration No. 63,251
`Counsel for Patent Owner
`Ultratec, Inc.
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`Case: IPR2015-01355
`U.S. Patent No. 5,974,116
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s and Petitioner’s Joint Motion to Expunge Under 37 C.F.R. § 42.56 was
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`served on counsel of record on March 4, 2022 by filing this document through the
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`End-to-End System, as well as delivering a copy via electronic mail to counsel of
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`record for the Patent Owner at the following addresses:
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`Michael Jaskolski - michael.jaskolski@quarles.com
`Martha Snyder - martha.snyder@quarles.com
`Stephen J. Gardner - stephen.gardner@quarles.com
`Michael J. Curley - michael.curley@quarles.com
`Nikia L. Gray - nikia.gray@quarles.com
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`Date: March 4, 2022
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`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Petitioner
`CaptionCall, L.L.C.
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