Trials@uspto.gov
`571.272.7822
`
` Paper 80
` Entered: June 23, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-01355
`Patent 5,974,116
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper 80
` Entered: June 23, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAPTIONCALL, L.L.C.,
`Petitioner,
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner.
`____________
`
` IPR2015-01355
`Patent 5,974,116
`____________
`
`
`
`Before WILLIAM V. SAINDON, BARBARA A. BENOIT, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`
`ORDER
`Granting Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`IPR2015-01355
`Patent 5,974,116
`
`
`INTRODUCTION
`I.
`With our authorization, and pursuant to 37 C.F.R. § 42.56, Ultratec,
`Inc. (“Patent Owner”) and CaptionCall, L.L.C. (“Petitioner”) (jointly, “the
`parties”) filed a joint motion seeking to expunge sealed Papers 29, 31, 41,
`and 42 (“Papers”), and sealed Exhibits 2010, 2086, 2091, 2093, and 2094
`(“Exhibits”). Paper 79 (“Motion” or “Mot.”).
`“[A]fter final judgment in a trial, a party may file a motion to expunge
`confidential information from the record.” See 37 C.F.R. § 42.56. On
`December 14, 2016, we entered a Final Written Decision (Paper 75)
`(“Decision” or “Dec.”), which was appealed by Patent Owner (Paper 77).
`On September 8, 2016, we denied Patent Owner’s Motion to Dismiss.
`Paper 73. On January 18, 2022, the United States Court of Appeals for the
`Federal Circuit granted Patent Owner’s motion to voluntarily dismiss its
`appeal of the Final Written Decision, in Ultratec, Inc. v. CaptionCall, LLC,
`Dkt. Nos. 30, 31 in Appeal No. 17-1659 (Fed. Cir.). Mot. 2. On March 4,
`2022, the parties filed this Motion. For the reasons discussed below, the
`Motion is granted.
`
`II. DISCUSSION
`A strong public policy exists for making open to the public all
`information filed in this administrative proceeding. Only “confidential
`information” is protected from disclosure. 35 U.S.C. § 316(a)(7) (“The
`Director shall prescribe regulations . . . providing for protective orders
`governing the exchange and submission of confidential information.”). The
`Consolidated Trial Practice Guide (“TPG”) states that:
`Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition
`to institute a trial or 45 days after final judgment in a trial. There
`is an expectation that information will be made public where the
`
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`IPR2015-01355
`Patent 5,974,116
`
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`existence of the information is referred to in a decision to grant
`or deny a request to institute a review or is identified in a final
`written decision following a trial. A party seeking to maintain
`the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information
`becoming public. 37 C.F.R. § 42.56. The rule balances the needs
`of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file
`history for public notice purposes. The rule encourages parties
`to redact sensitive information, where possible, rather than
`seeking to seal entire documents.
`Consolidated Trial Practice Guide at 21–22 (Nov. 2019), available at
`http://www.uspto.gov/TrialPracticeGuideConsolidated. “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.” Id. at 19.
`A. Description of Papers
`Paper 29 is Patent Owner’s Motion to Dismiss the Petition for Failure
`to Name All Real Parties-In-Interest. (A redacted version is publicly
`available in Paper 32.) We granted Patent Owner’s Motion to Seal this
`Paper. Dec. 77. Paper 31 is Patent Owner’s Motion to Seal the following
`documents: Exhibit 2086 (“Mediation Notice”); the redacted portions of
`Paper 29 (Motion to Dismiss) that refer to the Mediation Notice, mediation,
`or previous motions to seal; Exhibit 2091 (an e-mail); and Paper 31 itself.
`This Motion was granted. Dec. 77. Paper 41 is Patent Owner’s Motion to
`Seal the Patent Owner’s Reply in Support of its Motion to Dismiss
`(Paper 42), and Paper 41 itself. This Motion was granted. Dec. 77.
`Paper 42 is Patent Owner’s Reply in Support of its Motion to Dismiss. We
`granted Patent Owner’s Motion to Seal this Paper, as requested in Paper 42.
`Dec. 77.
`
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`IPR2015-01355
`Patent 5,974,116
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`B. Description of Exhibits
`Exhibit 2010 “is a sealed September 19, 2014 letter submitted solely
`in support of Patent Owner’s Motion for Additional Discovery.” Mot. 1. As
`noted earlier in regard to Paper 31, Exhibit 2086 is a “Notice of Mediation.”
`The Motion to seal this exhibit was granted. Dec. 77. As noted earlier in
`regard to Paper 31, Exhibit 2091 is an e-mail. The Motion to seal this
`exhibit was granted. Dec. 77. Exhibit 2093 is titled “Sorenson Holdings,
`LLC Consolidated Financial Statements, December 31, 2014 and 2013.”
`Patent Owner filed a Motion to Seal this exhibit (Paper 37), which was
`granted (Dec. 77). Exhibit 2094 is titled “Sorenson Holdings, LLC
`Financial Report for the Quarter Ended March 31, 2015.” Patent Owner
`filed a Motion to Seal this exhibit (Paper 37), which was granted (Dec. 77).
`The Parties’ Contentions
`C.
`The parties contend that for all the named Papers and Exhibits, which
`were filed under seal, and thus were never made public, “good cause exists
`to expunge the aforementioned Papers and Exhibits from the record because
`they contain information that the Parties identified as confidential and were
`sealed on that basis. Additionally, the material that the Parties seek to
`expunge is not required for a complete understanding of the record.” Mot. 3.
`As to that point, the parties further contend:
`First, none of the Papers or Exhibits was relied upon by either
`the Patent Owner or the Petitioner for any argument concerning
`the patentability of the claims. Second, the Board did not rely
`on any of the Papers or Exhibits in issuing its unpatentability
`determinations in the Final Written Decision. Third, the appeal
`has concluded; Patent Owner voluntarily moved to dismiss its
`appeal of the Board’s Final Written Decision, which the Federal
`Circuit granted on January 18, 2022. [] And Fourth, the
`Board’s Order denying Patent Owner’s Motion to Dismiss is
`public in its entirety (Paper 73), and the record includes non-
`
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`IPR2015-01355
`Patent 5,974,116
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`confidential versions of Patent Owner’s Motion to Dismiss the
`Petition for Failure to Name All Real Parties-in-Interest
`(Paper 32), and Patent Owner’s Reply in Support of its Motion
`to Dismiss (Paper 43), thereby maintaining public access to any
`information relevant to this IPR.
`Mot. 6 (citation omitted).
`Because we agree with the statements by the parties, we are persuaded
`by the parties’ contentions that expunging Papers 29, 31, 41, and 42, and
`Exhibits 2010, 2086, 2091, 2093, and 2094, would protect confidential
`information without harming the public’s interest in maintaining a complete
`and understandable file history. The redacted public versions of the
`identified documents will be retained in the record for public access.
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Joint Motion to Expunge Papers 29, 31, 41, and
`42, and Exhibits 2010, 2086, 2091, 2093, and 2094, is granted.
`
`
`
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`IPR2015-01355
`Patent 5,974,116
`
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`
`
`PETITIONER:
`
`Ruben Munoz
`Eric Klein
`Daniel Moffet
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`eklein@akingump.com
`dmoffett@akingump.com
`
`
`FOR PATENT OWNER:
`
`Michael Jaskolski
`Michael J. Curley
`Nikia L. Gray
`Stephen J. Gardner
`QUARLES & BRADY, LLP
`michael.jaskolski@quarles.com
`michael.curley@quarles.com
`nikia.gray@quarles.com
`stephen.gardner@quarles.com
`
`6
`
`
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