Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 146
`Date: May 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION,
`Petitioner,
`v.
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`____________
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751 (Patent 7,356,482 B2)
`IPR2015-01752 (Patent 7,356,482 B2)
`____________
`
`
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, Deputy Chief Administrative Patent Judge,
`and SCOTT C. WEIDENFELLER, Vice Chief Administrative Patent Judge.
`
`WEIDENFELLER, Vice Chief Administrative Patent Judge
`
`
`
`ORDER
`Denying Petitioner’s Motion to Expunge
`37 C.F.R. § 42.561
`
`
`
`1 This decision pertains to Cases IPR2015-01750, IPR2015-01751, and IPR2015-
`01752, as Petitioner’s Motions to Expunge are substantively the same in each case.
`Citations are to the paper numbers in Case IPR2015-01750.
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`
`I.
`INTRODUCTION
`On March 11, 2021, Petitioner filed a Motion to Expunge certain documents
`under seal in each of the captioned cases. IPR2015-01750, Paper 143, 14–17
`(“Motion” or “Mot.”); see also IPR2015-01751, Paper 143; IPR2015-01752, Paper
`141.2 For any requested document that we deny expungement, Petitioner
`alternatively requests that the sealed document be kept confidential and separate
`from the files of the involved patent. Mot. 1. On March 19, 2021, Patent Owner
`filed an opposition to Petitioner’s motion to expunge the confidential information.
`Paper 144. Patent Owner requests that we deny Petitioner’s request to expunge
`and instead maintain the confidential information in the sealed record. Id. at 1.
`For the following reasons, the Motion to expunge in each case is denied.
`II. ANALYSIS
`We previously granted Petitioner’s motions to seal the documents that
`Petitioner now requests to be expunged. Paper 53; Paper 122. We also sua sponte
`sealed our Final Decision on Remand Terminating Institution, also requested to be
`expunged. Paper 125.
`The Consolidated Trial Practice Guide states the following regarding the
`treatment of confidential information:
`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 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
`
`2 We cite to the record in IPR2015-01750, unless otherwise noted.
`2
`
`
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`
`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 21–22 (Nov. 2019) (“TPG”), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated.
`Petitioner divides its request into (1) documents with redacted versions
`available; and (2) documents sealed in their entirety without redacted versions
`available. Petitioner asserts that all of the identified documents include
`“confidential, sensitive commercial information, including RPX’s IPR litigation
`strategy, confidential agreements with a third party, communications referring to
`terms of those confidential agreements, sensitive and improper disclosures of the
`confidential information, confidential business records, as well as trade secrets.”
`Mot. 7–8. With respect to documents with redacted versions available, Petitioner
`further asserts that “[t]he public interest in maintaining a complete and
`understandable file history for public notice purposes is adequately served by
`retaining only the redacted versions of the confidential documents in the record.”
`Id. at 8.
`With respect to the documents sealed in their entirety without redacted
`versions available, Petitioner asserts that “many of the documents were produced
`voluntarily by Petitioner. If confidential information produced voluntarily under a
`protective order were to be disclosed publicly, the producing party would be
`discouraged from volunteering discovery of confidential information in
`proceedings before the Board.” Id. at 9. Further, Petitioner asserts that 25 of the
`documents were not cited in any of the Board’s decisions and therefore
`“Petitioner’s interest in maintaining their confidentiality through expungement far
`outweighs the (nonexistent) public interest in disclosure of these documents.” Id.
`
`
`
`3
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`
`The confidential versions of the identified documents provide the basis for
`certain findings and conclusions in decisions by the Board, including the Final
`Decision on Remand (Paper 128), which is now designated precedential.
`Therefore, we determine that it would not be appropriate to expunge the
`confidential versions of those documents from the record. Rather, we determine
`that it is appropriate to retain the confidential versions of the identified documents
`under seal in the record, as requested by Petitioner in the alternative. Mot. 1, 12–
`13. Retaining all documents under seal will ensure a complete record while
`adequately addressing Petitioner's interest in maintaining their confidentiality. The
`redacted public versions of the identified documents will be retained in the record
`for public access.
`
`I. ORDER
`
`It is hereby
`ORDERED that Petitioner’s Motion to Expunge in each of the captioned
`cases is denied; and
`FURTHER ORDERED that in IPR2015-01750, the confidential versions of
`Papers 21, 28, 34, 38–41, 51, 98, 100, 101, 112, 125 and Exs. 1019–1025, 1029,
`1031–1035, 1037–1043, 1046, 1073–1081, 1090–1092, 1094–1096, 2018–2019,
`2022, 2025–2027, and 2030 will remain under seal in the record.
`FURTHER ORDERED that in IPR2015-01751, the confidential versions of
`Papers 20, 28, 34, 38–41, 51, 100, 102, 103, 112, 125, and Exs. 1019–1025, 1029,
`1031–1035, 1037–1043, 1046, 1073–1081, 1090–1092, 1094–1096, 2018, 2019,
`2022, 2025–2027, 2030 will remain under seal in the record.
`FURTHER ORDERED that in IPR2015-01752, the confidential versions of
`Papers 20, 28, 33, 38–41, 51, 98, 100, 101, 110, 123 and Exs. 1119–1125, 1129,
`
`
`
`4
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`1131–1135, 1137–1143, 1146, 1173–1181, 1190–1192, 1194–1196, 2018, 2019,
`2022, 2025–2027, 2030 will remain under seal in the record.
`
`
`
`
`
`
`
`
`5
`
`

`

`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`
`
`For PETITIONER:
`
`Richard Giunta
`Randy Pritzker
`Elisabeth Hunt
`Michael Rader
`WOLF, GREENFIELD & SACKS, P.C.
`rgiunta-ptab@wolfgreenfield.com
`rpritzker-ptab@wolfgreenfield.com
`ehunt-ptab@wolfgreenfield.com
`mrader-ptab@wolfgreenfield.com
`
`For PATENT OWNER:
`
`Steve Sereboff
`Jonathan Pearce
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`jpearce@socalip.com
`
`Andrea Pacelli
`Robert Whitman
`KING & WOOD MALLESONS
`andrea.pacelli@us.kwm.com
`robert.whitman@us.kwm.com
`
`
`
`
`
`6
`
`