Trials@uspto.gov
`571-272-7822
`
`Paper 51
` Entered: December 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioner,
`v.
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Cases1
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14
`
`
`
`
`
`
`
`1 This Order addresses issues that are substantially similar in the cases. We
`exercise our discretion to issue one order to be filed in each case.
`
`
`571-272-7822
`
`Paper 51
` Entered: December 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioner,
`v.
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Cases1
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Patent Owner’s Motions to Seal
`37 C.F.R. §§ 42.14
`
`
`
`
`
`
`
`1 This Order addresses issues that are substantially similar in the cases. We
`exercise our discretion to issue one order to be filed in each case.
`
`
`
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`
`
`A. Patent Owner’s Motions to Seal
`On March 10, 2017, Patent Owner filed a (corrected) non-public
`
`version of Patent Owner’s Response in IPR2016-01061 (Paper 36) and
`IPR2016-01064 (Paper 34), as well as non-public versions of a supporting
`declaration of counsel (Exhibit 2012). Similarly, on March 20, 2017, Patent
`Owner filed a non-public version of Patent Owner’s Response in IPR2016-
`01278 (Paper 30) as well as a non-public version of a supporting declaration
`of counsel (Exhibit 2011). Patent Owner also filed, pursuant to 37 C.F.R.
`§ 42.14, a Motion to Seal in each proceeding requesting sealing of the non-
`public version of Patent Owner’s Response as well as the non-public version
`of the supporting declaration of counsel. IPR2016-01061 (Paper 31);
`IPR2016-01064 (Paper 29); IPR2016-01278 (Paper 31). In the first two
`proceedings, Patent Owner stated “Petitioner has indicated that it does not
`believe it will oppose but will take a final position after reviewing this
`motion and Patent Owner’s response papers as filed.” IPR2016-01061,
`Paper 31 at 1; IPR2016-01064, Paper 29 at 1. In the last proceeding, Patent
`Owner stated “Petitioner has indicated it does not expect to oppose this
`motion.” IPR2016-01278, Paper 31 at 1. Petitioner has not submitted an
`opposition to Petitioner’s motions to seal these papers in any of these
`proceedings.
`
`B. Analysis
`There is a strong public policy in favor of making information filed in
`
`an inter partes review open to the public, especially because these
`proceedings determine the patentability of claims in issued patents and,
`therefore, affect the rights of the public. Under 35 U.S.C. § 326(a)(1) and 37
`
`
`
`
`2
`
`
`
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`
`C.F.R. § 42.14, the default rule is that all papers filed in an inter partes
`review are open and available for access by the public; a party, however,
`may file a concurrent motion to seal, and the information at issue is sealed
`pending the outcome of the motion. It is, however, only “confidential
`information” that is protected from disclosure. 35 U.S.C. § 316(a)(7); see
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14,
`2012).
`
`The standard for granting a motion to seal is “for good cause.” 37
`C.F.R. § 42.54. The party moving to seal bears the burden of proof of
`showing entitlement to the requested relief, and establishing that information
`sought to be sealed is confidential information. 37 C.F.R. § 42.20(c).
`
`Patent Owner represents that “Patent Owner’s Response to Petition
`and the Whitehurst Declaration contain Patent Owner’s confidential
`licensing information, including the confidential dollar value of Patent
`Owner’s licenses. This information is not publicly known and should
`remain confidential.” Patent Owner’s Mot. to Seal 1.
`
`We agree that the non-public version of Patent Owner’s Response and
`the non-public version of the supporting declaration of counsel, on their
`face, appear to contain confidential business information in terms of the
`dollar value of license agreements. We, therefore, are persuaded that Patent
`Owner shows good cause for sealing, in each proceeding, the non-public
`version of Patent Owner’s Response and the non-public version of the
`supporting declaration of counsel. Accordingly, we grant Patent Owner’s
`Motions to Seal in each proceeding.
`
`
`
`
`3
`
`
`
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`
`The parties are advised that, according to the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012) (“Trial Practice
`Guide”):
`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.
`
`
`IT IS:
`
`ORDERED that Patent Owner’s Motions to Seal are granted. The
`non-public versions of Patent Owner’s Response shall be sealed in each case
`(IPR2016-01061 (Paper 36); IPR2016-01064 (Paper 34); IPR2016-01278
`(Paper 30)), along with the non-public versions of the supporting declaration
`of counsel (Exhibit 2011 in IPR2016-01278 and Exhibit 2012 in IPR2016-
`01061 and IPR2016-01064).
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01061 (Patent 8,223,012)
`IPR2016-01064 (Patent 9,003,499)
`IPR2016-01278 (Patent 9,071,931)
`
`PETITIONER:
`
`
`Vivek Ganti
`Steven G. Hill
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`sgh@hkw-law.com
`perdiemIPR@hkw-law.com
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`PERDIEM-IPR@quinnemanuel.com
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
`
`
`
`5
`
`
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