Trials@uspto.gov
`571.272.7822
`
` Paper No. 100
`Filed: April 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`_______________
`
`Cases IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B11
`_______________
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Joint Supplemental Motions to Seal
`37 C.F.R. § 42.54
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`571.272.7822
`
` Paper No. 100
`Filed: April 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC CO., LTD.,
`Patent Owner.
`_______________
`
`Cases IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B11
`_______________
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`DECISION
`Joint Supplemental Motions to Seal
`37 C.F.R. § 42.54
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`
`I. INTRODUCTION
`Polygroup Limited (MCO) (“Petitioner”) requested an inter partes
`review of claims 1–6, 8, 10–17, 28, 29, and 32 (“challenged claims”) of U.S.
`Patent No. 8,936,379 B1 (see, e.g., IPR2016-01615, Ex. 1001, “the ’379
`patent”)2 in a series of three Petitions. IPR2016-01615, Paper 2; IPR2016-
`01616, Paper 2; IPR2016-01617, Paper 2. Willis Electric Company, Limited
`(“Patent Owner”) filed a Patent Owner Response in each of the instant
`proceedings. IPR2016-01615, Paper 32; IPR2016-01616, Paper 31;
`IPR2016-01617, Paper 33. Petitioner filed a Reply in each of the instant
`proceedings. IPR2016-01615, Paper 47; IPR2016-01616, Paper 47;
`IPR2016-01617, Paper 50.
`With each of its Replies, Petitioner submitted supporting evidence,
`including deposition transcripts and a declaration designated as confidential.
`Id. 3 Petitioner also filed Motions to Seal the evidence designated as
`confidential. See, e.g., IPR2016-01615, Paper 46 (“Mot.”).4 We denied
`Petitioner’s Motions to Seal without prejudice to Petitioner submitting
`public versions of Exhibits designated as confidential listed in the Appendix
`for each of the proceedings and re-filing in each of the instant proceedings a
`Joint Motion to Seal to address the deficiencies set forth herein by March 20,
`
`
`2 The ’379 Patent also was filed as Exhibit 1001 in IPR2016-01616 and
`IPR2016-01617 and will be referred to as “Exhibit 1001” or “Ex. 1001”
`throughout.
`3 The exhibit numbers of the transcripts and declaration designated as
`confidential are in the Appendix.
`4 Further citations will be to IPR2016-01615, unless otherwise noted.
`Petitioner’s Motions to Seal also are listed in the Appendix.
`
` 2
`
`
`
`
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`2018. See, e.g., IPR2016-01615, Paper 95 (“Dec. on Mot.”). On March 19,
`2018, the parties filed a Joint Supplemental Motion to Seal Exhibits 1105,
`1106, 1119, and 1120. See, e.g., IPR2016-01615, Paper 96 (“Supp. Mot.”).
`On the same day, Petitioner also filed public, redacted versions of Exhibits
`1105, 1106, 1119, and 1120. See, e.g., IPR2016-01615, Exs. 1105, 1106,
`1119, 1120.
`
`II. JURISDICTION
`Our Final Written Decisions were entered February 26, 2018. See,
`e.g., IPR2016-01615, Paper 94. Petitioner filed Notices of Appeal to the
`U.S. Court of Appeals for the Federal Circuit on March 29, 2018. See, e.g.,
`IPR2016-01615, Paper 97. The general rule is that the Board is divested of
`jurisdiction when either party files a notice of appeal to the Federal Circuit.
`In re Allen, 115 F.2d 936, 939 (CCPA 1940) (“We have no doubt that when
`a notice of appeal and reasons of appeal in an appealable case are duly filed
`with the Commissioner of Patents, jurisdiction of the cause is transferred to
`this court. There is nothing left for the commissioner to do other than to
`certify the record and transmit it to this court.”). A limited number of
`exceptions to this general rule have been recognized and are generally
`viewed as purely ministerial functions. See In re Grier, 342 F.2d 120, 123
`(CCPA 1965); see also In re Graves, 69 F.3d 1147, 1149–50 (Fed. Cir.
`1995). As set forth in Grier, an exception must be an “exercise [of] a purely
`ministerial function” that does not make a “new or different determination of
`an issue” and “exercise[s] no judicial function.” Grier, 342 F.2d at 123. In
`the instant proceedings, prior to the filing of the Notice of Appeal, the
`Parties filed Supplemental Motions per our Order (see, e.g., Supp. Mot.).
`Our Decision here does not substantively affect any decision we have made
`
` 3
`
`
`
`
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`that is subject to judicial review; we merely confirm that those papers
`submitted to us during the proceeding are under seal, rather than
`provisionally under seal. See 37 C.F.R. § 42.14 (“A party intending a
`document or thing to be sealed shall file a motion to seal concurrent with the
`filing of the document or thing to be sealed. The document or thing shall be
`provisionally sealed on receipt of the motion and remain so pending the
`outcome of the decision on the motion”). Thus, it is our view that the record
`would be adequately supplemented, via the purely ministerial function of
`entering into the record our Decision on the Parties’ Supplemental Motions
`to Seal.
`
`III. DISCUSSION
`The parties assert “[a]s an initial matter, Exhibit 1104, the deposition
`transcript of Stuart B. Brown, does not contain confidential information and
`the Parties therefore agree that it should be made publicly accessible.”
`Supp. Mot. 1. The parties also assert that “[a] non-confidential description
`of the confidential information in Exhibits 1105, 1106, 1119, and 1120 is
`provided herein and redacted versions will be filed concurrently with this
`Motion.” Id. at 2. On March 19, 2018, redacted versions of Exhibits 1105,
`1106, 1119, and 1120 were filed in IPR2016-01615, IPR2016-01616, and
`IPR2016-01617. In IPR2016-01616, only a redacted version of Exhibit
`1105 was filed, no confidential version has been filed at any time in that
`proceeding.
`We do not rely on Exhibits 1105, 1106, 1119, and 1120 in our Final
`Written Decision. See, e.g., IPR2016-01615, Paper 94. As such, the public
`would have little interest in Exhibits 1105, 1106, 1119, and 1120.
`Additionally upon review of the non-redacted versions of Exhibits 1105,
`
` 4
`
`
`
`
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`1106, 1119, and 1120, as well as the parties’ explanation that disclosure of
`the redacted information could reveal product development strategies,
`business relationships, and other sensitive business and financial
`information, we are persuaded that the proposed redacted versions are
`tailored sufficiently to redact only confidential information. Accordingly,
`the parties’ Joint Supplemental Motion to Seal Exhibits 1105, 1106, 1119,
`and 1120 are granted, with the only exception being that a confidential
`version of Exhibit 1105 was not filed in IPR2016-01616.
`
`
`
` ORDER
`IV.
`In view of the foregoing, it is hereby:
`ORDERED that the parties Joint Supplemental Motions to Seal
`(IPR2016-01615, Paper 96; IPR2016-01616, Paper 98; IPR2016-01617,
`Paper 101) are granted, except with respect to Exhibit 1105 in IPR2016-
`01616 as such confidential version was not filed; and
`FURTHER ORDERED that Exhibit 1104 in IPR2016-01615,
`IPR2016-01616, and IPR2016-01617 shall hereby be re-designated as public
`and not confidential.
`
`
` 5
`
`
`
`
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`
`APPENDIX
`IPR2016-01615
`IPR2016-01616
`
`IPR2016-01617
`
`Paper 96
`
`Paper 98
`
`Paper 101
`
`Paper 95
`
`Paper 97
`
`Paper 100
`
`Paper 46
`Ex. 1104
`
`Paper 46
`Ex. 1104
`
`Paper 51
`Ex. 1104
`
`Ex. 1105
`
`Ex. 1105
`
`Ex. 1105
`
`Ex. 1106
`
`Ex. 1106
`
`Ex. 1106
`
`Ex. 1119
`
`Ex. 1119
`
`Ex. 1119
`
`Ex. 1120
`
`Ex. 1120
`
`Ex. 1120
`
` 6
`
`
`
`Title of Paper
`or Confidential
`Exhibit
`Joint
`Supplemental
`Motion to Seal
`Decision on
`Motion to Seal
`Motion to Seal
`Stuart Brown
`Deposition
`Transcript
`Johnny Chen
`Deposition
`Transcript
`Mike Sugar
`Deposition
`Transcript
`Winston Tan
`Deposition
`Transcript
`Johnny Chen
`Declaration
`
`
`
`
`
`
`
`IPR2016-01615, IPR2016-01616, and IPR2016-01617
`Patent 8,936,379 B1
`
`PETITIONER:
`
`Paul McGowan
`Ryan Schneider
`Christopher Forstner
`TROUTMAN SANDERS LLP
`paul.mcgowan@troutmansanders.com
`ryan.schneider@troutmansanders.com
`chris.forstner@troutmansanders.com
`
`Jason Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jasone-ptab@skgf.com
`
`PATENT OWNER:
`
`Larina Alton
`Douglas Christensen
`Luke Toft
`Jeff E. Schwartz
`Ryan N. Miller
`CHRISTENSEN FONDER P.A
`alton@cfpatlaw.com
`christensen@cfpatlaw.com
`ltoft@Foxrothschild.com
`jeschwartz@Foxrothschild.com
`rmiller@Foxrothschild.com
`
`
` 7
`
`
`
`
`
`
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