Trials@uspto.gov Paper No. 16, IPR2016-01751
`571.272.7822
`
`Paper No. 16, IPR2016-01753
`
` Entered: March 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH TOOL CORPORATION,
`Petitioner,
`
`v.
`
`
`
`
`
`SD3, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01751 (Patent 7,600,455 B2); and
`Case IPR2016-01753 (Patent 7,895,927 B2)
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`DECISON
`Patent Owner’s Motion to Seal and Motion for Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`571.272.7822
`
`Paper No. 16, IPR2016-01753
`
` Entered: March 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROBERT BOSCH TOOL CORPORATION,
`Petitioner,
`
`v.
`
`
`
`
`
`SD3, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01751 (Patent 7,600,455 B2); and
`Case IPR2016-01753 (Patent 7,895,927 B2)
`____________
`
`Before HYUN J. JUNG, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`DECISON
`Patent Owner’s Motion to Seal and Motion for Protective Order
`37 C.F.R. §§ 42.14 and 42.54
`
`
`
`
`
`Case IPR2016-01751
`Case IPR2016-01753
`
`
` SD3, LLC (“Patent Owner”) filed Motions to Seal accompanying
`each Patent Owner Preliminary Response. Paper 10 in IPR2016-01751,
`Paper 10 in IPR2016-01753 (“Motions”). The Motions also seek entry of a
`modified version of the Board’s Default Protective Order, which also
`accompanies each Motion. Id. On March 22, 2017, we denied institution of
`trial in both proceedings. Paper 15 in IPR2016-01751, Paper 15 in
`IPR2016-01753 (“Decisions”).
`The record for an inter partes review shall be made available to the
`public, except as otherwise ordered, and a document filed with a motion to
`seal shall be sealed provisionally until the motion is decided. 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. There is a strong public policy for making
`all information filed in an inter partes review open to the public. Garmin
`Int’l v. Cuozzo Speed Techs., LLC, IPR2012-00001, slip op. at 1–2 (PTAB
`Mar. 14, 2013) (Paper 34). The standard for granting a motion to seal is “for
`good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the
`burden of proof of showing entitlement to the requested relief, and
`establishing that the information sought to be sealed is confidential
`information. 37 C.F.R. § 42.20(c).
`In its Motions, Patent Owner seeks to seal “portions” of two exhibits
`accompanying each Preliminary Response.
`In IPR2016-01751, Patent Owner redacted portions of Exhibit 2003
`and Exhibit 2007. Exhibits 2003 and 2007 were filed as public documents.
`We understand that only the redacted portions of Exhibits 2003 and 2007
`contain confidential information. Motion, 1 (“Some, but not all, portions of
`the exhibits contain Protective Order Material.”). The unredacted version of
`
`
`
`2
`
`
`
`Case IPR2016-01751
`Case IPR2016-01753
`
`Exhibit 2003 is Exhibit 2016.1 The unredacted version of Exhibit 2007 is
`Exhibit 2018.2 Both Exhibits 2016 and 2018 were filed with the PTAB E2E
`designation “Filing Party and Board only.” We thus interpret Patent
`Owner’s request as a request to seal Exhibits 2016 and 2018 – the only two
`documents filed as confidential in IPR2016-01751.
`In IPR2016-01753, Patent Owner redacted portions of Exhibit 2003
`and Exhibit 2007. Exhibits 2003 and 2007 were filed as public documents.
`We understand that only the redacted portions of Exhibits 2003 and 2007
`contain confidential information. The unredacted version of Exhibit 2003 is
`Exhibit 2021.3 The unredacted version of Exhibit 2007 is Exhibit 2023.4
`Both Exhibits 2021 and 2023 were filed with the PTAB E2E designation
`“Filing Party and Board only.” We thus interpret Patent Owner’s request as
`a request to seal Exhibits 2021 and 2023 – the only two documents filed as
`confidential in IPR2016-01753.
`Exhibits 2003 and 2007 are same for both proceedings. Patent Owner
`explains that “Exhibit 2003 is the trial transcript of Dr. Stephen Gass from
`the ITC action,” the principal of Patent Owner and an inventor on the patents
`involved in these proceedings. Motions, 1. Patent Owner asserts:
`Exhibit 2003 contains confidential financial and technical
`information of Patent Owner’s subsidiary SawStop, LLC. The
`
`1 Exhibit 2015 is also a redacted (Public) version of Ex. 2016 in IPR2016-
`01751.
`2 Exhibit 2017 is also a redacted (Public) version of Ex. 2018 in IPR2016-
`01751.
`3 Exhibit 2020 is also a redacted (Public) version of Ex. 2021 in IPR2016-
`01753.
`4 Exhibit 2022 is also a redacted (Public) version of Ex. 2023 in IPR2016-
`01753.
`
`
`
`3
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`Case IPR2016-01751
`Case IPR2016-01753
`
`
`financial information includes SawStop’s sales figures for its
`commercial products. As a privately held limited liability
`company, SawStop does not share this information with the
`public. The technical information describes in detail the
`structure and operation of SawStop’s commercial products,
`including the functionality of source code incorporated into the
`products. SawStop does not share this technical information or
`source code publicly. The proposed redactions are limited to this
`financial and technical information.
`
`Id. at 2–3. Patent Owner further argues that:
`Exhibit 2007 is Order No. 10 from the ITC action. It contains
`confidential financial information of Patent Owner’s subsidiary
`SawStop, LLC. The financial information includes SawStop’s
`cost and sales figures for its commercial products and business
`operations. As a privately held limited liability company,
`SawStop does not share this information with the public. The
`proposed redactions are
`limited
`to SawStop’s financial
`information.
`
`Id. at 2. Patent Owner states that Petitioner does not object to Patent
`Owner’s request to file Exhibits 2016, 2018, 2021, and 2023 under seal. Id.
`at 3.
`
`Upon considering the content of the exhibits and Patent Owner’s
`representations as to the confidentiality of the information, we determine
`that Patent Owner has shown good cause. See 37 C.F.R. § 42.54(a). Patent
`Owner has redacted only select portions of each Exhibit that correspond to
`confidential business information. We therefore agree to seal Exhibits 2016
`and 2018 in IPR2016-01751 and Exhibits 2021 and 2023 in IPR2016-01753.
`Patent Owner proposes a modified protective order, but Petitioner has
`not agreed to the proposed changes. Motions 2–4. As set forth in the Office
`Patent Trial Practice Guide, “[a]bsent such agreement, the default standing
`protective order will be automatically entered.” 77 Fed. Reg. 48,756, 48,769
`
`
`
`4
`
`
`
`Case IPR2016-01751
`Case IPR2016-01753
`
`(Aug. 14, 2012) (Appendix B). Considering the posture of the current
`proceedings, we enter the default standing protective order and deny Patent
`Owner’s request for entry of a modified protective order.
`Confidential information that is subject to a protective order ordinarily
`would become public 45 days after denial of a petition to institute 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 deny a request to
`institute a review. Our Decisions do not cite to any of the protective order
`confidential material, but our Decisions do cite frequently to the redacted
`public versions (Exs. 2003, 2007) in each proceeding. Because we have
`denied institution, and because we do not rely on the confidential exhibits,
`we also treat Patent Owner’s Motions as a request to expunge Exhibits 2016
`and 2018 in IPR2016-01751 and Exhibits 2021 and 2023 in IPR2016-01753
`from the record. See 37 C.F.R. § 42.56 (“After denial of a petition to
`institute a trial or after final judgment in a trial, a party may file a motion to
`expunge confidential information from the record.”). Accordingly, we order
`Exhibits 2016 and 2018 in IPR2016-01751 and Exhibits 2021 and 2023 in
`IPR2016-01753 expunged from each respective record five days after entry
`of this Order.
`Further, because we refer to redacted Exhibits 2003 and 2007 in each
`of our decisions, these exhibits will remain as part of the public record.
`Exhibits 2003 and 2007 allow us to maintain a complete and understandable
`file history for public notice purposes and for any subsequent actions by the
`parties.
`
`
`
`
`
`
`5
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`
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`Case IPR2016-01751
`Case IPR2016-01753
`
`
`ORDER
`
`It is, therefore,
`ORDERED that Patent Owner’s Motions to Seal (Paper 10 in
`IPR2016-01751 and Paper 10 in IPR2016-1753) are granted;
`FURTHER ORDERED that the following Exhibits shall remain under
`seal and maintained as Board and Parties Only: Exhibits 2016 and 2018 in
`IPR2016-01751 and Exhibits 2021 and 2023 in IPR2016-01753; and
`FURTHER ORDERED that Exhibits 2016 and 2018 in IPR2016-
`01751 and Exhibits 2021 and 2023 in IPR2016-01753 will be expunged
`from the record in each proceeding five days after entry of this Order.
`
`6
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`
`
`Case IPR2016-01751
`Case IPR2016-01753
`
`
`
`For PETITIONER:
`
`Patrick Colsher
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`
`
`
`For PATENT OWNER:
`
`Jared W. Newton
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jarednewton@quinnemanuel.com
`
`
`
`
`7
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