Trials@uspto.gov
`571-272-7822
`
`Paper: 50
`Entered: October 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJIFILM CORPORATION
`Petitioner,
`
`v.
`
`SONY CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01268
`Patent 7,029,774 B1
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion to Seal
`35 U.S.C. § 316(a)(1); 37 C.F.R. §§ 42.14, 42.54
`
`

`

`IPR2017-01268
`Patent 7,029,774 B1
`
`
` On February 12, 2018, Patent Owner filed a Motion to Seal Exhibits
`2010, 2029, 2044, 2049, and the Patent Owner Response. Paper 20
`(“Motion” or “Mot.”). Petitioner did not file an opposition. For the reasons
`set forth below, the Motion is denied, with further instructions provided.
`Request for Entry of Protective Order
`Our rules provide for entry of a protective order when necessary to
`protect confidential information filed in a proceeding. See 37 C.F.R.
`§§ 42.14, 42.54. As explained in the next section, the Motion does not
`demonstrate “good cause” for sealing any of the cited exhibits or the Patent
`Owner Response. Accordingly, we deny without prejudice the request for
`entry of a protective order. The documents sought to be sealed in the
`Motion, however, shall continue to be provisionally sealed until such time as
`the Board resolves a second motion to seal, pursuant to the guidance in this
`Order. See 37 C.F.R. § 42.14 (discussing the Board’s authority to
`provisionally seal information).
`Motion to Seal
`Patent Owner moves to seal Exhibits 2010, 2029, 2044, and 2049, and
`the portion of the Patent Owner Response that “quotes certain of this
`information” “as a courtesy to Petitioner.” Mot. 3–4; see also id. at 2
`(stating that Patent Owner requests that the documents be sealed “on behalf
`of Petitioner”). In support of its request, Patent Owner cites to information
`received from Petitioner describing, in general terms, the alleged
`confidentiality of the exhibits. Id. (citing Ex. 2042, 1). Patent Owner
`submitted redacted, public copies of Exhibits 2029, 2044, and 2049, and the
`Patent Owner Response, but was “unsure what specific information” in
`
`
`
`
`2
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`

`

`IPR2017-01268
`Patent 7,029,774 B1
`
`Exhibit 2010 Petitioner believes reveals its confidential information. Id.
`at 4.
`
`In an inter partes review, the moving party bears the burden of
`showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
`A party moving to seal must show “good cause” for the relief requested. Id.
`§ 42.54(a). In order to establish “good cause” for sealing, a party
`must demonstrate adequately that (1) the information sought to
`be sealed is truly confidential, (2) a concrete harm would result
`upon public disclosures, (3) there exists a genuine need to rely in
`the trial on the specific information sought to be sealed, and (4)
`on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
`Argentum Pharmaceuticals LLC v. Alcon Research, Ltd., Case IPR2017-
`01053, slip op. at 4 (PTAB Jan. 19, 2018) (Paper 27) (citations omitted). A
`motion to seal will not be granted if it is based only on broad or generic
`contentions of confidentiality.1 Moreover, information subject to a
`protective order will become public if identified in a final written decision in
`this proceeding, and a motion to expunge information will not necessarily
`prevail over the public interest in maintaining a complete and
`
`
`1 To the extent further guidance is necessary, we make the following
`observations. Few, if any, exhibits, should ever be confidential in their
`entirety, without good cause to show that all of the information contained
`therein is truly sensitive. See 37 C.F.R. § 42.54(a). For example, deposition
`transcripts, declarations, and papers containing a party’s arguments will
`generally contain substantial non-confidential portions. In all cases, the
`motion to seal must set forth the reasons why the information redacted from
`the non-confidential version is confidential and should not be made publicly
`available. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771
`(Aug. 14, 2012) (emphasis added).
`
`
`
`3
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`IPR2017-01268
`Patent 7,029,774 B1
`
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,761.
`The Scheduling Order in this proceeding indicates that it is the
`responsibility of the party whose confidential information is at issue, not
`necessarily the proffering party, to file the motion to seal. Paper 12, 3. The
`information Patent Owner moves to seal is confidential to Petitioner.
`Petitioner, therefore, is responsible for moving to seal the information that is
`the subject of Patent Owner’s Motion, and has the burden of proof to
`establish that it is entitled to the requested relief, i.e., sealing of the
`documents. See 37 C.F.R. § 42.20(c). The assertions of the confidential
`nature of these exhibits set forth in the Motion (Mot. 3–4 (citing Ex. 2042))
`are insufficient to establish “good cause” for sealing, namely, that the
`information is “truly confidential,” a “concrete harm would result upon
`public disclosure,” there is a genuine need to rely on the information, and
`maintaining confidentiality outweighs the public interest in having an open
`record. Argentum, slip op. at 3–4. Accordingly, we deny Patent Owner’s
`Motion to Seal.
`Authorizing Petitioner to File a Motion to Seal
`“The Board has limited resources” to deal with repeated motions to
`seal. See Argentum, slip op. at 7 (citing Corning Optical Commc’ns RF,
`LLC, v. PPC Broadband, Inc., Case IPR2014-00440, slip op. at 2 (PTAB
`April 14, 2015) (Paper 47) (“[T]here is not an unlimited number of tries to
`get the motion granted.”)). Because it is Petitioner’s burden to establish
`“good cause” for sealing documents containing its own confidential
`information, we authorize Petitioner to file a motion to seal (“Petitioner’s
`
`
`
`
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`

`

`IPR2017-01268
`Patent 7,029,774 B1
`
`Motion to Seal”) directed to the documents cited in the instant Motion,
`accompanied by a request for entry of a protective order.
`Petitioner’s Motion to Seal must be filed within ten business days of
`the entry of this Order. As discussed herein, Petitioner’s Motion to Seal
`must more thoroughly address why the “good cause” standard is met. In
`addition, Petitioner’s Motion to Seal must include a certification that
`Petitioner has conferred with Patent Owner pursuant to 37 C.F.R. § 42.54(a).
`Within five business days of the filing of Petitioner’s Motion to Seal, Patent
`Owner may file an opposition addressing any issues raised therein.
`Any document referenced in this Motion that is not addressed in
`Petitioner’s Motion to Seal will be designated as public.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Seal (Paper 20) is denied;
`FURTHER ORDERED that, within ten (10) business days of the
`entry of this Order, Petitioner is authorized to file Petitioner’s Motion to
`Seal, subject to the conditions set forth in this Order, for the purpose of
`requesting to seal, in whole or in part, the Patent Owner Response and
`Exhibits 2010, 2029, 2044, and 2049;
`FURTHER ORDERED that, within five (5) business days of the filing
`of Petitioner’s Motion to Seal, Patent Owner is authorized to file an
`opposition to Petitioner’s Motion to Seal; and
`FURTHER ORDERED that no further briefing is authorized at this
`
`time.
`
`
`
`
`
`
`
`5
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`

`

`IPR2017-01268
`Patent 7,029,774 B1
`
`PETITIONER:
`
`Eliot D. Williams
`Robert C. Scheinfeld
`H. Christopher Han
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`chris.han@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`Zhuanjia Gu
`TURNER BOYD
`gu@turnerboyd.com
`
`
`
`
`
`
`6
`
`