IPR2017-01650
`Patent No. 8,419,889
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner
`____________
`
`Case IPR2017-01650
`Patent 8,419,889
`____________
`
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`PETITIONER’S UNOPPOSED MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION UNDER SEAL
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`
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`Patent No. 8,419,889
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner
`____________
`
`Case IPR2017-01650
`Patent 8,419,889
`____________
`
`
`
`
`
`
`
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`
`
`PETITIONER’S UNOPPOSED MOTION TO EXPUNGE
`CONFIDENTIAL INFORMATION UNDER SEAL
`
`
`
`
`
`IPR2017-01650
`Patent No. 8,419,889
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`
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`Pursuant to 37 C.F.R. § 42.56, and authorization received via email from the
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`Patent Trial and Appeal Board (the “Board”) on April 1, 2020, Petitioner
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`Multi Packaging Solutions, Inc. (“MPS”) hereby moves for an order expunging
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`protected documents filed under seal in this proceeding, namely the unredacted
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`Patent Owner’s Response (Paper 18)1 and Exhibits 2014-2018 and 2020. These
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`documents all disclose and discuss information that is confidential to MPS. Patent
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`Owner CPI Card Group – Minnesota, Inc. does not oppose this Motion.
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`The Board granted the Petitioner’s Motion to Seal Patent Owner’s Response,
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`Exhibits 2014-2018 and 2020, such that they are treated as business confidential
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`information and kept separate from the files of this proceeding (Paper 25). The
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`Board further granted the Petitioner’s Unopposed Motion to Maintain Confidential
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`Information under Seal until 45 days after the conclusion of all appeals. (Paper
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`41). The appeal to the Federal Circuit has concluded in a Rule 36 affirmance on
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`March 16, 2020. Accordingly, Petitioner hereby moves to expunge the
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`confidential information currently under seal.
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`If the Board is not inclined to grant this Motion, MPS respectfully requests a
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`conference call with the Board to discuss the issues raised in this Motion before
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`any information becomes irreversibly public.
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`
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`1 The redacted Patent Owner’s Response (Paper 19) can remain in the record.
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`-2-
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`IPR2017-01650
`Patent No. 8,419,889
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`I. BACKGROUND
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`Petitioner filed a motion to seal (Paper 23) certain portions of Patent
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`Owner’s Response and Exhibits 2014-2018 and 2020 because those documents
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`contain highly confidential information belonging to a third party and to MPS, and
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`the parties stipulated to the entry of the Board’s default protective order. Finding
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`good cause, the Board granted Petitioner’s motion to seal with respect to Patent
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`Owner’s Response and Exhibits 2014-2018 and 2020, and entered the Board’s
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`default protective order to govern the exchange and disclosure of information
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`during the trial in this proceeding. (Paper 25).
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`After the Board issued the Final Written Decision, Petitioner filed an
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`Unopposed Motion to Maintain Confidential Information under Seal. (Paper 37).
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`The motion sought an order to maintain documents with confidential information
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`under seal, and extend the deadline to file a motion to expunge such documents to
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`45 days after conclusion of all appeals. Finding good cause, the Board granted
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`Petitioner’s request to extend the deadline to file a motion to expunge confidential
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`information to 45 days after the conclusion of any appeals, including the appeal
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`filed by Patent Owner on March 1, 2019 (Paper 41).
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`On March 16, 2020, the Federal Circuit entered a Rule 36 affirmance
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`concluding the appeal filed by Patent Owner.
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`-3-
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`IPR2017-01650
`Patent No. 8,419,889
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`II. CONFIDENTIAL DOCUMENTS SHOULD BE EXPUNGED.
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`Petitioner requests that the unredacted Patent Owner’s Response (Paper 18)
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`and Exhibits 2014-2018 and 2020 be expunged from the record.
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`“A party seeking to maintain the confidentiality of information, however,
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`may file a motion to expunge the information from the record prior to the
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`information becoming public.” Trial Practice Guide, 77 Fed. Reg. at 48,761. The
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`moving party has the burden to establish that it is entitled to the requested relief. 37
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`C.F.R. § 42.20(c).
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`“Confidential information” is protected from disclosure by statute. 35
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`U.S.C. § 316(a)(7). “Confidential information” is defined as “trade secret or other
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`confidential research, development, or commercial information.” 37 C.F.R. § 42.2.
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`The standard for granting a motion to seal confidential information is “for good
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`cause.” 37 C.F.R. § 42.54. For example, where the details of the confidential
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`business or commercial information are unimportant to the merits of the case and
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`the public’s interest in having access to such information is minimal, such
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`information may be sealed for good cause. See 37 C.F.R. § 42.54(a)(7); Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760. Where the Final Decision does
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`not rely (or only minimally relies) on the confidential information, the Board has
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`granted motions to expunge, finding that there is limited public interest in the
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`confidential information and the record is minimally affected. See e.g., Unverferth
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`
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`-4-
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`IPR2017-01650
`Patent No. 8,419,889
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`Mfg. Co. v. J&M Mfg. Co., IPR2015-00758, Paper 29 at 2 (P.T.A.B. Sept. 30,
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`2015) (granting the motion because the final decision did not rely upon the exhibit
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`5 at issue and “the file and decision remain understandable in the absence of” the
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`exhibit).
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`Confidential information will ordinarily become public after the final
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`judgment in an IPR unless a Board grants a motion to expunge. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). In the current
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`proceeding, the confidential information in the record has been maintained under
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`seal throughout the pendency of this proceeding. The Final Written Decision did
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`not disclose the substance of the confidential information. (Paper 36, 33-35; Paper
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`41, 2). After the Final Written Decision, the Board found good cause to maintain
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`the confidential information under seal, and extended the deadline to file a motion
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`to expunge 45 days after the conclusion of any appeals. (Paper 41). The Federal
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`Circuit appeal filed by the Patent Owner was concluded on March 16, 2020; and
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`therefore, Petitioner’s Motion is timely filed. The details of the confidential
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`information are unimportant to the merits of the case and the public’s interest in
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`having access to such information is minimal, such information should be
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`expunged for good cause.
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`Accordingly, Petitioner respectfully submit that good cause exists here and
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`thus requests that the Board expunge the unredacted Patent Owner’s Response
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`
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`-5-
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`(Paper 18) and Exhibits 2014-2018 and 2020 due to the confidential nature of the
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`IPR2017-01650
`Patent No. 8,419,889
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`information in those documents.
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`
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`III. CONCLUSION
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`For the reasons set forth above in detail, Petitioner respectfully requests that
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`its Motion to Expunge Confidential Information Under Seal be granted.
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`Dated: April 17, 2020
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` Respectfully submitted,
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` ROPES & GRAY LLP
`
`By: /Mark D. Rowland/
`Mark D. Rowland
`Reg. No. 32,077
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303-2284
`T: 650-617-4016
`F: 617-235-9492
`Mark.Rowland@ropesgray.com
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`Attorneys For Petitioner, Multi
`Packaging Solutions, Inc.
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`-6-
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`CERTIFICATE OF SERVICE
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`IPR2017-01650
`Patent No. 8,419,889
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`
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`The undersigned certifies that the foregoing PETITIONER’S UNOPPOSED
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`MOTION TO EXPUNGE CONFIDENTIAL INFORMATION UNDER SEAL
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`was served by filing this document through PTAB E2E as well as providing a
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`courtesy copy via e-mail to the following attorneys of record for the Patent Owner
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`listed below:
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`Lead Counsel:
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`Michael J. Scheer (Reg. No. 34,425)
`The Law Office of Michael J. Scheer
`5531 Murietta Avenue
`Sherman Oaks, CA 91401
`mscheer@michaeljscheer.com
`
`Back-up Counsel: Scott M. Flaherty (Reg. No. 64,290)
`Briggs and Morgan, P.A.
`2200 IDS Center 80 South Eighth Street
`Minneapolis, MN 55402
`sflaherty@briggs.com
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`Pejman Sharifi (Reg. No. 45,097)
`Winston & Strawn LLP
`200 Park Ave.
`New York, NY 10166
`PSharifi@winston.com
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`Louis L. Campbell (Reg. No. 59,963)
`Winston & Strawn LLP
`101 California St.
`San Francisco, CA 94111
`LLcampbell@winston.com
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`Dated: April 17, 2020
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`
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`By: /Crena Pacheco/
`Name: Crena Pacheco
`ROPES & GRAY LLP
`
`
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