Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 25
`Entered: May 7, 2018
`
`
`
`
`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 B2
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Seal and
`Granting Joint Request for Entry of Default Protective Order
`35 U.S.C. § 316; 37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 25
`Entered: May 7, 2018
`
`
`
`
`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 B2
`____________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Seal and
`Granting Joint Request for Entry of Default Protective Order
`35 U.S.C. § 316; 37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`INTRODUCTION
`This Order addresses Petitioner’s Motion to Seal (Paper 23, “Mot.”) filed on
`April 17, 2018. The Motion to Seal is directed to allegedly “confidential
`information belonging to a third party and to [Petitioner]” and is accompanied by
`“a joint stipulation for entry of the Board’s default protective order.” Mot. 1; see
`Paper 21 (joint stipulation); see also Ex. 1052 (copy of protective order).
`DISCUSSION
`Petitioner seeks to seal portions of Patent Owner’s Response (Paper 19) and
`the entirety of Exhibits 2014–2018 and 2020. Mot. 1, 2. Petitioner alleges that the
`information sought to be sealed pertains to “e-mail communications that contain
`discussions of a third party’s request to [Petitioner] to supply card packages” as
`well as “portions of a deposition transcript from a former” representative of
`Petitioner, which “discusses those communications.” Id. at 2 (citing Exs. 2014–
`2018, 2020). Petitioner states that “Patent Owner does not oppose sealing of this
`information.” Id. at 3.
`We apply the “good cause” standard when assessing a motion to seal, which
`reflects the strong public policy for making all information in our administrative
`proceedings open to the public. 37 C.F.R. § 42.54. We organize our discussion
`into two parts. First, we consider whether Petitioner establishes good cause for
`sealing the information at hand. Second, we address whether the redactions
`applied to Paper 19 and Exhibits 2014–2018 and 2020 comply with our prior
`instructions in this proceeding, regarding the redaction of confidential information.
`See Paper 12, 4 (scheduling order, setting forth instructions for strictly limiting
`redactions to confidential information).
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`A. Good Cause For Sealing the Information at Hand
`Petitioner recognizes that a party, seeking to seal information, must establish
`that (1) the information sought to be sealed is truly confidential; (2) a concrete
`harm would result upon public disclosure; (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. Mot. 1 (citing Argentum Pharms. LLC v. Alcon Research,
`LTD., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (“Argentum Order”)).
`Petitioner shows sufficiently that the information sought to be sealed is truly
`confidential. Specifically, we accept counsel’s representation that the information
`previously was designated as “highly confidential in” related “district court
`litigation.” Mot. 3. On that point, we recognize that, “in district court, a party
`routinely will determine (by marking or stamping a document ‘confidential’)
`whether a document is produced under the terms of a district court protective
`order”; however, in our forum “the default rule is that all papers” will be “open and
`available for access by the public.” Argentum Order 3 (citations omitted). As a
`consequence, the circumstance of sealing information in a district court action,
`standing alone, is not always adequate to establish that the information should be
`sealed in our forum. In this case, however, that circumstance persuades us that the
`information at issue has not been disclosed publicly, but rather, has been
`maintained in a manner to preserve confidentiality. Mot. 2.
`Petitioner alleges additional facts showing that public disclosure of the
`information would result in a concrete harm to Petitioner and, possibly, to a third
`party customer of Petitioner. On that point, Petitioner avers that the information
`pertains to “how the third party conducts its business” and reveals “specifications
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`for package graphics supplied by the third-party customer.” Id. Petitioner also
`asserts that “[p]ublic disclosure of these documents would cause concrete harm to
`[Petitioner] and the third party” because the information disclosed therein pertains
`to Petitioner’s “sales to the third party, and the third party’s procedures for
`interacting with [Petitioner] as a supplier.” Id. Those assertions are consistent
`with our review of the redacted portions of Paper 19 and Exhibits 2014–2018
`and 2020. We further rely on counsel’s representation that “[t]he relevant third
`party informed [Petitioner] that it considers” the information “confidential and
`granted permission for their production in this proceeding subject to a protective
`order.” Mot. 3.
`Petitioner “does not believe that there is a genuine need to rely on” the
`information sought to be sealed “in this proceeding.” Id. Our review of the
`redacted portion of Patent Owner’s Response, however, persuades us that the
`information is necessary to Patent Owner’s assertions pertaining to secondary
`considerations of non-obviousness; specifically, alleged evidence of copying.
`Paper 19, 66–73. Accordingly, on this record, we find that there exists “a genuine
`need to rely in the trial on the specific information sought to be sealed.” Mot. 1.
`Accordingly, based on the information presented, we determine that
`Petitioner shows an interest in maintaining confidentiality that outweighs the
`strong public interest in having an open record during the course of this trial. In
`view of the parties’ stipulation (Paper 21), the Board’s default protective order
`shall govern the exchange and disclosure of confidential information during the
`trial. See Ex. 1052 (copy of protective order). Any other paper or exhibit filed
`under seal in this proceeding shall be accompanied by a motion to seal in
`accordance with 37 C.F.R. § 42.14.
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`B. Compliance with Instructions Pertaining to Redactions
`We next turn to whether the redactions applied to Paper 19 and
`Exhibits 2014–2018 and 2020 comply with our prior instructions regarding
`redactions. Paper 12, 4. We previously instructed the parties that “[i]nformation
`subject to a protective order will become public if identified in a final written
`decision in this proceeding. A motion to expunge the information will not prevail
`necessarily over the public interest in maintaining a complete and understandable
`file history.” Paper 12, 4; see Rules of Practice, 77 Fed. Reg. No. 157, Part V at
`Section I.E.6. (Aug. 14, 2012) (“There is an expectation that information will be
`made public where the existence of the information . . . is identified in a final
`written decision following a trial.”). In other words, well before the filing of
`Paper 19 and Exhibits 2014–2018 and 2020, the Board placed both parties on
`notice that the introduction of confidential information in this proceeding would
`present a risk of possible disclosure in a final written decision. We also previously
`instructed the parties that, when filing confidential information in this proceeding,
`“[r]edactions should be limited strictly to isolated passages consisting entirely of
`confidential information. The thrust of the underlying argument or evidence must
`be clearly discernable from the redacted version.” Paper 12, 4.
`Petitioner argues that “the exhibits at issue consist almost entirely of
`confidential information, such that redaction would not be practical” and, on that
`basis, asserts that Exhibits 2014–2018 and 2020 “require filing entirely under
`seal.” Mot. 2. We are not persuaded that the entirety of Exhibit 2014, which is
`a fifty-page partial deposition transcript, is truly confidential. See generally Mot.
`Our review of Exhibit 2014 persuades us that at least some of the information
`contained therein is not confidential. Two non-exclusive examples are the
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`disclosures of the appearances of counsel and the identity of the court reporter.
`See, e.g., Ex. 2014, 2. Petitioner is directed to file a public version of Exhibit 2014
`within five (5) business days of this Order that complies with our instructions
`regarding redactions. Paper 12, 4. Petitioner is further directed to review
`Exhibits 2015–2018 and 2020 to ensure compliance with our prior instructions
`(Paper 12, 4) and file, as appropriate upon review, public, redacted versions of
`Exhibits 2015–2018 and 2020 within five (5) business days of this Order.
`In addition, the redactions in the public version of Patent Owner’s Response
`(Paper 19) do not comply with our prior instructions pertaining to redactions.
`Paper 12, 4. We direct the parties to work together to facilitate the filing of a
`revised public version of Paper 19 in which the redactions are “limited strictly to
`isolated passages consisting entirely of confidential information” and wherein, to
`the extent possible, “[t]he thrust of the underlying argument or evidence” is
`“clearly discernable from the redacted version.” Paper 12, 4; see Paper 19, 66–73
`(public version) (redacting nearly all content). Patent Owner is directed to file a
`revised public version of Paper 19 within five (5) business days of this Order that
`complies with those instructions.
`
`CONCLUSION
`We grant the Motion to Seal (Paper 23) with respect to Paper 19 and
`Exhibits 2014–2018 and 2020 subject to the conditions set forth in this Order. In
`view of the parties’ stipulation (Paper 21), the Board’s default protective order
`shall govern the exchange and disclosure of information during the trial in this
`proceeding. See Ex. 1052 (copy of protective order).
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`It is
`ORDERED that Petitioner’s Motion to Seal (Paper 23) is granted with
`respect to Paper 19 and Exhibits 2014–2018 and 2020;
`FURTHER ORDERED that Petitioner shall file a redacted version of
`Exhibit 2014 within five (5) business days of this Order that complies with our
`instructions regarding redactions (Paper 12, 4);
`FURTHER ORDERED that Petitioner shall review Exhibits 2015–2018
`and 2020 to ensure compliance with our prior instructions pertaining to redactions
`(Paper 12, 4) and file, if appropriate upon review, public, redacted versions of
`those exhibits within five (5) business days of this Order;
`FURTHER ORDERED that Patent Owner shall file a revised public version
`of Paper 19 within five (5) business days of this Order that complies with our
`instructions regarding redactions (Paper 12, 4);
`FURTHER ORDERED that the Board’s default protective order (Ex. 1052)
`shall govern the exchange and disclosure of confidential information in this
`proceeding; and
`FURTHER ORDERED that any other paper or exhibit filed under seal in
`this proceeding shall be accompanied by a motion to seal in accordance with 37
`C.F.R. § 42.14.
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`Case IPR2017-01650
`Patent 8,419,889 B2
`
`PETITIONER:
`
`Mark D. Rowland
`Gabrielle E. Higgins
`Ropes & Gray LLP
`mark.rowland@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`PATENT OWNER:
`
`Michael J. Scheer
`The Law Office of Michael J. Scheer
`mscheer@michaeljscheer.com
`
`Pejman Sharifi
`Louis L. Campbell
`Winston & Strawn LLP
`psharifi@winston.com
`llcampbell@winston.com
`
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