Trials@uspto.gov
`571-272-7822
`
`Paper 43
`Entered: May 19, 2020
`
`
`
`
`
`
`
`
`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.
`
`
`
`DECISION
`Granting Petitioner’s Unopposed Motion to Expunge
`37 C.F.R. §§ 42.14, 42.56
`
`
`
`
`
`
`571-272-7822
`
`Paper 43
`Entered: May 19, 2020
`
`
`
`
`
`
`
`
`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.
`
`
`
`DECISION
`Granting Petitioner’s Unopposed Motion to Expunge
`37 C.F.R. §§ 42.14, 42.56
`
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`On April 17, 2020, pursuant to 37 C.F.R. § 42.56, Petitioner filed a motion
`to expunge the unredacted version of Patent Owner’s Response (Paper 18),
`Exhibits 2014–2018, and Exhibit 2020. Paper 42, 2 (“Motion”). Sealed
`information ordinarily becomes publicly available after final judgment; however,
`under Rule 42.56, a party wishing to preserve its confidentiality may file a motion
`to expunge the information. Petitioner attests that Patent Owner does not oppose
`the Motion. Id. at 2. We grant the unopposed Motion for reasons stated below.
`On May 7, 2018, the Board sealed Paper 18, Exhibits 2014–2018,
`and Exhibit 2020 based on a showing that those documents reflect “confidential
`information belonging to a third party and” Petitioner. Id. at 3; see generally
`Paper 25 (Order, granting Petitioner’s unopposed motion to seal and granting a
`joint request for entry of the Board’s default protective order). Thereafter, on
`March 4, 2019, following entry of the Final Written Decision (Paper 36), we found
`good cause to maintain the information under seal and extend the deadline for
`filing a motion to expunge to 45 days after the conclusion of any appeals
`(Paper 41). “The Federal Circuit appeal filed by the Patent Owner was concluded
`on March 16, 2020; and therefore, Petitioner’s Motion is timely filed.” Motion 5.
`As Petitioner acknowledges, “[c]onfidential information will ordinarily
`become public after the final judgment in an IPR unless a Board grants a motion to
`expunge.” Id. at 5 (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,761 (Aug. 14, 2012) (“Trial Practice Guide”)). In that regard, a strong public
`policy exists for making public all information filed in our administrative trial
`proceedings. 37 C.F.R. § 42.14. Thus, we resolve the Motion by balancing the
`public’s interest in maintaining a complete and understandable file history against
`
` 2
`
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`Petitioner’s demonstrated interest in protecting truly sensitive, confidential
`information. Trial Practice Guide, 77 Fed. Reg. at 48760–61.
`As an initial matter, we observe that Petitioner avers that the redacted
`version of Patent Owner’s Response (Paper 19) “can remain in the record.”
`Motion 2 n.1. The redactions that appear in Paper 19, in fact, are confined to
`information that pertains to copying as an objective indicium of non-obviousness.
`See Paper 19 at 66, 68–73 (redacted version of Patent Owner’s Response). On that
`point, in our Final Written Decision, we accepted Patent Owner’s evidence of
`copying (as reflected in Exhibits 2014–2018 and Exhibit 2020), and assigned
`“some weight” to that evidence in our analysis. Paper 36, 33–35 (Final Written
`Decision, explaining that Patent Owner’s evidence of secondary considerations is
`limited to “evidence that Petitioner copied the invention claimed,” and avoiding
`disclosure of the allegedly confidential information by “accepting Patent Owner’s
`evidence of copying” as reflected in Exhibits 2014–2018 and Exhibit 2020).
`Against that backdrop, Petitioner avers that the Final Written Decision “did
`not disclose the substance of the confidential information.” Motion 5 (citing
`Paper 36, 33–35). We agree and, furthermore, are persuaded that the details of the
`information are not necessary to an understanding of the reasons supporting our
`Final Written Decision. Given these facts, we find the public’s interest in access to
`those details is minimal. Accordingly, we accept Petitioner’s unopposed argument
`that, because “[t]he details of the confidential information are unimportant to the
`merits of the case and the public’s interest in having access to such information is
`minimal, such information should be expunged for good cause.” Id.
`Accordingly, we grant the Motion and expunge Paper 18 (Patent Owner’s
`Response (unredacted)), Exhibits 2014–2018, and Exhibit 2020.
`
` 3
`
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`ORDERED that Petitioner’s Unopposed Motion to Expunge is
`
`
`It is
`
`granted;
`FURTHER ORDERED that the unredacted version of Patent Owner’s
`
`Response (Paper 18), Exhibits 2014–2018, and Exhibit 2020 are expunged; and
`
`FURTHER ORDERED that all other papers and exhibits, including
`the redacted version of Patent Owner’s Response (Paper 19), shall remain publicly
`available in the record of this proceeding.
`
`PETITIONER:
`Mark Rowland
`Gabrielle Higgins
`ROPES & GRAY LLP
`mark.rowland@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`PATENT OWNER:
`Michael Scheer
`THE LAW OFFICE OF MICHAEL J. SCHEER
`mscheer@michaeljscheer.com
`
`Scott Flaherty
`BRIGGS AND MORGAN, P.A.
`sflaherty@briggs.com
`
` 4
`
`
`
`
`
`
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