Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 58
` Entered: January 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`SIEMENS MOBILITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01669 (Patent 6,824,110 B2)
`Case IPR2017-02044 (Patent 6,609,049 B1)1
`
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motions to Seal Exhibit 2010
`Petitioner’s Motions to Seal Reply
`Petitioner’s Motions to Seal Motion to Exclude
`Patent Owner’s Motions to Seal Opposition to Motion to Exclude
`37 C.F.R. §§ 42.14, 42.54
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
` Paper 58
` Entered: January 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTINGHOUSE AIR BRAKE TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`SIEMENS MOBILITY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01669 (Patent 6,824,110 B2)
`Case IPR2017-02044 (Patent 6,609,049 B1)1
`
`
`
`Before KRISTEN L. DROESCH, MEREDITH C. PETRAVICK, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`Patent Owner’s Motions to Seal Exhibit 2010
`Petitioner’s Motions to Seal Reply
`Petitioner’s Motions to Seal Motion to Exclude
`Patent Owner’s Motions to Seal Opposition to Motion to Exclude
`37 C.F.R. §§ 42.14, 42.54
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`
`
`
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`
`Patent Owner filed a Motion to Seal Exhibit 2010 in IPR2017-01669
`(“1669 IPR”), and an identical Motion to Seal Exhibit 2010 in IPR2017-
`02044 (“2044 IPR”). 1669 IPR, Paper 18; 2044 IPR, Paper 21 (“Mot. to
`Seal Ex. 2010”).2 Along with its Motions, Patent Owner indicated that
`Petitioner and Patent Owner stipulate to use the “standing protective order”
`set forth in the OFFICE PATENT TRIAL PRACTICE GUIDE 77 Fed. Reg. 48,756,
`48,769 (Aug. 14, 2012), and submitted a copy of the “Stipulated Protective
`Order” as Exhibit 2015 in each IPR. See id. at 1. In subsequent motions to
`seal filed by the parties, “Patent Owner respectfully requests entry of the
`previously filed Default Protective Order (accompanying Patent Owner’s
`Motion to Seal Exhibit 2010, Paper 18).” 1669 IPR, Paper 25, 4, Paper
`32, 3–4, Paper 35, 1; 2044 IPR, Paper 28, 4, Paper 35, 3–4, Paper 38, 1.
`
`Related to Exhibit 2010, Petitioner filed a Motion to Seal Petitioner’s
`Reply in the 1669 IPR (1669 IPR, Paper 26, Paper 43 (replacement)), and an
`identical Motion to Seal Petitioner’s Reply in the 2044 IPR (2044 IPR,
`Paper 29, Paper 46 (replacement)). 1669 IPR, Paper 25; 2044 IPR, Paper 28
`(“Mot. to Seal Reply”).3 Petitioner also filed a redacted version of its Reply
`in each IPR (1669 IPR, Paper 24, Paper 42 (replacement); 2044 IPR, Paper
`27, Paper 45 (replacement)), to be available to the public.
`
`Also related to Exhibit 2010, Petitioner filed a Motion to Seal
`Petitioner’s Motion to Exclude Exhibits 2010 and 2011 in the 1669 IPR
`(1669 IPR, Paper 28), and an identical Motion to Seal Petitioner’s Motion to
`Exclude Exhibits 2010 and 2011 in the 2044 IPR (2044 IPR, Paper 31).
`
`
`2 All references to “Mot. to Seal Ex. 2010” are to IPR2017-01669, Paper 18.
`3 All references to “Mot. to Seal Reply” are to IPR2017-01669, Paper 25.
`2
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`1669 IPR, Paper 32; 2044 IPR, Paper 35 (“Mot. to Seal MTE Ex. 2010”).4
`Petitioner filed a redacted version of its Motion to Exclude Exhibits 2010
`and 2011 in each IPR (1669 IPR, Paper 31; 2044 IPR, Paper 34), to be
`available to the public.
`
`Patent Owner filed a Motion to Seal Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude Exhibits 2010 and 2011 in the 1669 IPR
`(1669 IPR, Paper 36), and an identical Motion to Seal Patent Owner’s
`Opposition Petitioner’s Motion to Exclude Exhibits 2010 and 2011 in the
`2044 IPR (2044 IPR, Paper 39). 1669 IPR, Paper 35; 2044 IPR, Paper 38
`(“Mot. to Seal Opp. MTE Ex. 2010”).5 Patent Owner filed a redacted
`version of its Motion to Seal Patent Owner’s Opposition in each IPR (1669
`IPR, Paper 37; 2044 IPR, Paper 40 ), to be available to the public.
`
`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
`§ 42.54. There is a strong public policy that favors making information filed
`in an inter partes review open to the public. See Garmin Int’l v. Cuozzo
`Speed Techs., LLC, Case IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14,
`2013) (Paper 34) (discussing the standards applied to motions to seal). The
`moving party bears the burden of showing that the relief requested should be
`granted. 37 C.F.R. § 42.20(c). The burden includes showing why the
`information is confidential. See Garmin, slip op. at 3.
`
`Patent Owner asserts good cause exists for sealing Exhibit 2010
`because it is a confidential license agreement setting forth the confidentiality
`obligations of the parties in the document itself. Mot. to Seal Ex. 2010 1
`
`4 All references to “Mot. to Seal MTE Ex. 2010” are to IPR2017-01669,
`Paper 32.
`5 All references to “Mot. to Seal Opp. MTE Ex. 2010” are to IPR2017-
`01669, Paper 35.
`
`3
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`(citing Ex. 2010, 6). Patent Owner asserts that it believes it is obligated to
`maintain confidentiality of this license agreement as Protective Order
`Material in accordance with the Stipulated Protective Order. See id.
`According to Patent Owner, both Patent Owner and the licensee treat this
`agreement as confidential because the license agreement terms could have
`significant value to competitors. See id. Patent Owner contends that if the
`license agreement was made public, both Patent Owner and the licensee
`“would be irreparably harmed [because] such disclosure would provide the
`public at-large with direct insight into the parties’ closely-held business
`terms.” See id. at 1–2. Petitioner did not file an opposition to Patent
`Owner’s Motions to Seal Exhibit 2010.
`
`We have considered Patent Owner’s Motions to Seal Exhibit 2010 and
`the information contained in Exhibit 2010. We are persuaded Patent Owner
`has demonstrated sufficiently that Exhibit 2010 includes confidential
`information that should be sealed. Accordingly, Patent Owner’s Motions to
`Seal Exhibit 2010 are granted.
`
`As to Petitioner’s Motions to Seal Petitioner’s Reply, Petitioner
`asserts that “Patent Owner has requested the redaction of three sentences in
`Petitioner’s Reply, because each of those sentences either quote from, or
`otherwise describe and/or characterize the license terms that constitute
`confidential information in the license document.” Mot. to Seal Reply 1.
`According to Petitioner, “[i]f other third parties were able to access such
`information, Patent Owner submits that it and the non-party licensee would
`be irreparably harmed as such disclosure would provide the public at-large
`with direct insight into the parties’ closely-held business terms,” such as
`providing third parties with “an unfair business advantage with respect to
`future licensing negotiations concerning this patent, or others maintained by
`
`4
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`Patent Owner.” Id. at 1–2. Petitioner further contends, “Patent Owner does
`not believe that it is proper for Petitioner to publicize the contents of its
`confidential document that was filed subject to an unopposed motion to seal
`in this IPR.” Id. at 2.
`
`Petitioner argues that, although it did not oppose Patent Owner’s
`Motion to Seal Exhibit 2010, it opposes the redaction of the three sentences
`of its Reply because these sentences does not include confidential
`information. See Mot. to Seal Reply 2–3. According to Petitioner, the first
`sentence includes a quoted portion of text and a time frame, but the time
`frame is not the term of the license, but is “a time frame for which Patent
`Owner’s predecessor-in-interest was seeking business from a third-party.”
`Id. at 2–3. Petitioner also asserts that “this information is not third-party
`information, it wholly belongs to the licensor, whom Patent Owner has
`subsequently acquired and is therefore waivable by Patent Owner to the
`extent it is even confidential.” Id. at 3. As to the second sentence, Petitioner
`contends it is not confidential information because it is only Petitioner’s
`characterization of what Exhibit 2010 does not constitute. See id. Lastly,
`Petitioner contends the third sentence is not confidential information as it
`does not disclose the underlying value of the license agreement, but instead
`is Petitioner’s characterizations of the value of the license to the parties and
`the value of the license to the industry. See id.
`
`Regarding Petitioner’s Motions to Seal Petitioner’s Motion to Exclude
`Exhibits 2010 and 2011, Petitioner asserts that “Patent Owner has requested
`the redaction of certain portions of four paragraphs in Petitioner’s MTE,
`because each of those portions either quote from, or otherwise describe
`and/or characterize, the license terms that constitute confidential information
`in the license document.” Mot. to Seal MTE Ex. 2010 1. Petitioner restates
`
`5
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`Patent Owner’s reasons the information is confidential and the disclosure
`thereof would cause harm to Patent Owner and the licensee, which are the
`same reasons addressed in Petitioner’s Motion to Seal Petitioner’s Reply.
`Compare Mot. to Seal Reply 1–2, with Mot. to Seal MTE Ex. 2010 1–2.
`
`Petitioner argues that it opposes the redaction of the four paragraphs
`of its Motion to Exclude Exhibits 2010 and 2011 because these sections only
`characterize and do not disclose, any third party or Siemens confidential
`information. See Mot. to Seal MTE Ex. 2010 2. According to Petitioner,
`although these sections include a quoted portion of text and a time frame, the
`time frame is not the term of the license, but is “a time frame for which
`Patent Owner’s predecessor-in-interest was seeking business from a third-
`party.” Id. at 2–3. Petitioner also asserts that “this information is not third-
`party information, it wholly belongs to the licensor, whom Patent Owner has
`subsequently acquired and is therefore waivable by Patent Owner to the
`extent it is even confidential.” Id. at 3. As to the remaining portions,
`Petitioner contends it is not confidential information because it is only
`Petitioner’s characterization of what Exhibit 2010 does not constitute, and is
`not confidential information of Patent Owner or any third party. See id.
`Lastly, Petitioner contends there is no disclosure of the underlying value of
`the license agreement, and asserts that Petitioner’s characterization of the
`value could just as easily refer to any amount of money or consideration.
`See id.
`
`We have considered Petitioner’s Motions to Seal Petitioner’s Reply
`and Petitioner’s Motions to Seal Petitioner’s Motion to Exclude Exhibits
`2010 and 2011, and the information contained therein. We are not
`persuaded by Petitioner’s arguments that the information is not confidential.
`We are persuaded that the disclosure of Petitioner’s characterizations of the
`
`6
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`license agreement, in particular, Petitioner’s characterizations of the value of
`the license, could result in harm to Patent Owner and/or the licensee by
`providing the public at-large with direct insight into the parties’ business
`terms. Accordingly, Petitioner’s Motions to Seal Petitioner’s Reply and
`Petitioner’s Motions to Seal Petitioner’s Motion to Exclude Exhibits 2010
`and 2011 are granted.
`
`As to Patent Owner’s Motions to Seal Patent Owner’s Opposition to
`Petitioner’s Motion to Exclude Exhibits 2010 and 2011, Patent Owner
`asserts that it requests the redaction of certain portions of two paragraphs in
`the Opposition because those portions either describe and/or characterize the
`license terms that constitute confidential information in the license
`document. See Mot. to Seal Opp. MTE Ex. 2010 1–2. Patent Owner
`restates its reasons the information is confidential and the disclosure thereof
`would cause harm to Patent Owner and the licensee, which are the same
`reasons addressed in Petitioner’s Motion to Seal Petitioner’s Reply and
`Petitioner’s Motion to Seal Petitioner’s Motion to Exclude Exhibits 2010
`and 2011. Compare Mot. to Seal Opp. MTE Ex. 2010 2, with Mot. to Seal
`Reply 1–2, Mot. to Seal MTE Ex. 2010 1–2. Petitioner represents that
`Patent Owner does not oppose its Motion. See Mot. to Seal Opp. MTE
`Ex. 2010 1.
`
`We have considered Patent Owner’s Motions to Seal Patent Owner’s
`Opposition to Petitioner’s Motion to Exclude Exhibits 2010 and 2011, and
`the information contained therein. We are persuaded that the disclosure of
`Patent Owner’s characterizations of the license agreement could result in
`harm to Patent Owner and/or the licensee by providing the public at-large
`with direct insight into the parties’ business terms. Accordingly, Patent
`
`7
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`Owner’s Motions to Seal Patent Owner’s Opposition to Petitioner’s Motion
`to Exclude Exhibits 2010 and 2011 are granted.
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that the Stipulated Protective Order attached to Patent
`
`Owner’s Motion to Seal (1669 IPR, Ex. 2015; 2044 IPR, Ex. 2015) shall be
`entered in each record;
`
`
`FURTHER ORDERED that Patent Owner’s Motions to Seal Exhibit
`2010 are granted;
`
`FURTHER ORDERED that Petitioner’s Motions to Seal Petitioner’s
`Reply are granted;
`
`FURTHER ORDERED that Petitioner’s Motions to Seal Petitioner’s
`Motion to Exclude Exhibits 2010 and 2011 are granted; and
`
`FURTHER ORDERED that Patent Owner’s Motions to Seal Patent
`Owner’s Opposition to Petitioner’s Motion to Exclude Exhibits 2010 and
`2011 are granted.
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2017-01669 (Patent 6,824,110 B2)
`IPR2017-02044 (Patent 6,609,049 B1)
`PETITIONER:
`Jason A. Engel
`Alan L. Barry
`Erk J. Halverson
`Benjamin E. Weed
`K&L GATES LLP
`Jason.Engel.PTAB@klgates.com
`alan.barry@klgates.com
`erik.haverson@klgates.com
`benjamin.weed.PTAB@klgates.com
`
`
`
`
`
`PATENT OWNER:
`Jeffrey D. Sanok
`Mark M. Supko
`Vincent J. Galluzzo
`Scott L. Bittman
`CROWELL & MORING LLP
`jsanok@crowell.com
`msupko@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`
`
`
`9
`
`
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