Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 20
`Entered: May 31, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELESIGN CORPORATION,
`Petitioner,
`
`v.
`
`TWILIO INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01976 (Patent 8,837,465 B2)
`Case IPR2017-01977 (Patent 8,755,376 B2)1
`_______________
`
`
`Before ROBERT J. WEINSCHENK, KIMBERLY MCGRAW, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Joint Motion for Entry of Protective Order
`37 C.F.R. § 42.54
`
`
`
`
`
`
`1 This Order pertains to both of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`

`

`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`
`INTRODUCTION
`I.
`TeleSign Corporation (“Petitioner”) and Twilio Inc. (“Patent Owner”)
`filed a Joint Motion for Entry of Protective Order. Paper 172 (“Motion” or
`“Mot.”). The parties request entry of a proposed Protective Order that
`differs from the Board’s default Protective Order. Id. at 1. The parties
`submit a clean version of the proposed Protective Order as Appendix A to
`the Motion and a redline version of the proposed Protective Order as
`Appendix B to the Motion. Id. at Appx. A, Appx. B. For the reasons
`discussed below, the Motion is denied without prejudice.
`II. ANALYSIS
`After considering the Motion and the Appendices thereto, we
`determine that the parties have not shown sufficiently that the proposed
`modifications to Sections 4(A)(i), (ii) of the default Protective Order are
`warranted. First, Section 4(A)(i) of the default Protective Order states:
`A party may file documents or information with the Board
`under seal, together with a non-confidential description of the
`nature of the confidential information that is under seal and the
`reasons why the information is confidential and should not be
`made available to the public. The submission shall be treated as
`confidential and remain under seal, unless, upon motion of a
`party and after a hearing on the issue, or sua sponte, the Board
`determines that the documents or information do not to qualify
`for confidential treatment.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14,
`2012). The parties propose deleting the phrase “or sua sponte” from Section
`4(A)(i) of the default Protective Order. Mot. 3, Appx. B. The parties
`propose this modification “to accommodate” the parties’ agreement “that
`
`
`2 We cite to the record of IPR2017-01976, unless otherwise noted.
`
`2
`
`

`

`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`requires a receiving party to cooperate with a producing party who seeks to
`keep confidential information sealed in the event that the Board indicates
`that it intends to unseal the producing party’s material.” Id. at 3. Although
`the parties have agreed to cooperate with one another regarding the handling
`of information asserted to be confidential, the parties may not use their own
`agreement to limit the Board’s ability to determine whether information
`qualifies for confidential treatment in this proceeding.
`Second, Section 4(A)(ii) of the default Protective Order states:
`Where confidentiality is alleged as to some but not all of the
`information submitted to the Board, the submitting party shall
`file confidential and non-confidential versions of its
`submission, together with a Motion to Seal the confidential
`version setting forth the reasons why the information redacted
`from the non-confidential version is confidential and should not
`be made available to the public. The nonconfidential version of
`the submission shall clearly indicate the locations of
`information that has been redacted. The confidential version of
`the submission shall be filed under seal. The redacted
`information shall remain under seal unless, upon motion of a
`party and after a hearing on the issue, or sua sponte, the Board
`determines that some or all of the redacted information does not
`qualify for confidential treatment.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14,
`2012). The parties propose deleting the phrase “or sua sponte” from Section
`4(A)(ii) of the default Protective Order. Mot. 3, Appx. B. As discussed
`above, the parties may not use their own agreement to limit the Board’s
`ability to determine whether information qualifies for confidential treatment
`in this proceeding.
`We note that, during a conference call with the parties on May 23,
`2018, we understood Petitioner to inquire about confidential information
`potentially becoming unsealed after a final judgment. In that regard, we
`
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`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`explained in an Order on May 24, 2018 that confidential information subject
`to a protective order ordinarily becomes public 45 days after a final
`judgment in a trial, but a party may file a motion to expunge confidential
`information from the record prior to the information becoming public. Paper
`16, 4 (citing 37 C.F.R. § 42.56). We do not see that, however, as limiting
`the Board’s ability to determine whether information qualifies for
`confidential treatment in the first place.
`
`The parties also propose adding the following sentence to Section
`4(A)(ii) of the default Protective Order:
`Notwithstanding the foregoing, a party may submit versions of
`documents containing redactions made by agreement in which
`the unredacted material is confidential and to be afforded the
`protections of this order but the redacted material is agreed to
`by the parties as not relevant, and in that situation, an
`unredacted version of the document does not need to be
`submitted.
`Mot. 3, Appx. B. The parties propose this modification because “the
`mutually-agreeable redactions help reduce the risk of public disclosure of
`irrelevant confidential information if the document were to ultimately
`become public inadvertently or intentionally” and “it helps clarify that such
`redactions are allowable notwithstanding the immediately proceeding [sic]
`provision that might otherwise be construed to limit redactions or construed
`to imply that non-redacted information is non-confidential.” Id. at 3.
`The parties have not shown sufficiently that the proposed
`modification is warranted. Section 4(A)(ii) of the default Protective Order
`permits a party to redact confidential information from the public version of
`a document. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,771 (Aug. 14, 2012). The parties’ proposed modification also allows the
`
`4
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`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`parties by agreement to redact information from the confidential version of a
`document filed under seal. Mot. Appx. B. In general, we do not see a
`justification for redacting information from the confidential version of a
`document filed under seal. With respect to the parties’ concern that
`irrelevant confidential information may become public after a final judgment
`in this proceeding, we explained in an Order on May 24, 2018 that, after a
`final judgment in a trial, a party may file a motion to expunge confidential
`information from the record prior to the information becoming public. Paper
`16, 4 (citing 37 C.F.R. § 42.56).
`We note that, during a conference call with the parties on May 23,
`2018, we understood Petitioner to inquire specifically about sensitive
`personal information that is not relevant to the issues in this proceeding. In
`that regard, we explained in an Order on May 24, 2018 that the parties need
`not submit sensitive personal information to the Board that clearly is not
`relevant to the issues in this proceeding. Paper 16, 3–4 (citing Garmin Int’l,
`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 37, 6–8 (PTAB
`Apr. 5, 2013)). However, the parties’ proposed modification to Section
`4(A)(ii) of the default Protective Order is much broader in that it allows the
`parties by agreement to redact any information they deem irrelevant.
`For the foregoing reasons, the parties’ Motion is denied without
`prejudice. The parties may submit another joint motion for entry of a
`protective order with a proposed Protective Order that omits the proposed
`modifications to Sections 4(A)(i), (ii) of the default Protective Order
`discussed above. Also, the parties should clarify Section 3 of the proposed
`Protective Order (which adds a designation for Highly Confidential
`information) to indicate that the individuals identified in Sections 2(F), 2(G)
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`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`shall have access to such information without the requirement to sign an
`Acknowledgement, as similarly set forth in Sections 2(F), 2(G) of the default
`Protective Order. In the meantime, we enter the default Protective Order
`from the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771
`(Aug. 14, 2012), in this proceeding.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion for Entry of Protective Order is
`denied without prejudice; and
`FURTHER ORDERED that the default Protective Order from the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771 (Aug. 14,
`2012) is entered in this proceeding.
`
`
`6
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`

`

`IPR2017-01976 (Patent 8,837,465 B2)
`IPR2017-01977 (Patent 8,755,376 B2)
`
`PETITIONER:
`
`Jesse J. Camacho
`Elena K. McFarland
`Christine Guastello
`Mary J. Peal
`SHOOK, HARDY & BACON L.L.P.
`jcamacho@shb.com
`emcfarland@shb.com
`cguastello@shb.com
`telesignipr@shb.com
`
`
`PATENT OWNER:
`
`Wayne Stacy
`Michelle Jacobson Eber
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`michelle.eber@bakerbotts.com
`
`
`7
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