throbber
Paper 58
`Trials@uspto.gov
`Tel: 571-272-7822
`Entered: June 28, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00344
`Patent 7,047,196 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges
`
`YAP, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Decision on Petitioner’s Motions to Seal
`37 C.F.R. §§ 42.14 and 42.54
`
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`
`I. INTRODUCTION
`Comcast Cable Communications, LLC (“Petitioner”) filed four
`motions to seal various exhibits and materials in the current proceeding
`pursuant to 37 C.F.R. §§ 42.14 and 42.54. See Papers 23, 31, 41, and 48.
`
`A. First Motion to Seal
`Through the first Motion to Seal, Petitioner seeks to seal portions of
`Exhibits 2022, 2023, and 2031 and represents that Patent Owner, Promptu
`Systems Corp., does not oppose the motion. Paper 23, 2. Corresponding
`redacted exhibits have been filed as exhibits 1020, 1021, and 1022. Exhibit
`2020 is a “License and Development Agreement” between Comcast IP
`Holdings I, LLC and Comcast Corporation, and AgileTV Corporation.
`Paper 23, 2; see Ex. 2022. Exhibit 2023 is a “Marketing Trial Agreement
`for Voice Activated Television Control Service” between Comcast Cable
`Communications Management, LLC and AgileTV Corporation. Paper 23, 2;
`see Ex. 2023. Exhibit 2031 is a Comcast presentation titled “AgileTV
`Update,” and “describes the financial, marketing, and technical evaluations
`and projections for the trial of the AgileTV product as well as usability
`studies and metrics for voice control more generally.” Paper 23, 3; see
`Ex. 2031. Petitioner certifies that these exhibits contain confidential
`information that has not been published or otherwise made publicly
`available. Paper 23, 3. The alleged confidential information were not relied
`on or referred to in the Final Written Decision. Thus, protecting the alleged
`confidential material from public disclosure does not harm the public’s interest
`in maintaining a complete and understandable file history. Furthermore, the
`redactions appear to be limited in extent, and the motion is unopposed. We
`
`2
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`determine that good cause exists to grant this motion to seal (Paper 23).
`37 C.F.R. § 42.54.
`
`B. Second Motion to Seal
` Through the second Motion to Seal, Petitioner seeks to seal portions
`of Exhibit 1024, which “contains excerpts from the transcript of the
`deposition of Paul Cook.” Paper 31, 1. A corresponding redacted copy of
`Exhibit 1024 has been filed. See Exhibit 1032. Petitioner proposes to seal
`portions of Exhibit 1024 because those portions “disclose[] the amount of a
`proposed patent license agreement between the parties” or “the specific
`amount of consideration under the License and Development Agreement
`entered by the parties and additional confidential terms of that agreement.”
`Paper 31, 4–6. According to Petitioner, “[n]one of the specific dollar
`amounts disclosed in the exhibit are cited in Comcast’s reply brief or
`elsewhere in the parties’ briefing on the merits[, t]hus the public will have
`no interest in this specific confidential information with regard to the
`patentability of the challenged claims.” Paper 31, 4. In addition, Petitioner
`contends that the “information is confidential and its disclosure would harm
`Petitioner in similar negotiations involving patent or other licenses with
`other third parties.” Paper 31, 4–6.
`Patent Owner states that “[a]lthough Promptu indicated it does not
`oppose Comcast’s motion to seal, Promptu was ordered . . . that it ‘still
`should inform the Board whether the information sought to be sealed by
`Petitioner constitutes confidential information or if the information is in the
`public domain.’ See IPR2018-00340, Paper 40 at 2.” Paper 44, 1.
`According to Patent Owner, “the information [Petitioner sought to seal] does
`not constitute confidential information and [that] the information is in the
`
`3
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`public domain.” Id. at 1, 9–11.1 For example, Promptu’s amended
`complaint in its district court action and “several details regarding
`Comcast’s valuation of Promptu’s technology are already in the public
`domain.” Id. at 10. Promptu’s amended complaint states that “To further
`encourage Promptu to continue to disclose its proprietary voice recognition
`technology, Comcast represented it would invest $2 million of capital into
`Promptu.” Id. at 2–3 (citing to Promptu Sys. Corp. v. Comcast Corp., Case
`No. 2:16-CV- 6516-JS (E.D. Pa.), ECF No. 30, ¶ 32). Patent Owner also
`points to Exhibits 2002 and 2003 in support of its contention. Exhibit 2002
`is an AgileTV Corporation Executive Summary and Exhibit 2003 appears to
`be an AgileTV presentation titled “AgileTV Voice Navigation.” In addition,
`Patent Owner also argues that “the material is already publicly known, by
`virtue of the information having originated from the mouth of a non-party
`subject to no obligation of confidentiality.” Paper 44, 10–11. According to
`Patent Owner, Mr. Cook, “Promptu’s former CEO and a non-party, [] is no
`longer under any obligation of confidentiality” and did not designate his
`testimony as being confidential during his deposition. Id. at 7.
`In response, Petitioner contends that “Patent Owner does not identify
`any public source for the loan amount and instead cites its own allegations in
`the district court complaint that do not reveal the amount of the loan.” Paper
`50, 1. Petitioner also contends that Mr. Cook’s testimony “was provided in
`
`
`1 Patent Owner also argues that the information is not confidential because
`Petitioner did not properly designate Ex. 1026 under the protective order.
`Paper 44, 5–9. We do not find this argument persuasive because Patent
`Owner does not explain why a protective order, or compliance with a
`protective order, is a prerequisite to filing a motion to seal.
`4
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`a conference room before attorneys bound by protective orders[, and is
`therefore] not a public statement.” Id.
`“The rules aim to strike a balance between the public’s interest in
`maintaining a complete and understandable file history and the parties’
`interest in protecting truly sensitive information.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48760 (August 14, 2012). Here, the alleged
`confidential information is not relied on or referred to in the Final Written
`Decision. Thus, a complete and understandable file history does not depend on
`disclosure of any of the alleged confidential information at issue. Also, the scope
`of protection sought by Petitioner is limited, i.e., redacting “the amount of a
`proposed patent license agreement between the parties” and “the specific
`amount of consideration under the License and Development Agreement
`entered by the parties and additional confidential terms of that agreement.”
`Paper 31, 4–6. We determine that good cause exists to grant Petitioner’s
`Second Motion to Seal. 37 C.F.R. § 42.54.
`
`C. Third Motion to Seal
` Through the Third Motion to Seal, Petitioner seeks to seal portions of
`Patent Owner’s Sur-Reply (Paper 38), which “disclose[] the specific amount
`Comcast loaned to Patent Owner to conduct trials intended for Patent Owner
`to demonstrate its AgileTV product to Comcast.” Paper 41, 1. A
`corresponding redacted copy of Patent Owner’s Sur-Reply has been filed.
`See Paper 42. Patent Owner states that “[a]lthough Promptu indicated it
`does not oppose Comcast’s motion to seal, Promptu was ordered . . . that it
`‘still should inform the Board whether the information sought to be sealed
`by Petitioner constitutes confidential information or if the information is in
`the public domain.’ See IPR2018-00340, Paper 40 at 2.” Paper 44, 1.
`
`5
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`Patent Owner presents the same arguments as discussed above relating to
`Petitioner’s Second Motion to Seal. The alleged confidential information
`(i.e., “the specific amount Comcast loaned to Patent Owner to conduct trials
`intended for Patent Owner to demonstrate its AgileTV product to Comcast”)
`is not relied on or referred to in the Final Written Decision. A complete and
`understandable file history does not depend on disclosure of any of the alleged
`confidential information at issue. Also, the scope of protection sought by
`Petitioner is limited, i.e., the specific amount Comcast loaned to Patent
`Owner to conduct trials intended for Patent Owner to demonstrate its
`AgileTV product to Comcast. We determine that good cause exists to grant
`Petitioner’s Third Motion to Seal. 37 C.F.R. § 42.54.
`
`D. Fourth Motion to Seal
` Through the Fourth Motion to Seal, Petitioner seeks to seal portions
`of Exhibit 1030, which was “filed in support of Petitioner’s Opposition to
`Patent Owner’s Motion to Exclude (Paper 46).” Paper 48, 1. A
`corresponding redacted copy of Exhibit 1030 has been filed as Exhibit 1032.
`Petitioner proposes to seal Exhibit portions of 1030 because those portions
`“disclose the specific amount of a loan Comcast paid to AgileTV in
`connection with a limited marketing trial of AgileTV’s product. Disclosure
`of this information is likely to harm Comcast in negotiations with other third
`parties involving similar agreements.” Paper 48, 4–5. According to
`Petitioner, “[n]either parties relies on the specific dollar amounts Petitioner
`proposes redacting in their arguments on the merits [, thus] the public will
`have no interest in this specific confidential information with regard to the
`patentability of the challenged claims.” Id. In addition, Petitioner contends
`that the “information is confidential and its disclosure would harm Petitioner
`
`6
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`in similar negotiations involving patent or other licenses with other third
`parties.” Id. at 5. Patent Owner does not file an opposition to this motion.
`The alleged confidential information (i.e., “the specific amount of a
`loan Comcast paid to AgileTV in connection with a limited marketing trial
`of AgileTV’s product” and “the specific dollar amounts in negotiations
`between the parties related to Comcast’s marketing trial of the AgileTV”) is
`not relied on or referred to in the Final Written Decision. A complete and
`understandable file history does not depend on disclosure of any of the alleged
`confidential information at issue. Also, the scope of protection sought by
`Petitioner is limited, i.e., the specific amount Comcast loaned to Patent
`Owner to conduct trials intended for Patent Owner to demonstrate its
`AgileTV product to Comcast. Paper 48, 4–5. We determine that good cause
`exists to grant Petitioner’s Fourth Motion to Seal. 37 C.F.R. § 42.54.
`
`
`ORDER
`
`It is, therefore,
`ORDERED that Petitioner’s Motion to Seal directed to portions of
`Exhibits 2022, 2023, and 2031 (Paper 23) is granted;
`FURTHER ORDERED that Petitioner’s Motion to Seal directed to
`portions of Exhibit 1024 (Paper 31) is granted; and
`FURTHER ORDERED that Petitioner’s Motion to Seal directed to
`portions of Patent Owner’s Sur-Reply (Paper 41) is granted; and
`FURTHER ORDERED that Petitioner’s Motion to Seal directed to
`portions of Exhibit 1030 (Paper 48) is granted.
`
`7
`
`

`

`Case IPR2018-00344
`Patent 7,047,196 B2
`
`PETITIONER:
`
`James L. Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@kvn.com
`
`
`PATENT OWNER:
`
`Joshua L. Goldberg
`Jacob A. Schroeder
`Cory C. Bell
`Daniel Klodowski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joshua.goldberg@finnegan.com
`jacob.schroeder@finnegan.com
`cory.bell@finnegan.com
`daniel.klodowski@finnegan.com
`
`
`8
`
`

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