Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 34
`Entered: April 10, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`
`Case IPR2018-01108
`Patent 9,516,127 B2
`
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting-in-part Motion to Expunge
`37 C.F.R.§ 42.56
`
`
`571-272-7822
`
`
`
`
`Paper 34
`Entered: April 10, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SEVEN NETWORKS, LLC,
`Patent Owner.
`
`
`Case IPR2018-01108
`Patent 9,516,127 B2
`
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting-in-part Motion to Expunge
`37 C.F.R.§ 42.56
`
`
`
`IPR2018-01108
`Patent 9,516,127 B2
`
`
`
`INTRODUCTION
`Petitioner filed a Motion to Expunge (Paper 33, “Motion” or “Mot.”)
`the confidential versions of Petitioner’s Reply (Paper 16), Patent Owner’s
`Sur-reply (Paper 19), the Decision on Institution (Paper 22), and
`Exhibits 1030−1035, 1047, 1048, 1051, 2100, and 3001.1 Patent Owner
`does not oppose the Motion. For the following reasons, the Motion is
`granted.
`
`
`ANALYSIS
`“Confidential information that is subject to a protective order
`ordinarily would become public 45 days after denial of a petition to institute
`a trial or 45 days after final judgment in a trial.” Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012) (“Trial Practice
`Guide”). However, “[a]fter denial of a petition to institute a trial or after
`final judgment in a trial, a party may file a motion to expunge confidential
`information from the record.” 37 C.F.R. § 42.56. This “rule balances the
`needs of the parties to submit confidential information with the public
`interest in maintaining a complete and understandable file history for public
`notice purposes.” Trial Practice Guide, 77 Fed. Reg. at 48,761.
`Petitioner submits that expungement is appropriate because “this
`proceeding was terminated based on a settlement” and “without reliance
`upon details revealed by documents . . . under seal.” Mot. 2−3. According
`
`
`1 The record includes public redacted versions of Petitioner’s Reply
`(Paper 15), Patent Owner’s Sur-reply (Paper 20), the Decision on Institution
`(Paper 31), and Exhibits 1030 and 1035.
`
`2
`
`
`
`IPR2018-01108
`Patent 9,516,127 B2
`
`
`to Petitioner, “the sealed confidential documents have no meaningful impact
`on the ultimate resolution of this proceeding.” Id. at 3. Thus, Petitioner
`contends that “the public interest is far outweighed by the interest of the
`parties to preserve the confidentiality of these documents.” Id.
`We determine that it is appropriate to expunge the confidential
`versions of Petitioner’s Reply (Paper 16), Patent Owner’s Sur-reply
`(Paper 19), the Decision on Institution (Paper 22), and Exhibits 1030−1035,
`1047, 1048, and 1051, because: (1) the confidential information relates to
`real party in interest and privity issues and otherwise is not related to the
`merits of the case; and (2) the final judgment in this proceeding was based
`on the parties’ settlement. Therefore, the Motion is granted with respect to
`the confidential versions of Petitioner’s Reply (Paper 16), Patent Owner’s
`Sur-reply (Paper 19), the Decision on Institution (Paper 22), and
`Exhibits 1030−1035, 1047, 1048, and 1051.
`However, we determine that it is not appropriate to expunge
`Exhibits 2100 and 3001. As discussed above, the final judgment in this
`proceeding was based on the parties’ settlement (Paper 30, 2–3), and
`Exhibit 2100 is a copy of the parties’ Settlement Agreement. Because the
`parties submitted Exhibit 2100 with their Joint Motion to Terminate in order
`to comply with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) (Paper 28, 5), it
`would not be appropriate to expunge Exhibit 2100 from the record.
`Moreover, we previously granted the parties’ request to treat Exhibit 2100 as
`business confidential information to be kept separate from the patent file
`pursuant to 37 C.F.R. § 42.74(c). Paper 30, 3. In addition, we authorized
`Petitioner to file a motion to seal Exhibit 3001, and explained that the status
`
`3
`
`
`
`IPR2018-01108
`Patent 9,516,127 B2
`
`
`of Exhibit 3001 will be changed to “public” if Petitioner does not timely file
`a motion to seal. Paper 14, 2−3, 5. Neither party filed a motion to seal
`Exhibit 3001. Paper 33, 2. Therefore, the Motion is denied with respect to
`Exhibits 2100 and 3001, and the status of Exhibit 3001 is changed to
`“public.” Paper 14, 3, 5.
`
`
`ORDER
`
`It is hereby
`ORDERED that the Motion to Expunge is granted with respect to the
`confidential versions of Petitioner’s Reply (Paper 16), Patent Owner’s
`Sur-reply (Paper 19), the Decision on Institution (Paper 22), and
`Exhibits 1030−1035, 1047, 1048, and 1051;
`FURTHER ORDERED that the confidential versions of Petitioner’s
`Reply (Paper 16), Patent Owner’s Sur-reply (Paper 19), the Decision on
`Institution (Paper 22), and Exhibits 1030−1035, 1047, 1048, and 1051 are
`expunged from the record in this proceeding;
`FURTHER ORDERED that the Motion to Expunge is denied with
`respect to Exhibits 2100 and 3001; and
`FURTHER ORDERED that the status of Exhibit 3001 is changed to
`“public.”
`
`
`4
`
`
`
`IPR2018-01108
`Patent 9,516,127 B2
`
`
`
`
`For PETITIONER:
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Kim Leung
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`leung@fr.com
`
`For PATENT OWNER:
`Kenneth Weatherwax
`Nathan Lowenstein
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Lowenstein & Weatherwax LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
`
`5
`
`
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