Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 16
`Entered: April 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01138
`Patent 9,659,472 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 16
`Entered: April 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01138
`Patent 9,659,472 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`
`
`IPR2018-01138
`Patent 9,659,472 B2
`
`
`BACKGROUND
`I.
`Patent Owner, InVue Security Products Inc., filed a Motion to Seal
`and for Entry of Protective Order. Paper 15 (“Motion” or “Mot.”). Patent
`Owner moves to seal portions of the following materials, providing public,
`redacted versions for the documents:
`Document
`
`Redacted
`Version
`
`Version
`Submitted
`Under Seal
`Ex. 2022
`
`Ex. 2036
`
`Transcript of Christopher
`Remy’s deposition
`Chart created by Patent Owner
`depicting the ownership
`structure of Petitioner
`See Mot. 4. 1 Patent Owner indicates that Petitioner, Mobile Tech, Inc., does
`not oppose its Motion to Seal and for Entry of Protective Order. Id. at 6.
`
`Ex. 2021
`
`Ex. 2035
`
`II. DISCUSSION
`There is a strong public policy in favor of making information filed in
`an inter partes review open to the public, especially because the proceeding
`determines the patentability of claims in an issued patent and, therefore,
`affects the rights of the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
`§ 42.14, the default rule is that all papers filed in an inter partes review are
`
`
`1 This Motion also seeks to seal Patent Owner’s Response (Paper 14). On
`March 25, 2019, Anthony Blum, Counsel for Patent Owner, contacted us via
`email and stated that the parties had conferred regarding the confidentiality
`of Paper 14 and that they agreed that Patent Owner’s Response did not need
`to be sealed. In response to that email, Paper 14 was made available to the
`public and we regard Patent Owner’s request to seal Paper 14 as withdrawn.
`1
`
`
`
`
`IPR2018-01138
`Patent 9,659,472 B2
`
`open and available for access by the public; a party, however, may file a
`concurrent motion to seal and the information at issue is sealed pending the
`outcome of the motion. It is, however, only “confidential information” that
`is protected from disclosure. 35 U.S.C. § 316(a)(7). In that regard, the Trial
`Practice Guide provides:
`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.
`. . .
`identify confidential
`Confidential Information: The rules
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
`77 Fed. Reg. at 48,760.
`The standard for granting a motion to seal is “for good cause.”
`37 C.F.R. § 42.54(a). The filing party bears the burden of proof in showing
`entitlement to the relief requested in a motion to seal. 37 C.F.R. § 42.20(c).
`
`Confidential Information
`A.
`Patent Owner argues that confidential and highly confidential
`information was discussed during Mr. Remy’s deposition such as
`“information regarding [Petitioner’s] internal business and confidential
`agreements, previous acquisitions of its stock, legal funding, compensation,
`stock ownership by individuals, communications with and between
`management and directors, and confidential settlement discussions.” Mot.
`3–4. Patent Owner asserts that Petitioner has stated “public disclosure of
`such confidential and highly confidential information would unnecessarily
`reveal [Petitioner’s] sensitive information and potentially cause harm to
`2
`
`
`
`
`IPR2018-01138
`Patent 9,659,472 B2
`
`[Petitioner’s] competitive and strategic position in the marketplace.” Id. at
`4. Upon reviewing Exhibits 2021 and 2022, and Patent Owner’s arguments
`regarding their confidential nature, we are persuaded that good cause exists
`to seal these Exhibits. We also note that the redacted portions of these
`materials (Exs. 2035 and 2036) appear to be tailored narrowly to only
`confidential information.
`
`Proposed Protective Order
`B.
`Patent Owner provides a proposed protective order (Ex. 2038) agreed
`to by the parties, along with a comparison showing changes made to the
`Board’s default protective order (Ex. 2039). Mot. 5–6. Patent Owner
`contends that the changes are necessary because Petitioner has asserted that
`certain information discussed during Mr. Remy’s deposition is “highly
`confidential, such that its access should be further limited to exclude access
`from Patent Owner’s in-house counsel,” and Patent Owner agrees. Id. at 5.
`As a result, the proposed protective order “create[s] a two-tiered structure”
`with an additional designation of “PROTECTIVE ORDER MATERIAL –
`ATTORNEY’S EYES ONLY,” “such that Patent Owner’s in-house counsel,
`[Trent A. Kirk], who is a back-up counsel of record in this case, does not
`have access to ‘highly confidential’ information.” Id. at 5–6; see Ex. 2038
`§ 3.
`
`We have reviewed the additional sections added to the proposed
`protective order and are persuaded that they are appropriate under the
`circumstances. In particular, Sections 2(A), 2(F), 3, and 6 place additional
`restrictions on the parties and their counsel, but not on the Office or the
`public accessing non-confidential materials from the Office. We also note
`
`3
`
`
`
`
`IPR2018-01138
`Patent 9,659,472 B2
`
`that the proposed protective order is identical to the protective order entered
`in the related proceedings. See Mot. 5; IPR2017-00344, Paper 35. Thus, the
`proposed protective order will be entered and will govern the treatment and
`filing of confidential information in the instant proceeding, and the requested
`materials will be sealed pursuant to that order. 2, 3
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Seal and for Entry of
`Protective Order is granted as to Exhibits 2021 and 2022; and
`FURTHER ORDERED that Patent Owner’s proposed protective order
`(Exhibit 2038) is entered and shall govern the treatment and filing of
`confidential information in the instant proceeding.
`
`
`
`
`
`
`
`2 Patent Owner filed Exhibit 2022 as “Board Only,” and Exhibit 2021 as
`“Parties and Board Only,” in the Patent Trial and Appeal Board End to End
`(PTAB E2E) system.
`3 Patent Owner lists four portions of Mr. Remy’s deposition transcript
`(Ex. 2022) as “PROTECTIVE ORDER MATERIAL – ATTORNEY’S
`EYES ONLY.” Ex. 2037, 2.
`
`4
`
`
`
`
`IPR2018-01138
`Patent 9,659,472 B2
`
`PETITIONER:
`
`Alan Norman
`Anthony Blum
`David Jinkins
`Matthew Braunel
`Robert Gerlach
`THOMPSON COBURN LLP
`anorman@thompsoncoburn.com
`ablum@thompsoncoburn.com
`djinkins@thompsoncoburn.com
`mbraunel@thompsoncoburn.com
`rgerlach@thompsoncoburn.com
`
`
`PATENT OWNER:
`
`Gregory Carlin
`David Moreland
`Warren Thomas
`Trent Kirk
`Meunier Carlin & Curfman LLC
`gcarlin@mcciplaw.com
`dmoreland@mcciplaw.com
`wthomas@mcciplaw.com
`trentkirk@invue.com
`
`5
`
`
`
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