`571–272–7822
`
`
`
`Paper 18
`Date: October 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SPEAKWARE, INC.,
`Patent Owner.
`____________
`
`IPR2019-00495
`Patent 6,397,186 B1
`_______________
`
`
`Before DEBRA K. STEPHENS, DAVID C. MCKONE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Petitioner’s Motion to Expunge
`37 C.F.R. § 42.56
`
`
`
`
`
`IPR2019-00495
`Patent 6,397,186 B1
`
`
`INTRODUCTION
`I.
`The parties previously filed a Joint Motion to Terminate Inter Partes
`Review (Paper 13), along with a copy of a Confidential Agreement (Paper
`15, “Agreement”). The parties also previously filed a Joint Request that the
`Agreement be treated as business confidential information and kept separate
`from the patent file. Paper 14. We granted the Motion and Joint Request.
`Paper 16, 2–3. Petitioner subsequently filed a Motion to Expunge the
`Agreement. Paper 17 (“Mot.”). For the reasons discussed below, the
`Motion to Expunge is denied.
`II. ANALYSIS
`Petitioner requests that we expunge the Agreement from the record
`because it “contains both Petitioner’s and Patent Owner’s highly confidential
`business information.” Mot. 1. Petitioner points out that according to the
`Office Patent Trial Practice Guide, “[t]here is an expectation that
`information will be made public where the existence of the information is
`referred to . . . in a final written decision following a trial.” Id. Petitioner
`asserts that “[t]here is no public interest in now making the [Agreement]
`publicly available” because it “does not relate to the merits of the case.” Id.
`at 2–3.
`We are not persuaded that the Agreement should be expunged from
`the record. First, 35 U.S.C. § 317(b) requires that any agreement between
`the patent owner and a petitioner made in connection with the termination of
`an inter partes review “shall be filed in the Office before the termination.”
`Because the parties filed the Agreement to comply with this requirement of
`§ 317(b) (see Paper 13, 1), it would not be appropriate to now expunge the
`Agreement from the record.
`
`2
`
`
`
`IPR2019-00495
`Patent 6,397,186 B1
`
`
`Second, Petitioner’s concern that the Agreement will be made public
`is unwarranted. We previously granted the parties’ Joint Request to treat the
`Agreement as business confidential information to be kept separate from the
`patent file. Paper 16, 3. As a result, under § 317(b), the Agreement will
`maintained under seal and will “be made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause.”
`
`III. CONCLUSION
`For the foregoing reasons, we decline to expunge the Agreement from
`the record.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Expunge is denied.
`
`
`
`
`3
`
`
`
`IPR2019-00495
`Patent 6,397,186 B1
`
`PETITIONER:
`
`Scott A. McKeown
`Victor Cheung
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`victor.cheung@ropsegray.com
`
`Jonathan R. Bowser
`Roshan Mansinghani
`Alyssa J. Holtslander
`UNIFIED PATENTS INC.
`jbowser@unifiedpatents.com
`roshan@unifiedpatents.com
`alyssa@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Sean A. Luner
`Simon Franzini
`DOVEL & LUNER, LLP
`sean@dovel.com
`simon@dovel.com
`
`4
`
`
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