Trials@uspto.gov
`571-272-7822
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`
`
`
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`Paper 9
` August 29, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`____________
`
`
`Before J. JOHN LEE and JASON M. REPKO, Administrative Patent
`Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. §§ 42.5 and 42.54(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 9
` August 29, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`____________
`
`
`Before J. JOHN LEE and JASON M. REPKO, Administrative Patent
`Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Granting Patent Owner’s Motion to Seal
`37 C.F.R. §§ 42.5 and 42.54(a)
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`AUTHORIZING PETITIONER’S MOTION
`
`A conference call was held on August 27, 2019 between counsel for
`
`both parties and Judges Lee and Repko to discuss (1) Petitioner’s request for
`
`authorization to file a five-page reply to Patent Owner’s Preliminary
`
`Response and (2) Petitioner’s request for authorization to file a motion for
`
`pre-institution discovery in both IPR2019-01064 and IPR2019-01065.
`
`See Ex. 3001 (email dated Aug. 26, 2019). With these requests, Petitioner
`
`seeks to address Patent Owner’s argument and evidence about actual
`
`reduction to practice. See id.
`
`Patent Owner opposes Petitioner’s request for pre-institution
`
`discovery. Patent Owner does not oppose Petitioner’s motion to file a reply
`
`if Patent Owner is given a sur-reply of the same length.
`
`In the call, we authorized Petitioner to file the motion requesting pre-
`
`institution discovery. At this time, we hold in abeyance Petitioner’s request
`
`for a reply (and Patent Owner’s corresponding request for s sur-reply) until
`
`we issue a decision on Petitioner’s discovery motion. The motion must not
`
`exceed five pages and must be filed no later than September 4, 2019.
`
`Petitioner’s motion must explain why the additional discovery “is
`
`necessary in the interest of justice.” See 35 U.S.C. § 316(a)(5). For instance,
`
`to determine whether to allow additional discovery, the Board applies
`
`several factors on a case-by-case basis. See Garmin Int’l, Inc. v. Cuozzo
`
`Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB
`
`Mar. 5, 2013) (Paper 26) (precedential) (listing the factors). In this case, we
`
`emphasize that (1) “[t]he party requesting discovery should already be in
`
`possession of evidence tending to show beyond speculation that in fact
`
`something useful will be uncovered” and (2) the request should be
`
`2
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`“responsibly tailored according to a genuine need.” Id. Also, Petitioner’s
`
`motion must not exceed the items that were discussed in the call: (1)
`
`depositions of Mr. Jannard, Mr. Nattress, and Mr. Land; (2) documentation
`
`in Patent Owner’s possession dated before April 13, 2007 sufficient to show
`
`that the “Mysterium CMOS image sensor” practices the relevant claims of
`
`the challenged patents; (3) data files in Patent Owner’s possession generated
`
`by either the “Boris” or “Natasha” cameras before April 13, 2007; and
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`(4) the “Boris” and “Natasha” cameras for inspection by Petitioner’s expert.
`
`See Ex. 3001.
`
`We also authorized Patent Owner to file an opposition to Petitioner’s
`
`motion, which must be filed no later than September 11, 2019. The
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`opposition also must not exceed five pages.
`
`
`
`GRANTING PATENT OWNER’S MOTION TO SEAL
`
`In both IPR2019-01064 and IPR2019-01065, Patent Owner moves to
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`seal the unredacted version of Exhibit 2010. IPR2019-01064, Paper 8, 1.1
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`Petitioner does not oppose. Patent Owner proposes using the Board’s model
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`Default Protective Order in the July 2019 Office Patent Trial Practice Guide
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`Update as the protective order governing the parties in this case. Id.
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`Petitioner does not object. Id.
`
`We grant Patent Owner’s motion.
`
`There is a strong public policy that favors making information filed in
`
`inter partes review proceedings open to the public. See Garmin, slip op. at 3
`
`
`
`1 Patent Owner filed substantially identical motions in both proceedings. See
`IPR2019-01064, Paper 8; IPR2019-01065, Paper 7. For brevity, we refer to
`the pages of the motion in IPR2019-01064 (Paper 8).
`
`3
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`(Paper 34) (discussing the standards of the Board applied to motions to seal).
`
`The moving party bears the burden of showing that the relief requested
`
`should be granted. 37 C.F.R. § 42.20(c). That includes showing that the
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`information is confidential and that this confidentiality outweighs the strong
`
`public interest in having an open record. See Garmin, slip op. at 1–3
`
`(Paper 34).
`
`Patent Owner here asserts that good cause exists to seal Exhibit 20102
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`because “Exhibit 2010 is Patent Owner’s business record containing
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`confidential and proprietary technical and business information relating to
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`Patent Owner’s products,” and its disclosure “would competitively harm
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`Patent Owner by exposing Patent Owner’s confidential and proprietary
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`technology and business information to potential competitors.” IPR2019-
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`01064, Paper 8, 1–2. We have considered the arguments presented in the
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`Motion to Seal and determine that there is good cause for sealing.
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`The parties are reminded that confidential information subject to a
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`protective order ordinarily becomes public 45 days after final judgment in a
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`trial. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug.
`
`14, 2012). It is expected that information will be made public when the
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`existence of the information is identified in a final written decision following
`
`a trial. Id. After final judgment in a trial, a party may file a motion to
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`expunge confidential information from the record before the information
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`becomes public. See 37 C.F.R. § 42.56.
`
`
`
`2 In both proceedings, Patent Owner filed the same document, with and
`without redactions, and the document was given the same number.
`
`4
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`ORDER
`
`It is
`
`ORDERED that Petitioner is authorized to file a motion for pre-
`
`institution discovery in each of the above-captioned cases, no later than
`
`September 4, 2019, as limited in the way discussed above;
`
`FURTHER ORDERED that Patent Owner is authorized to file an
`
`opposition to Petitioner’s motion in each case, which must be filed no later
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`than September 11, 2019; and
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`FURTHER ORDERED that Patent Owner’s Motion to Seal in each
`
`case is granted.
`
`
`
`
`
`5
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`PETITIONER:
`
`Michael S. Parsons
`Andrew Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons@haynesboone.com
`andy.ehmke@haynesboone.com
`Jordan.maucotel@haynesboone.com
`
`PATENT OWNER:
`
`Joseph R. Re
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2dgm@knobbe.com
`
`
`6
`
`
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