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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION and HP INC.,
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`Petitioners
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` v.
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` SYNKLOUD TECHNOLOGIES, LLC,
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`Patent Owner
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` _________
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` IPR2020-00316
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`Patent 9,098,526 B1
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` PATENT OWNER’S MOTION TO SEAL
`37 C.F.R. §§42.54, 42.55
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`Patent Owner Synkloud Technologies, LLC (“PO” herein) moves to
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`submit confidential information as evidence in support of its position in the
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`above-captioned matter, and accordingly moves that Exhibits 2029 and 2030,
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`submitted contemporaneously herewith, be accepted but not made public and
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`maintained confidential to a Modified Protective Order submitted herewith as
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`Exhibit 2036. In so moving, PO is guided by this Board’s Decision in IPR2017-
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`01053, Paper No. 27, and decisions cited therein, including IPR2012-00001,
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`Paper No. 34.
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`PO, as an element of its position that the claims challenged in the above-
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`captioned IPR are not obvious over prior art cited, wishes to submit a license
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`extended under the patent at issue, U.S. Patent 9,098,526 along with an
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`associated claim chart as secondary indicia of non-obviousness pursuant to well-
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`established caselaw. See, e.g., Rothman v. Target Corp. 556 F. 3d 1310, 1321
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`(Fed. Cir. 2009). The public is not denied essential information by sealing
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`Exhibits 2029 and 2030. The Exhibits are a license between the owner of the
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`‘526 Patent and a recognized corporation, in consideration of payment of fees,
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`along with an associated claim chart. No other issues, such as sales, conditions,
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`promotions or other issues are set forth in or raised by the license, and thus,
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`questions such as nexus and the like are not raised. PO does not rely on the
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`identity of the Licensee, other than to note it is a recognized major corporation
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`in the computer technology field. PO does not rely on the specific terms of the
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`license, other than to note the license extended is in consideration of payment of
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`money, and no other consideration flows between the parties.
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`By its terms, further information with respect to the license and associated
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`claim chart is confined to outside counsel only. To that end, PO has fashioned a
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`Protective Order premised on the Board’s default protective order in the practice
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`guide, but altered to limit the confidential information submitted to the specific
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`counsel appearing for Petitioners in this matter. Submission of this information,
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`which Court’s have often found of value in considering questions of
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`obviousness, without seal or protection, would potentially vitiate the license as a
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`possible breach thereof and/or expose PO to liability.
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`Undersigned counsel has conferred with opposing counsel. Opposing
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`counsel agreed to the Modified Protective Order that is Exhibit 2036, although
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`they reserved their right to revise this protective order if Microsoft confidential
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`information were to be filed in this IPR in the future.
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`Accordingly, PO respectfully requests Exhibits 2029 and 2030 be held
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`confidential to the Board provisionally, pending grant of this Motion or
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`expungement if this Motion is denied.
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`Respectfully, PO submits it has met the Board’s standard for submission
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`under seal, Argentum Pharmaceuticals LLC v. Alcon Research, IPR 2017-
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`01053, Paper 27 (January 19, 2018) at p. 4. 1) The confidential information, a
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`patent license, is truly confidential – it is confidential by its terms. 2) Concrete
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`harm would result upon public disclosure of Exhibit 2029, it would constitute a
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`potential breach of the very license at issue. 3) There exists a genuine need to
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`rely in the trial on the specific information sought to be sealed. It is PO’s strong
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`evidence of a judicially recognized indication of non-obviousness – a patent
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`license. 4) On balance, the interest in maintaining confidentiality as to this one
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`exhibit outweighs the strong public interest in having an open record.
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`On this basis, and in light of the proposed Modified Protective Order that
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`is Exhibit 2036, PO respectfully requests grant of this Motion and acceptance of
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`Exhibits 2029 and 2030 under seal.
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`Respectfully submitted,
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`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email:
`gonsalves@capitoliplaw.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. 42.6(e) and by the agreement of counsel for Petitioner, I
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`certify that on September 21, 2020, I served a complete electronic copy of the Motion
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`on the Petitioner’s lead and backup counsel at the following email addresses:
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`Lead Counsel
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`Joseph A. Micallef
`Reg. No. 39,772
`iprnotices@sidley.com
`jmicallef@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8492
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`Backup Counsel
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`Scott M. Border
`Reg. No. 77,744
`sborder@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8818
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`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`Email: gonsalves@capitoliplaw.com
`
`
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`
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