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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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`MITEK SYSTEMS, INC.
`Petitioner
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`v.
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`UNITED SERVICES AUTOMOBILE ASSOCIATION.
`Patent Owner
`___________________
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`___________________
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`JOINT MOTION TO SEAL PURSUANT TO 36 C.F.R. § 42.54
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10909405
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`Pursuant to 37 C.F.R. §§ 42.14 and 42.54 and in accordance with the Decision
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`Granting In Part Patent Owner’s Motions for Additional Discovery 37 C.F.R. §
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`42.51(b)(2) dated July 30, 2020 (Paper 19) (“the Order”) issued in IPR2020-00882,
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`Patent Owner and Petitioner met and conferred regarding entry of a protective order
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`in this proceeding and request that the proposed Protective Order in Attachment A
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`(adapted from the Default Protective Order from the Trial Practice Guide) be entered
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`and govern disclosure of the information below filed under seal. The Board granted
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`a similar motion to seal Exhibit 2003 and Patent Owner’s Preliminary Response in
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`IPR2020-00882 and entered the same protective order that is proposed here. Mitek
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`Systems, Inc. v. United Services Automobile Association, Case IPR2020-00882,
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`Paper 28 (PTAB Sep. 16, 2020).
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`I. DOCUMENTS TO BE SEALED
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`A. Exhibit 2003
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`Exhibit 2003 (Exhibit 2023 in IPR2020-00882) is a copy of an agreement
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`between Petitioner and third parties that was produced by Petitioner in response to
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`the Board’s order that “USAA’s request for joint defense or common interest
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`agreements between Mitek and Wells Fargo involving U.S. Patent Nos. 9,818,090
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`B1, 9,336,517 B1, 8,977,571 B1, or 8,699,779 B1 is granted.” Order at 27 in
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`IPR2020-00882. Petitioner agreed that Patent Owner may submit Exhibit 2003 in
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`Case No. IPR2020-01742
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`this proceeding provided it be subject to a motion to seal as in IPR2020-00882.
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`There is good cause to request the sealing of this exhibit for the reasons set
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`forth below under Section II.
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`B.
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`Patent Owner Preliminary Response
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`The Patent Owner Preliminary Response dated January 27, 2021 (“POPR”),
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`contains quotations from, discussions of, and citations to the exhibit. As with the
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`exhibit itself, there is good cause to request the sealing of those portions of the POPR
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`that directly quote, discuss and cite the contents of the exhibit. See Section II.
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`USAA and Petitioner will confer regarding the scope of redactions to the
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`POPR necessary to seal the confidential information, and will file a public, redacted,
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`non-confidential version of the POPR within five (5) business days. The redactions
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`will be tailored to protect only that confidential information necessary to protect the
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`contents of the exhibit.
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`II. GOOD CAUSE FOR SEALING THE IDENTIFIED DOCUMENTS
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`When enacting inter partes reviews (“IPRs”), Congress directed the Board to
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`“provid[e] for protective orders governing the exchange and submission of
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`confidential information.” 35 U.S.C. § 316(a)(7). Thus, “[t]he Board may, for good
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`cause, issue an order to protect a party or person from disclosing confidential
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`information . . .” 37 C.F.R. § 42.54(a). In Argentum Pharmaceuticals LLC v. Alcon
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`Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018), the Board set forth
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`Patent No. 10,013,605
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`the standard for sealing confidential information:
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`[A] movant to seal must demonstrate adequately that (1) the
`information sought to be sealed is truly confidential, (2) a concrete
`harm would result upon public disclosure, (3) there exists a genuine
`need to rely in the trial on the specific information sought to be sealed,
`and (4) on balance, an interest in maintaining confidentiality outweighs
`the strong public interest in having an open record.
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`Id. at 3 (“the Argentum Factors”).
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`The Argentum factors support granting this Motion for the reasons below.
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`Factor (1): The Petitioner submits that the agreement (filed by USAA as
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`Exhibit 2003) is truly confidential;
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`Factor (2): Petitioner submits that it has good cause to seal Exhibit 2003 and
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`those portions of the POPR that quote, discuss and/or cite to the Exhibit 2003
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`because it contains terms of an agreement that Petitioner and third parties not
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`involved in these proceedings consider confidential. For example, Petitioner submits
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`that the exhibit discusses the confidential rights and responsibilities of the parties to
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`the agreement that the parties intended to remain confidential. Petitioner submits that
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`it would be placed in a competitive and strategic disadvantage should the terms of
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`the agreement become public;
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`Factor (3): Patent Owner submits that there is a genuine need to rely on the
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`agreement for the reasons set forth in the POPR; and
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`Factor (4): Petitioner submits that the interest in maintaining confidentiality
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`outweighs the strong public interest in having an open record for the reasons under
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`Factor (2), and because here the information sought to be sealed is limited to only
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`the agreement itself and those portions of the POPR that directly quote, discuss and
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`cite the contents of the agreement.
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`III. CONCLUSION
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`The parties respectfully requests that the Board grant this Motion to Seal.
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`Dated: January 27, 2021
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` Respectfully submitted,
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` /Anthony Q. Rowles/
`Anthony Q. Rowles, Reg. No. 68,673
`Michael R. Fleming, Reg. No. 67,933
`Jason Sheasby, Pro Hac Vice to be requested
`Lisa S. Glasser, Pro Hac Vice to be requested
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
`Attorney for Patent Owner USAA
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`
`/Brian E. Mack/
`Brian E. Mack (Reg. No. 57189)
`Quinn Emanuel Urquhart & Sullivan
`50 California St, 22nd Floor
`San Francisco, CA 94111
`Tel: (415) 875-6600
`Fax: (415) 875-6700
`Attorney for Petitioner Mitek Systems, Inc.
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`ATTACHMENT A – PROPOSED PROTECTIVE ORDER
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`DEFAULT PROTECTIVE ORDER
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`This protective order governs the treatment and filing of confidential information,
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`including documents and testimony.
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`1. Confidential information shall be clearly marked “PROTECTIVE
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`ORDER MATERIAL.”
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`2. Access to confidential information is limited to the following individuals
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`who have executed the acknowledgment appended to this order:
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`(A) Parties. Persons who are owners of a patent involved in the proceeding
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`and other persons who are named parties to the proceeding.
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`(B) Party Representatives. Representatives of record for a party in the
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`proceeding.
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`(C) Experts. Retained experts of a party in the proceeding who further
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`certify in the Acknowledgement that they are not a competitor to any party,
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`or a consultant for, or employed by, such a competitor with respect to the
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`subject matter of the proceeding.
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`(D) In-house counsel. In-house counsel of a party.
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`(E) Support Personnel. Administrative assistants, clerical staff, court
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`reporters and other support personnel of the foregoing persons who are
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`reasonably necessary to assist those persons in the proceeding shall not be
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`required to sign an Acknowledgement, but shall be informed of the terms
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`and requirements of the Protective Order by the person they are supporting
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`who receives confidential information.
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`(F) The Office. Employees and representatives of the United States Patent
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`and Trademark Office who have a need for access to the confidential
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`information shall have such access without the requirement to sign an
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`Acknowledgement. Such employees and representatives shall include the
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`Director, members of the Board and their clerical staff, other support
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`personnel, court reporters, and other persons acting on behalf of the Office.
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`3. Employees (e.g., corporate officers), consultants, or other persons
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`performing work for a party, other than those persons identified above in
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`(d)(2)(A)–(E), shall be extended access to confidential information only upon
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`agreement of the parties or by order of the Board upon a motion brought by the
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`party seeking to disclose confidential information to that person and after signing
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`the Acknowledgment. The party opposing disclosure to that person shall have the
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`burden of proving that such person should be restricted from access to confidential
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`information.
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`4. Persons receiving confidential information shall use reasonable efforts to
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`maintain the confidentiality of the information, including:
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`(A) Maintaining such information in a secure location to which persons not
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`authorized to receive the information shall not have access;
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`(B) Otherwise using reasonable efforts to maintain the confidentiality of the
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`information, which efforts shall be no less rigorous than those the recipient
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`uses to maintain the confidentiality of information not received from the
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`disclosing party;
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`(C) Ensuring that support personnel of the recipient who have access to the
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`confidential information understand and abide by the obligation to maintain
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`the confidentiality of information received that is designated as confidential;
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`and
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`(D) Limiting the copying of confidential information to a reasonable number
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`of copies needed for conduct of the proceeding and maintaining a record of
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`the locations of such copies.
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`5. Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along with a
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`Motion to Seal. The Motion to Seal should provide a non-confidential
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`description of the nature of the confidential information that is under seal,
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`and set forth the reasons why the information is confidential and should not
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`be made available to the public. A party may challenge the confidentiality of
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`the information by opposing the Motion to Seal. The documents or
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`information shall remain under seal unless the Board determines that some
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`or all of it does not qualify for confidential treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the information
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`submitted to the Board, the submitting party shall file confidential and non-
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`confidential versions of its submission, together with a Motion to Seal the
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`confidential version setting forth the reasons why the information redacted
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`from the non-confidential version is confidential and should not be made
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`available to the public. A party may challenge the confidentiality of the
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`information by opposing the Motion to Seal. The non-confidential version of
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`the submission shall clearly indicate the locations of information that has
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`been redacted. The confidential version of the submission shall be filed
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`under seal. The redacted information shall remain under seal unless the
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`Board determines that some or all of the redacted information does not
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`qualify for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as
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`confidential that are disclosed to another party during discovery or other
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`proceedings before the Board shall be clearly marked as “PROTECTIVE
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`ORDER MATERIAL” and shall be produced in a manner that maintains its
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`confidentiality.
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`6. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential
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`information must return, or certify the destruction of, all copies of the confidential
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`information to the producing party.
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`(k) Standard Acknowledgement of Protective Order. The following form may be
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`used to acknowledge a protective order and gain access to information covered by
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`the protective order:
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`[CAPTION]
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`Standard Acknowledgment for Access to Protective Order Material
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` I _________________________________, affirm that I have read the Protective
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`Order; that I will abide by its terms; that I will use the confidential information
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`only in connection with this proceeding and for no other purpose; that I will only
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`allow access to support staff who are reasonably necessary to assist me in this
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`proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`[Signature]
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on
`January 27, 2021, a copy of the foregoing document JOINT MOTION TO SEAL
`PURSUANT TO PROPOSED PROTECTIVE ORDER and ATTACHMENT
`A was served by electronic mail, as agreed to by the parties, upon the following:
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`QUINN EMANUEL URQUHART & SULLIVAN
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`Brian Mack, Reg. No. 57,189
`brianmack@quinnemanuel.com
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`Jonathan Tse, Reg. No. 70,738
`jonathantse@quinnemanuel.com
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`Claude M. Stern
`claudestern@quinnemanuel.com
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`David Eiseman
`davideiseman@quinnemanuel.com
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`QE-Mitek-USAA@quinnemanuel.com
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`/Susan M. Langworthy/
` Susan M. Langworthy
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