Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 30
`
`Entered: June 1, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`PNC BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`____________________
`
`IPR2022-00050
`Patent 10,402,638 B1
`____________________
`
`
`Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion to Expunge Confidential Information
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 30
`
`Entered: June 1, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`PNC BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`____________________
`
`IPR2022-00050
`Patent 10,402,638 B1
`____________________
`
`
`Before MICHAEL R. ZECHER, TERRENCE W. McMILLIN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Motion to Expunge Confidential Information
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`
`
`
`IPR2022-00050
`Patent 10,402,638 B1
`
`
`United Services Automobile Association (“Patent Owner”), filed un-
`redacted and redacted versions of its Preliminary Response (Papers 11 and
`12), along with a first Joint Motion to Seal Exhibit 2006 and certain portions
`of the Preliminary Response that reference Exhibit 2006 (Paper 9). PNC
`Bank, N.A. (“Petitioner”), filed un-redacted and redacted versions of a
`Preliminary Reply (Papers 14 and 16), along with a second Joint Motion to
`Seal certain portions of the Preliminary Reply that reference Exhibit 2006
`(Paper 13). And Patent Owner filed un-redacted and redacted versions of a
`Preliminary Sur-reply (Papers 18 and 20), along with a third Joint Motion to
`Seal certain portions of the Preliminary Sur-reply that reference
`Exhibit 2006 (Paper 17).
`We granted the joint motions to seal (Papers 9, 13, 17), sealing
`Exhibit 2006 and the portions of the Preliminary Response, Preliminary
`Reply, and Preliminary Sur-reply that reference Exhibit 2006. Paper 22
`(Institution Decision), 36–38. The confidential information was related to
`an argument regarding the real party in interest, and we determined that we
`did not need to consider that argument. Id. at 36–37. As a result, the
`Institution Decision did not reference or rely upon the confidential
`information. Id. We issued a Decision Denying Institution of Inter Partes
`Review on May 11, 2022 (Paper 22) and denied Petitioner’s Request for
`Rehearing of the Decision Denying Institution on January 13, 2023 (Paper
`26).
`
`Petitioner moves to expunge Exhibit 2006 and Papers 11, 14, and 18.
`Paper 27 (“Mot. to Expunge”). “[A]fter final judgment in a trial, a party
`may file a motion to expunge confidential information from the record.”
`37 C.F.R. § 42.56; see also Consolidated Trial Practice Guide (Nov. 2019)
`
`2
`
`
`
`IPR2022-00050
`Patent 10,402,638 B1
`
`(“Consolidated Practice Guide”)1 at 21–22 (“There is an expectation that
`information will be made public where the existence of the information is
`referred to in a decision to grant or deny a request to institute a review or is
`identified in a final written decision following a trial. A party seeking to
`maintain the confidentiality of information, however, may file a motion to
`expunge the information from the record prior to the information becoming
`public. 37 C.F.R. § 42.56. The rule balances the needs of the parties to
`submit confidential information with the public interest in maintaining a
`complete and understandable file history for public notice purposes.”).
`Granting a motion to seal “confidential information” requires a
`showing of “good cause” during a proceeding. 37 C.F.R.
`§ 42.54. A parallel rule implies the same standard to a motion
`to expunge “confidential information” “[a]fter denial of a
`petition to institute a trial or after final judgment in a trial.”
`37 C.F.R. § 42.56. The movant generally has the burden of
`proof in showing entitlement to the requested relief. 37 C.F.R.
`§ 42.20(c). In this case, Petitioner must show that any
`information sought to be expunged constitutes confidential
`information, and that Petitioner’s interest in expunging it
`outweighs the public’s interest in maintaining a complete and
`understandable history of this inter partes review.
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
`Paper 97 at 2 (PTAB Apr. 15, 2015).
`Petitioner contends that the information it seeks to expunge is the
`confidential information of a third party, and that, should the information
`become public, “Petitioner submits that it would be placed in a competitive
`and strategic disadvantage.” Mot to Expunge 4. Moreover, Petitioner
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2022-00050
`Patent 10,402,638 B1
`
`argues, “[w]ere confidential information produced voluntarily under a joint
`protective order to be disclosed publicly, a producing party would have little
`incentive to engage in voluntary discovery of confidential information in
`proceedings before the Board.” Id. at 4–5. Petitioner notes that redacted
`versions of Papers 11, 14, and 18 have been filed (although Exhibit 2006 has
`been redacted in its entirety). Id. at 3–4.
`Patent Owner has not filed an opposition to Petitioner’s Motion to
`Expunge filed on February 17, 2023, and the opposition period has passed.
`See 37 C.F.R. § 42.25(a)(1)(“An opposition is due one month after service
`of the motion.”).
`We agree with Petitioner that good cause exists to expunge Papers 11,
`14, and 18 and Exhibit 2006. As Petitioner observes (Mot. to Expunge 3), in
`granting the parties’ joint motions to seal, we found good cause to seal
`Exhibit 2006 and portions of the parties’ briefs discussing that exhibit.
`Paper 22, 37. Thus, we have already found that the information at issue is
`confidential. In addition, the record includes Papers 12, 16, and 20, which
`are the public versions of Papers 11, 14, and 18 with minimal and narrowly
`tailored redactions of the confidential information. Also, the confidential
`information relates only to an argument regarding real party in interest, and
`the public will have full access to the unpatentability issues raised pre-
`institution via Papers 12, 16, and 20. Finally, the real party in interest
`argument was raised pre-institution, and it was not addressed in the
`Institution Decision. As a result, we determine that expunging this
`confidential information will have little to no impact on the public’s interest
`in maintaining a complete and understandable history of this proceeding.
`Balancing the potential harm to Petitioner of this information becoming
`
`4
`
`
`
`IPR2022-00050
`Patent 10,402,638 B1
`
`public against the public’s interest in maintaining a complete and
`understandable record of this proceeding, we find that good cause exists to
`expunge Exhibit 2006 and Papers 11, 14, and 18.
`
`IV. ORDER
`Accordingly, it is hereby:
`ORDERED that Motion to Expunge Confidential Information
`(Paper 27) is granted; and
`FURTHER ORDERED that Exhibit 2006 and Papers 11, 14, and 18
`are expunged.
`
`5
`
`
`
`IPR2022-00050
`Patent 10,402,638 B1
`
`For PETITIONER:
`Monica Grewal
`David L. Cavanaugh
`Jonathan P. Knight
`R. Gregory Israelsen
`Scott Bertulli
`Amy Mahan
`WILMER CUTLER PICKING HALE & DORR LLP
`monica.grewal@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`jonathan.knight@wilmerhale.com
`greg.israelsen@wilmerhale.com
`scott.bertulli@wilmerhale.com
`amy.mahan@wilmerhale.com
`
`
`For PATENT OWNER:
`Anthony Q. Rowles
`Michael R. Fleming
`IRELL & MANELLA LLP
`trowles@irell.com
`mfleming@irell.co
`
`
`
`
`
`
`
`
`
`6
`
`
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