IPR2023-00433
`U.S. Patent No. 10,067,942
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOX, INC., and DROPBOX, INC.,
`Petitioners
`
`v.
`
`TOPIA TECHNOLOGY, INC.,
`Patent Owner.
`
`
`
`Case No. IPR2023-00433
`U.S. Patent No. 10,067,942
`
`
`
`
`PETITIONERS’ UNOPPOSED MOTION TO SEAL
`
`
`
`U.S. Patent No. 10,067,942
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOX, INC., and DROPBOX, INC.,
`Petitioners
`
`v.
`
`TOPIA TECHNOLOGY, INC.,
`Patent Owner.
`
`
`
`Case No. IPR2023-00433
`U.S. Patent No. 10,067,942
`
`
`
`
`PETITIONERS’ UNOPPOSED MOTION TO SEAL
`
`
`
`
`I.
`
`Introduction
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`IPR2023-00433
`U.S. Patent No. 10,067,942
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`Pursuant to 37 C.F.R. § 42.54, the Board’s scheduling order (Paper 18 at 3),
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`and the protective order governing this proceeding (Paper 9), Petitioners move to
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`maintain under seal certain portions of Petitioners’ Reply (Paper 35) appearing on
`
`pages 1-3. Concurrent with this motion, Petitioners are filing a redacted version of
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`Petitioners’ Reply (Paper 35). Below, Petitioners explain that good cause exists for
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`maintaining this content under seal. Patent Owner previously agreed that it would
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`not oppose a motion to seal substantively identical content via email on November
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`22, 2023.
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`II. Applicable Legal Principles for Sealing Confidential Information
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`There is a strong public policy for making all information filed in an
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`administrative proceeding open to the public, especially in an inter partes review
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`which determines the patentability of claims in a patent and therefore affects the
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`rights of the public. St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-
`
`00258, Paper 28, 2 (P.T.A.B. Aug. 12, 2013). Under 35 U.S.C. § 316(a)(1), the
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`default rule is that all papers filed in an inter partes review are open and available
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`for access by the public, and a party may file a concurrent motion to seal and the
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`information at issue is sealed pending the outcome of the motion. Id.
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`However, “confidential information” may be protected from disclosure. 35
`
`U.S.C. § 316(a)(7) (“The Director shall prescribe regulations . . . providing for
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`1
`
`
`
`IPR2023-00433
`U.S. Patent No. 10,067,942
`protective orders governing the exchange and submission of confidential
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`information”). In that regard, the Patent Trial and Appeal Board Consolidated Trial
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`Practice Guide (Nov. 2019) provides:
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`The rules aim to strike a balance between the public’s interest in
`maintaining a complete and understandable file history and the parties’
`interest in protecting truly sensitive information.
`* * *
`Confidential Information: The rules identify confidential information
`in a manner consistent with Federal Rule of Civil Procedure
`26(c)(1)(G), which provides for protective orders for trade secret or
`other confidential research, development, or commercial information.
`37 C.F.R § 42.54.
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`The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54.
`
`The Board has applied a four-pronged test in assessing motions to seal:
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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.
`
`Argentum Pharm. LLC v. Alcon Rsch., Ltd., IPR2017-01053, Paper 27, 4
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`(P.T.A.B. Jan. 19, 2018) (informative) (citing to 37 C.F.R. § 42.54(a)).
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`2
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`
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`IPR2023-00433
`U.S. Patent No. 10,067,942
`III. Good Cause Exists for Sealing the Redacted Portions of the Patent
`Owner’s Response
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`The redacted content on pages 1-3 of Petitioners’ Reply relates to a
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`confidential arrangement between Egnyte, Inc. (“Egnyte”) and Ms. Keefe and terms
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`of a confidential Joint Defense Agreement (“JDA”) that Petitioners are prohibited
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`from revealing to the public (by the terms of the JDA itself). Petitioners respectfully
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`request to seal this content because it describes an arrangement that Ms. Keefe and
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`Egnyte intended to maintain, and have maintained, in confidence and terms of the
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`JDA that the parties to the JDA intended to maintain, and have maintained, in
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`confidence. The confidential information has been maintained in confidentiality by
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`all parties. Aside from describing the relationship between Ms. Keefe and Egnyte
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`and the terms of the JDA, the content has no relevance to these proceedings or the
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`public’s interest in these proceedings. Petitioners’ interests in maintaining
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`confidentiality therefore outweigh the strong public interest in having an open
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`record. For the foregoing reasons, Petitioners seek to maintain the redacted content
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`on pages 1-3 of Petitioners’ Reply under seal.
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`IV. Certification of Non-Publication
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`To the best of Petitioners’ knowledge, the information sought to be sealed has
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`not been published or otherwise made public and the confidentiality of this
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`information has been consistently maintained by the Petitioners.
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`Under the protective order (Paper 9), the information sought to be sealed
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`3
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`
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`IPR2023-00433
`U.S. Patent No. 10,067,942
`herein has been designated as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
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`ONLY” information for the reasons described above.
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`Should the Board be inclined to deny the present Motion to Seal, Petitioners
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`respectfully request a conference call with the Board to discuss any concerns prior
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`to the Board issuing a decision on the Motion.
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`V. Conclusion
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`For the above reasons, Petitioners respectfully request that the above-
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`described portions of Patent Owner’s Response be treated as confidential
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`information and maintained under seal.
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`
`Dated: February 20, 2024
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Respectfully submitted,
`
`
`
`By:
`
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`
`4
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`
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`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`the attached PETITIONERS’ UNOPPOSED MOTION TO SEAL is being
`served on the 20th day of February, 2024, via electronic mail upon counsel of
`record for the Patent Owner as follows:
`
`Raja N. Saliba (Reg. No. 43,078)
`Chidambaram S. Iyer (Reg. No. 43,355)
`Michael R. Dzwonczyk (Reg. No. 36,787)
`L. Roman Rachuba (Reg. No. 75,180)
`SUGHRUE MION, PLLC
`Emails:
`rsaliba@sughrue.com
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`
`ciyer@sughrue.com
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`mdzwonczyk@sughrue.com
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`lrachuba@sughrue.com
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`topia@sughrue.com
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`DATED: February 20, 2024
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`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
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