PGR2018 – 00025
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`L'ORÉAL USA, INC.,
`Petitioner,
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`v.
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`LIQWD, INC.,
`Patent Owner.
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`________________
`
`Case PGR2018 – 00025
`Patent No. 9,668,954
`________________
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`J O I N T M O T I O N T O S E A L P O R T I O N S
`O F P A P E R 6 1
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`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313 – 1450
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`L'ORÉAL USA, INC.,
`Petitioner,
`
`v.
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`LIQWD, INC.,
`Patent Owner.
`
`________________
`
`Case PGR2018 – 00025
`Patent No. 9,668,954
`________________
`
`J O I N T M O T I O N T O S E A L P O R T I O N S
`O F P A P E R 6 1
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313 – 1450
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`
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`PGR2018 – 00025
`Patent No. 9,668,954
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`Pursuant to the Board’s Order in Paper 78, the Protective Order entered in
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`this proceeding (Papers 18 and 21), the Board’s Order in Paper 82, and 37 C.F.R.
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`§§ 42.14 and 42.54, Petitioner L'Oréal USA, Inc. and Patent Owner Liquid, Inc.
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`(collectively, the “Parties”) respectfully submit this Joint Motion to Seal selected
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`portions of Paper 61.
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`Paper 78 ordered the Parties to meet and confer regarding filing a joint
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`motion to seal, inter alia, the Final Written Decision (Paper 78) and Paper 61 along
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`with redacted versions of the same. The Parties, however, after several weeks
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`were unable to reach agreement regarding Papers 61 and 78. A Joint Motion to
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`Seal (Paper 81) was filed on September 6, 2019, outlining the Parties’ respective
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`positions including whether portions of Papers 61 and 78 should be sealed or
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`unsealed. The Board requested a teleconference in an attempt to reach an
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`agreement regarding the proposed redactions. On September 11, 2019, a
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`teleconference was held and the Parties argued their respective positions.1
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`After an extensive search of the record, including the over 1,000 docket
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`entries in Liqwd, Inc. v. L'Oréal USA, Inc., 17-cv-14 (D. Del.) (“Delaware
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`proceeding”), and the transcript from the week-long trial, the parties have met and
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`1 During the teleconference, the Board requested that the transcript of the
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`teleconference be filed by the party who arranged the court reporter. Patent Owner
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`has filed the transcript as Ex. 2085 in this proceeding.
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`PGR2018 – 00025
`Patent No. 9,668,954
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`conferred and Petitioner believes that it is no longer necessary to seal Paper 78 and
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`portions of Paper 61. However, for the reasons set forth below, Petitioner asserts
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`that good cause exists to seal the cited portions of Paper 61.
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`I. WHETHER GOOD CAUSE FOR SEALING MAY EXIST
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`The standard for granting a motion to seal is “good cause.” 37 C.F.R.
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`§ 42.54. There is a strong public policy that favors making information filed in
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`inter partes review proceedings open to the public. See Garmin Int’l v. Cuozzo
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`Speed Techs., LLC, Case IPR2012-00001, Paper 34 at 1–2 (PTAB March 14, 2013)
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`(discussing the standards of the Board applied to motions to seal). The moving
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`party, here Petitioner, bears the burden of showing that the relief requested should
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`be granted. 37 C.F.R. § 42.20(c). That includes first showing that the information
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`is truly confidential, and second that such confidentiality outweighs the strong
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`public interest in having an open record. See Garmin at 3.
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`The Parties also acknowledge that the Board’s rules seek to “strike a balance
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`between the public’s interest in maintaining a complete and understandable file
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`history and the parties’ interest in protecting truly sensitive information.” 77 FR
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`48756, 48760. Papers 61 and 78 contain citations to exhibits which have been
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`sealed earlier in this proceeding and in the Delaware proceeding.
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`Exhibits 2068 and 2071 were obtained from the Delaware proceeding and
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`remain under seal in that proceeding. In seeking permission to use these documents
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`PGR2018 – 00025
`Patent No. 9,668,954
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`in PGR proceedings, Patent Owner’s litigation counsel told the Delaware District
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`Court that confidential material so obtained would continue to be subject to the
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`same confidentiality restrictions that may exist in the Delaware District Court, so if
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`something is marked confidential or highly confidential in the Delaware District
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`Court, it would continue to be treated as such in the parallel PGR proceeding to
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`maintain its confidentiality from public disclosure.
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`Paragraph 18(d) of the Protective Order in the Delaware District Court
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`litigation (D.I. 54) says “[t]he restrictions and obligations set forth in this
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`Protective Order relating to Protected Material shall not apply to any information
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`that: … (ii) … the Court rules, has become public knowledge other than as a result
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`of improper disclosure by the Receiving Party of breach of this Order or other
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`confidentiality agreement… or (iv) … the Court rules was, is, or becomes
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`expressly released from being designated as Protected Material … by order of the
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`Court.”
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`Paragraph 104 of the Joint Pretrial Order (D.I. 821), which states “the Court
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`should be open to the public for the entirety of the presentation of evidence at
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`trial.” Paragraph 105 of the Joint Pretrial Order in the Delaware District Court
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`litigation (D.I. 821) says that “Exhibits marked ‘Confidential,’ ‘Highly
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`Confidential,’ or ‘Highly Confidential – Attorneys’ Eyes Only,’ while displayed at
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`trial, will not be filed publicly.”
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`PGR2018 – 00025
`Patent No. 9,668,954
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`Petitioner’s Contentions:
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`Petitioner believes that any discussion, quotations, or summaries of Exhibits
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`2068 and 2071 that were not publicly filed or discussed in open court require
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`redaction, as Patent Owner was only granted permission by the District Court to
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`use Exhibits 2068 and 2071 subject to the condition that the information would not
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`be filed publicly.2 These Exhibits remain designated “Confidential” or “Highly
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`Confidential” under the Delaware District Court Protective Order, and therefore
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`remain non-public pursuant to the Joint Pretrial Order.
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`Petitioner contends that, consistent with ¶105 of the Joint Pretrial Order,
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`documents admitted into evidence at trial remain under seal and are not public.
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`To the extent the Patent Owner or the Board disagree with the
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`confidentiality designations, at a minimum and, in view of the fact that Exhibits
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`2068 and 2071 remain under seal in the Delaware proceeding, Patent Owner
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`should be required to raise the issue of unsealing these documents with the
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`Delaware Court, and seek its guidance given Patent Owner’s previous
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`representations to the Court.
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`2 Likewise, all of the information in these exhibits apart from anything that was
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`publicly filed or discussed in open court should remain sealed.
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`PGR2018 – 00025
`Patent No. 9,668,954
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`Patent Owner’s Contentions:
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`Patent Owner appreciates Petitioner’s acknowledgement that at least
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`information discussed at the recent Delaware trial is now public and its attempts to
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`reduce the number of requests to seal information from Paper 61 and to eliminate
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`the requests to seal information from Paper 78.
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`Although Petitioner argues that ¶105 of the Joint Pretrial Order (D.I. 821) is
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`somehow dispositive, it is not. That paragraph of the Joint Pretrial Order merely
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`states, “Exhibits marked ‘Confidential,’ ‘Highly Confidential,’ or ‘Highly
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`Confidential –Attorneys’ Eyes Only,’ while displayed at trial, will not be filed
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`publicly.” The present motion does not relate to the filing of any exhibits in the
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`records of the Delaware litigation. Nor does ¶105 stipulate that information which
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`is public will be treated as confidential.
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`Further, admitted trial exhibits are judicial records to which the public has
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`access, absent extraordinary circumstances. See Littlejohn v. BIC Corp., 851 F.2d
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`673, 677-78 (3d Cir. 1988). Accordingly, there is “a waiver of whatever
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`confidentiality interests might have been preserved under the [Protective Order]”
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`when a supposedly confidential document is admitted into evidence at a public trial
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`without objection without a request to seal the record. Id. at 680-81; see also
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`National Polymer Prods. v. Borg-Warner Corp., 641 F.2d 418, 421 (6th Cir.1981)
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`(disclosure in open court “is a publication of that information and, if no effort is
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`PGR201 8—00025
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`Patent No. 9.668.954
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`made to limit its disclosure, operates as a waiver of any rights a party had to
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`restrict its future use”) and Matter of Continental Illinois Securities Litig. , 732
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`F.2d 1302, 1312-13 (7th Cir. 1984) (fact that entire report not read aloud is not
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`determinative, references and scattered quotes sufficient to support public access).
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`To the extent the Board disagrees with Petitioner’s confidentiality
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`designations in Paper 61, Patent Owner has no obligation to raise the issue of
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`unsealing these documents in this proceeding with the Delaware Court and instead
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`Petitioner may contact the Delaware Court if it chooses to do so to seek its
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`guidance.
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`Petitioner seeks to seal discussions of or quotations from Exhibit 2068 and
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`2071 which Patent Owner asserts was admitted into evidence during the public
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`Delaware trial:
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`PGR Exhibit Delaware Trial Exhibit
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`3 Although PGR Exhibit 2068 and Delaware Trial Exhibit 431 both contain the
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`relevant information, the documents appear to have different dates, and are
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`therefore different documents.
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`PGR2018 – 00025
`Patent No. 9,668,954
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`Petitioner’s witness Mr. Dolden was questioned about Trial Exhibits 185 and
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`3643, which corresponds to PGR Exhibit 2071 (Tr. 669:21-671:7; 953:4-5).
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`Further, Dr. Strong was questioned about Trial Exhibit 431, which contains the
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`same information as PGR Exhibit 2068 (Tr. 844:5-846:6; 849:8-22; 883:12-884:9;
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`937:1-939:4).
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`Specific proposed updated redactions in Paper 61 are identified and
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`discussed below. A updated redacted version of Paper 61 is filed herewith.
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`A. Paper 61
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`The Parties have identified the following redactions in Paper 61 for which
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`Petitioner asserts there is good cause to seal:
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`PGRZU l 8—00025
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`Patent No. 9.668.954
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`Pages 7, Section E, part
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`Petitioner asserts contains Petitioner’s highly
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`The information discusses, is quoted from, or of the third sentence.
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`attempts to summarize Exhibit 2068, a copy of which
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`is currently under seal in the Delaware District Court
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`pursuant to the Joint Pretrial Order, and which
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`confidential internal communications.
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`Patent Owner asserts that Petitioner has not shown
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`that its confidentiality interest in the information in
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`the third sentence outweighs the strong public interest
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`in having an open record, but does not otherwise
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`object to the sealing.
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`PGRZU l 8—00025
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`Patent No. 9.668.954
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`Pages 8-9, Section H,
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`attempts to summarize Exhibit 2071, a copy of which
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`sentence.
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`is currently under seal in the Delaware District Court
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`The information discusses, is quoted from, or part of the third
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`pursuant to the Joint Pretrial Order, and which
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`Petitioner asserts contains Petitioner’s highly
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`confidential internal communications.
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`Patent Owner asserts that Petitioner has shown its
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`confidentiality interest outweighs the strong public
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`interest in having an open record, but does not
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`otherwise object to the sealing.
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`II.
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`CERTIFICATION OF NON-PUBLICATION STATUS
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`Petitioner’s Counsel represents to Patent Owner and to the Board that it has
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`searched the District Court record, consulted with litigation counsel, and is unable
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`to find a public disclosure of the redacted subject matter or a quotation of the same.
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`Because the citations are taken from documents currently under seal in the
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`Delaware District Court proceeding, redactions are necessary unless and until it is
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`demonstrated that the citations were made public and are no longer confidential.
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`PGR2018 – 00025
`Patent No. 9,668,954
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`III. CONCLUSION
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`The Parties therefore respectfully request that the Board grant this Joint
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`Motion to Seal as it deems appropriate.
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`Dated: September 18, 2019
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`Respectfully Submitted,
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`By:
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`/Michelle E. O’Brien, Reg. No. 46,203/
`Michelle E. O’Brien, Reg. No. 46,203
`Timothy J. Murphy, Reg. No. 62,585
`THE MARBURY LAW GROUP PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: 703-391-2900
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`Attorneys for Petitioner L'Oréal USA,
`Inc.
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`By: /Matthew K. Blackburn /
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`Matthew K. Blackburn
`Registration No. 47,428
`DIAMOND McCARTHY L.L.P.
`150 California Street, Suite 2200
`San Francisco, CA 94111
`Tel: 415.692.5200
`Fax: 415.263.9200
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`Attorneys for Patent Owner Liqwd, Inc.
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`PGR2018 – 00025
`Patent No. 9,668,954
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`CERTIFICATION OF SERVICE 37 C.F.R. § 42.6(e)
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`The undersigned hereby certifies that the above-captioned JOINT
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`MOTION TO SEAL PORTIONS OF PAPER 61 was served in its entirety on
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`September 18, 2019, on the following parties via email:
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`mblackburn@diamondmccarthy.com
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`rivka@pabstpatent.com
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`THE MARBURY LAW GROUP, PLLC
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`By:
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`/Michelle E. O’Brien, Reg. No. 46,203/
` Michelle E. O’Brien, Reg. No. 46,203
` ATTORNEY FOR PETITIONER
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`-11-
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