Denying Motion to Expunge Information Regarding Manufacturing Practices and Customers IPR2014-00309

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Takeaway: That a patent owner may have availed itself of the commercial benefits of its patent grant in negotiating with customers and potential customers does not, without more, justify sealing portions of the record from public disclosure.

In its Order, the Board denied Patent Owner’s post-hearing motion to expunge sealed versions of certain exhibits. Specifically, Patent Owner sought to seal deposition transcripts of two Saint-Gobain employees and named inventors of the ‘640 patent that was challenged in the instant IPR proceeding. Continue reading

Granting Motion For Additional Discovery IPR2015-00545

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Takeaway: A limited request for additional documents that will assist the Board in determining whether Petitioner has identified the real-parties-in-interest may be granted provided the request otherwise satisfies the five factors from Garmin v. Cuozzo.

In its Order, the Board granted Patent Owner’s request for additional discovery. The Board also granted both Patent Owner’s and Petitioner’s motions to seal and for entry of a protective order.   Continue reading

Denying Motion to Seal That Relied Upon Designation of Documents as Highly Confidential IPR2015-00266

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Takeaway: Merely being designated “highly confidential” by the opposing party in a related district court case is not sufficient to demonstrate good cause to seal documents in an IPR. If a party asserts that a portion of the other party’s submission is confidential, then that other party should file the information as a confidential exhibit and the first party should file a corresponding motion to seal.

In its Decision, the Board denied Patent Owner’s revised motion to seal (Paper 22) and granted Petitioner’s motion to expunge and replace (Paper 28). Previously, the Board issued an order providing guidance as to the requirements for a motion to seal. Patent Owner thereafter filed a motion to seal two deposition transcript exhibits from related district court litigation. Continue reading

Motion for Leave to File Motion for Sanctions IPR2015-01092, 01096, 01102, 01103

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Takeaway:  Petitioner’s alleged threat to file IPRs against Patent Owner, unless Patent Owner pays Petitioner, is sufficient to grant authorization for Patent Owner to file a motion for sanctions against Petitioner.

Based on specific representations made during a telephone conference, the Board authorized Patent Owner to file a motion for sanctions (hereinafter, “Motion”) against Petitioner that includes dismissal of the petitions (IPR2015-01092, IPR2015-1096, IPR2015-01102, IPR2015-01103). Continue reading

Denying in Part Motion to Seal Business Information IPR2014-00736

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Takeaway: A motion to seal must present sufficient facts and meaningful analysis to establish entitlement to the requested relief, and merely because information relates to an activity of a business does not make that information confidential business information.

In its Decision, the Board granted-in-part and denied-in-part the parties’ Joint Motion to Seal. The Motion sought to seal “portions of Patent Owner’s Motion to Dismiss Petition (Paper 34), and either portions or the entirety of 12 exhibits referred to in that Motion.” The Motion also requested entry of a Joint Stipulated Protective Order. The Board granted the Motion with respect to entry of the Protective Order and with respect to email addresses that are contained in Exhibit 2100. The Motion was denied as to all other aspects. Continue reading

Granting in part Motion to Seal IPR2014-00377, 378, 379

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Takeaway: If a party demonstrates good cause to seal an exhibit, either in full or in part, the Board may order that terms of a Protective Order apply to the exhibit; however, parties must accept the risk that introducing confidential information into the proceedings may result in its disclosure because there is a presumption that confidential information relied upon in a final written decision of the Board shall become public and the Board may deny a motion to expunge the information to protect the public interest in maintaining a complete and understandable file history.

In its Decision, the Board granted-in-part Patent Owner’s motion to seal certain exhibits. Continue reading

Final Written Decision IPR2013-00479

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Takeaway: To establish a nexus between commercial success of a computer-related product and a challenged patent claim, evidence beyond publicly-available, generalized hearsay statements is likely to be required, and could even include evidence such as source code.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 18-20, 45, 48, 49, 51, and 54) of the ‘494 patent are unpatentable. The ‘494 patent “relates to computerized research on databases” and “discloses that it improves search methods by indexing data using proximity indexing techniques.” Continue reading

Order Regarding Filing of Exhibits, Corrected Response, and Motion to Seal IPR2014-00367

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Takeaway: If a patent owner fails to file a cited exhibit with its Response and does not request permission to file the unfiled exhibit until after the petitioner files its Reply, the Board may deny the request on the grounds that adding new evidence to the record at such a late stage would unduly prejudice the petitioner.

In its Order, the Board denied Patent Owner’s request to file certain exhibits, authorized Patent Owner’s “corrected” Response, and granted Patent Owner’s motion to seal. Continue reading

Order re Oral Hearing IPR2014-00041, 43, 51, 54, 55

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Takeaway: The Board may postpone the date of the oral hearing to decide motions to seal to determine which documents are part of the public record.

In its Order, the Board postponed the date for the oral hearing in the proceedings and authorized Petitioner’s request to file a Sur-reply in response to Patent Owner’s Reply in support of Patent Owner’s Motion relating to real parties-in-interest. Continue reading