Ultratec, Inc. et al v. Sorenson Communications, Inc. et al

Filing 676

ORDER granting 668 Emergency Motion for Relief from the Protective Order. Signed by District Judge James D. Peterson on 3/10/16. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ULTRATEC, INC. and CAPTEL, INC.,
Plaintiffs,
v.

ORDER

SORENSON COMMUNICATIONS, INC. and
CAPTIONCALL, LLC,

14-cv-66-jdp

Defendants.
The parties are in the midst of multiple inter partes review proceedings before the
Patent Trial and Appeal Board (PTAB) involving patents not directly at issue in this case.
Plaintiffs have moved PTAB for dismissal on the ground that defendants have failed to
disclose all of the real parties-in-interest. To support their motion, plaintiffs seek to use two
documents from this case: sets of financial statements (bates numbered CC21821-CC21856
and CC21857-CC21898). But these documents are subject to this court’s protective order,
which prohibits their disclosure to third parties. Accordingly, plaintiffs have moved this court
for relief from the protective order so that plaintiffs may file them with PTAB.1 Dkt. 668.
The court held a telephonic hearing on March 9, 2016, and granted plaintiffs’ motion
for relief, for reasons explained at the hearing and summarized here. As a preliminary matter,
the parties agreed that the two documents, marked as “Highly Confidential—Outside
Counsel Only—Prosecution Bar Information,”

should be re-designated as “Highly

Confidential—Outside Counsel Only Information.” The documents are ordered re-designated
as agreed.
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Plaintiffs’ request did not itself violate the protective order by describing the information at
a high level of abstraction.

The court also grants relief from the protective order’s restrictions on the use of these
two documents so that plaintiffs may submit them under seal to PTAB. This ruling does not
circumvent the PTAB order denying plaintiffs’ request to conduct discovery because these
documents had already been produced in discovery in this case. Defendants have not shown
that they would be prejudiced or unfairly disadvantaged by allowing plaintiffs to file the two
documents under circumstances in which their confidentiality is preserved. Whether the
information in these documents is cumulative or even relevant to plaintiffs’ motion to
dismiss, or whether plaintiffs’ motion is appropriate in the first place, are all matters for
PTAB to decide.
Plaintiffs may file the two documents with PTAB, but they must do so in a manner
that, with the exception of the disclosure to PTAB itself, preserves the document’s
confidentiality consistent with the terms of this court’s protective order. Based on the
information provided at the hearing, plaintiffs will avail themselves of the provisional sealing
procedures available for proceedings in PTAB.

Entered March 10, 2016.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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