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

Filing 705

ORDER 1. Defendants' motions for relief from the stipulated protective order, Dkt. 681 and Dkt. 684, are GRANTED as set forth above. 2. Defendants' motion for leave to file reply, Dkt. 698, is GRANTED. Signed by District Judge James D. Peterson on 09/06/2016. (EJT)

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

ULTRATEC, INC. and CAPTEL, INC.,
Plaintiffs,
ORDER

v.
SORENSON COMMUNICATIONS, INC. and
CAPTIONCALL, INC.,

14-cv-66-jdp

Defendants.
CaptionCall (which the court will use as shorthand for the two defendants) moves for
relief from the stipulated protective order (Dkt. 23-1). Dkt. 681 and Dkt. 684. CaptionCall
wants to use confidential commercial information from Ultratec (shorthand for plaintiffs) in
an inter partes review of Ultratec’s ’415 patent, to rebut Ultratec’s contention that secondary
considerations support the validity of the patent. Ultratec opposes, contending that
confidential information presented to PTAB will necessarily be disclosed to the public if
PTAB bases its decision on that information. Dkt. 691 and Dkt. 694. CaptionCall seeks a
reply, Dkt. 698, which the court will accept and consider.
The court is satisfied that Ultratec has a legitimate interest in maintaining the
confidentiality of its commercial information. But the court is not persuaded that PTAB
would necessarily disclose legitimately confidential information, even if PTAB based its
decision on that information. As the examples presented in CaptionCall’s reply show, PTAB
handles confidential information just as courts in the Seventh Circuit do. Any confidential
information will be presented to PTAB under seal, but ultimately, if that information is a
basis for PTAB’s decision, Ultratec will have to convince PTAB that its confidential
information warrants protection from public disclosure, just as it would have to do in this

court. Of course, the fate of its confidential information is largely in Ultratec’s hands, as it
can render this information irrelevant by abandoning or modifying its secondary
considerations arguments.
But it would be grossly unfair to CaptionCall to allow Ultratec to defend the nonobviousness of the ’415 patent on the basis of commercial success, while Ultratec uses the
protective order in this case to prevent CaptionCall from rebutting that evidence. The court
will grant CaptionCall relief from the protective order on the same terms that it previously
granted relief to Ultratec.
CaptionCall may file the documents identified in Dkt. 681 and Dkt. 684 with PTAB,
but they must do so in a manner that, with the exception of the disclosure to PTAB itself,
presents the documents’ confidentiality consistent with the terms of this court’s protective
order.

ORDER
IT IS ORDERED that:
1. Defendants’ motions for relief from the stipulated protective order, Dkt. 681 and
Dkt. 684, are GRANTED as set forth above.
2. Defendants’ motion for leave to file reply, Dkt. 698, is GRANTED.
Entered September 6, 2016.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

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