Takeaway: Confidential information will be made public if the Board relies on it when rendering its Final Written Decision, and the Board may decide to make public any other confidential information provided in a USPTO proceeding to complete the record. One should determine if the evidence provided in a document containing confidential business information could be shown adequately through other means.
In the Order, the Board requested additional briefing on what information should be protected under seal. Petitioner and Patent Owner continued to dispute over what could be redacted in certain confidential documents when submitting them into the record. The Parties agreed to submit two “non-public” versions, i.e. a redacted version and a non-redacted version. In the redacted documents, the non-redacted portion would constitute information that the Patent Owner “needs” to make its case. Petitioner wanted both versions to remain under seal and intended to file a motion to expunge both versions at the end of the trial, except any version that the Board relied upon in a final written decision. Continue reading
Takeaway: The Board strongly prefers that the parties adopt the default protective order, and if a party files “highly confidential” materials that are relevant to patentability, then that party runs the risk that those materials may be made public.
In its Order, the Board declined to adopt Petitioner’s proposed protective order. The Petitioner and Patent Owner disagreed on whether documents submitted in the IPR would still be governed by the district court protective order. To protect sensitive material, the Petitioner proposed a protective order in the IPR that was similar to the district court protective order. Because the Patent Owner refused to accept the proposed protective order, a conference call with the Board was called. The Board did not find any of the Petitioner’s reasons sufficient to modify the default protective order. For example, the Board was not persuaded by Petitioner’s concern that Patent Owner’s in-house counsel are substantively involved in decision-making about their research and development efforts, such that the “highly confidential” materials would give Patent Owner a competitive advantage. Continue reading