Takeaway: A motion to seal may be conditionally granted to balance the protection of potentially confidential information against strong public policy favoring the public availability of information filed in an inter partes review.
In its Decision, the Board addressed a Motion to Seal filed by Patent Owner, in which Patent Owner moved to seal certain exhibits because they contained information including confidential customer names, confidential Patent Owner trade secrets, or “other confidential commercial information.” In connection with its Motion to Seal, Patent Owner had filed redacted versions of each of these exhibits, which were publically available.
The Board, taking into account the narrowly redacted testimony and stated confidentiality of the testimony by Patent Owner, conditionally granted Patent Owner’s Motion to Seal for the duration of the proceeding. This was done instead of denying the Motion to Seal, which would have made the exhibits in question immediately publicly available. The Board indicated that if its final written decision substantively relies on information in either of the conditionally sealed exhibits, then the Board would unseal any such exhibit. Moreover, if any sealed exhibit does not contain any information substantively relied on by the Board in its final written decision, then the Board may expunge from the record any such exhibit.
Each party had proposed protective orders that differed from the Board’s default protective order. Patent Owner’s proposed protective order recommended two tiers of confidential information, and to this Petitioner added a provision for challenging confidentiality designations. The Board found that a two-tiered protective order with a provision for challenging confidentiality designations was appropriate, but did not accept Petitioner’s proposed addition to Patent Owner’s protective order because it would automatically apply a proposed new designation to a document after a certain time without Board authorization. Thus, Patent Owner’s proposed protective order was adopted.
Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358
Paper 76: Decision on Motions to Seal
Dated: May 16, 2014
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Braden