Takeaway: Parties with in-house counsel registered in the PRPS system may file confidential documents in PRPS as “Board Only.” Parties may consider providing the Board with redacted versions of confidential documents in case the confidential information is relied upon in a final written decision, but such requests may be premature if the Board has not yet determined what it would rely upon.
In its Order, the Board conditionally granted the parties’ motions to seal for the duration of the proceeding, granted Patent Owner’s motion to expunge, and denied Patent Owner’s request for authorization to file a motion to submit supplemental information.
With regard to the motions to seal, the Board noted the strong public policy in favor of making information filed in an IPR open to the public. The standard for granting a motion to seal is “for good cause,” and the movant must establish that the information to be sealed constitutes confidential information.
The parties’ motions to seal were based on two allegedly confidential pieces of information: (1) the cross-examination testimony of two Patent Owner witnesses and (2) documents Patent Owner produced in response to Petitioner’s granted motion for additional discovery related to evidence of commercial success. With respect to the cross-examination testimony, the Board had previously conditionally sealed the information (Paper 76) and conditionally sealed the documents, once again, on the same grounds. With respect to the documents produced by Patent Owner relevant to commercial success, Petitioner had filed the documents with its motion to exclude as “Board Only” in the PRPS filing system. This was done because Petitioner’s in-house counsel was registered in PRPS and would otherwise have access to Patent Owner’s allegedly confidential information. The Board agreed with Patent Owner that the documents, at least in part, contained confidential information pertaining to Patent Owner’s business, and ordered that they remain sealed as “Board Only.”
The Board reminded the parties that if the Board relies upon any sealed document in its final written decision, then such document would be unsealed. If not relied upon, the document may be expunged by an Order of the Board. Patent Owner had requested that it be allowed to provide the Board with redacted copies of the sealed documents in case the Board relies upon them in the final decision. The Board stated that the request was premature but that it would take into account the request in preparing the final written decision.
Patent Owner moved to expunge certain documents that were filed under seal, without an accompanying motion to seal, in the previously-granted motion for additional discovery. The parties explained that the materials were not necessary in the decision granting the additional discovery, Patent Owner had already complied with the ordered production, and not dispute remained regarding the requested discovery. The Board was persuaded and ordered that the materials be expunged.
The Board next addressed the oral hearing. The Board explained that although certain materials had been sealed, “the parties are capable of presenting their arguments . . . without discussing confidential information.” Thus, the hearing is to be kept open to the public.
Finally, the Board addressed Patent Owner’s request for authorization to file, as supplemental information under 37 C.F.R. § 42.123(a), signed copies of the documents it produced related to commercial success. The Board was not persuaded that the supplemental information was warranted. The Board explained that the production was ordered on the basis that Patent Owner’s expert relied upon the documents to prepare sales projections in support of the assertion of commercial success. It was undisputed that the expert did not rely upon the later signed copies Patent Owner sought to submit. Thus, the Board held that the relevance of the original documents did not apply to the later signed copies.
Schott Gemtron Corp. v. SSW Holding Company, Inc., IPR2013-00358
Paper 97: Order on Conduct of the Proceeding
Dated: June 18, 2014
Patent 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Arbes