Order on Motions to Seal and for Entry of Protective Order IPR2014-00309

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Takeaway: A party may file a motion to seal such that the information at issue will be sealed pending the outcome of the motion; however, only “confidential information” is protected from disclosure.

In its Order, the Board denied Patent Owner’s request for entry of a non-standard Protective Order and, instead, entered the Board’s default Protective Order.  The Board also denied Patent Owner’s request to file a Motion to Strike Patent Owner’s unredacted response/exhibits for lack of service.

Patent Owner had filed a Motion to Seal accompanied by a proposed Protective Order that differed from the Board’s standard default protective order.  Petitioner opposed.  Patent Owner had also indicated that it intended to ask the Board for authorization to file both a Motion to Strike Patent Owner’s unredacted response/exhibits “for lack of service on Petitioner pending agreement on service of the unredacted documents on Petitioner.”

In a teleconference with the Board, Patent Owner requested the Board to enter its standard default Protective Order if Patent Owner’s proposed Protective Order was denied entry, and to withdraw certain previously-submitted exhibits and to substitute therefor “alternative exhibits, declarations, and a Patent Owner Response and/or exhibits, declarations, and a Patent Owner Response with fewer redactions,” if the default Protective Order was entered.

Under 37 C.F.R. § 42.54(a), the standard for granting a motion to seal is for “good cause.”  In the present case, “Patent Owner bears the burden of proof in showing that the materials identified in the Motion to Seal should be protected from disclosure as requested.”

Patent Owner had filed various unredacted papers, declarations, and exhibits along with a request that portions of these documents be maintained under seal, as well as redacted counterparts to these documents, with its Motion to Seal (and accompanying proposed non-standard Protective Order).  The documents for which Patent Owner had sought protection included documents relating to development of the patented invention, a competitive analysis document, and commercial embodiment sales volume information.

The Board was not persuaded that Patent Owner had met its burden of showing that it would suffer substantial harm if it’s proposed non-standard Protective Order was not entered.  The Board noted that Patent Owner’s request was not supported by testimony or other evidence showing that Patent Owner would be injured if the default protective order was entered.  Instead, Patent Owner had only submitted “vague representations of counsel that the information sought to be protected is ‘non-public confidential’ information, without tying these representations to [Patent Owner’s] proposed changes to the default protective order.”

The Board permitted Patent Owner to substitute the papers in question, but deferred its consideration of the Motion to Seal until the point after which the substitute papers have been filed.  The Board explicitly stated that “[t]he substitute papers may only be a subset of the previously filed unredacted papers” and that “[n]o new legal theories or arguments are permitted.”  The Board said that “[u]pon filing of these substitute papers, [Petitioner] will have immediate access to them under the terms of the default Protective Order, and the Motion to Seal will be decided at a later date.”

Intri-Plex Technologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309
Paper 35: Order on Motion to Seal (and for Entry of Protective Order)
Dated: August 27, 2014

Patent 8,228,640 B2
Before: Michael W. Kim, William A. Capp, and Frances L. Ippolito
Written by: Capp