Motion For Sanctions Granted-in-part for Violation of Unentered Protective Order IPR2015-01750


Takeaway: The Board will not excuse conduct constituting breach of a protective order simply because the protective order had not yet been entered, particularly when the parties had agreed to operate with the understanding that it was in place.

In its Order, the Board granted-in-part Petitioner’s motion for sanctions against Patent Owner.  The Board noted that Petitioner has the burden to persuade the Board that sanctions are warranted.  In general, the Board reviews: (i) whether a party has performed conduct that warrants sanctions; (ii) whether the moving party has suffered harm from that conduct; and (iii) whether the sanctions requested are proportionate to the harm suffered by the moving party. Continue reading

Decision Denying Petitioner’s Motions to Expunge IPR2014-00935, -00936, -00938


Takeaway: The Board may not consider a motion to expunge allegedly confidential information subject to a protective order until after the resolution of any appeal or until after the time for appeal.

In its Decision, the Board denied Petitioner’s Motions to Expunge certain materials and ordered that the record be “preserved until after the resolution of any appeal or time for appeal.” After Final Written Decisions were issued in the related proceedings, Petitioner sought to expunge materials it deemed to be confidential. Continue reading

Granting Motion to Seal IPR2014-00216


Takeaway: If a party is attempting to modify the default protective order, it must show good cause for doing so, including the inclusion of heightened restrictions on who can view the information.

In its Decision, the Board granted Patent Owner’s Motion to Seal. Patent Owner’s Motion proposed sealing certain evidence in support of its Motion to Amend.  It also proposed the entry of a protective order that differs from the default protective order by creating a special class of confidential information marked “Attorney’s Eyes Only” that would only be available to the opposing party’s outside counsel and experts.  Petitioner did not contest the designation of information as confidential, but argued that it should be subject to the standard protections, not to the heightened “Attorney’s Eyes Only” protection. Continue reading

Granting Motion to Seal IPR2014-00105


Takeaway: Even though parties may agree to proposed modifications to the Board’s default protective order, if sufficient justification for those modifications is not provided, the Board may not accept them.

In its Decision, the Board granted Patent Owner’s unopposed Motion to Seal portions of certain documents and accepted a revised version of the parties’ proposed protective order. Continue reading

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


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. Continue reading

Order Granting Motion for Additional Discovery IPR2014-00746


Takeaway: The Board may grant a request to file a motion for additional discovery regarding Petitioner’s alleged privity with a party involved in litigation where the authorization is warranted by allegations that Petitioner’s SEC filings and standard terms of sale reveal an indemnification obligation to that party.

In its Order, the Board granted Patent Owner’s request to file a motion for additional discovery regarding its allegations that Petitioner is in privity with a third party in a proceeding in federal district court in Texas.  The Board also authorized Petitioner to file an opposition to Patent Owner’s motion, and further authorized Patent Owner to file a reply to Petitioner’s opposition if necessary. Continue reading

Denial of Leave to File a Motion to Stay Prosecution of Co-Pending Application IPR2014-00115


Takeaway: The Board is not statutorily authorized to take jurisdiction over pending patent applications that are related to the patent challenged in the proceeding.

In its Order, the Board summarized the initial conference call, which was held on May 22, 2014, and denied authorization for Petitioner to file a motion to stay prosecution of a co-pending patent application.

With respect to the motion to stay, citing EMC Corp. v. Personal Web Technologies, LLC., IPR2013-00083 (PTAB) (Paper 12), the Board stated that while the Board may stay a reexamination proceeding pursuant to 35 U.S.C. § 315(d) “where the involved patent is the subject of reexamination proceeding, there is nothing in the statute that extends that authority to allow the Board to take jurisdiction over related applications.”  Thus, the Board did not authorize Petitioner to file a motion to stay prosecution of co-pending application 13/011,164. Continue reading

Denying Motions to Compel IPR2013-00453


Takeaway: Just as in deciding motions for additional discovery, the Board is guided by the factors set forth in Garmin v. Cuozzo when deciding motions to compel production.

In its Decision, the Board denied Patent Owner’s Motion to Compel production of unredacted documents, or in the alternative, production of unredacted documents for in camera review. Continue reading

Conditionally Granting Motion to Seal IPR2013-00358


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. Continue reading

Denying Motion for Leave to File Motion for Additional Discovery CBM2013-00037, 38


Takeaway: The Garmin factors regarding the need for additional discovery are also applicable to CBM reviews, but may be modified to reflect the lower good-cause standard applied in CBM reviews.

In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion for Additional Discovery. Specifically, Patent Owner requested documents concerning alleged copying by Petitioner of a commercial product released by Patent Owner’s predecessor-in-interest and commercial success of Petitioner’s product alleged to infringe the patents at issue. These documents are subject to a district court protective order that precludes their use in this proceeding and Petitioner declined to waive its claim that the documents are subject to the provisions of the protective order. Continue reading