Order Regarding Motion to Seal IPR2014-00097, 98


Takeaway: The burden to show good cause to seal an exhibit is on the party asserting that the exhibit contains confidential information.

In its Order for each of the proceedings, the Board authorized Petitioner to file a motion to seal Exhibit 2014 (“the Exhibit”) and Patent Owner’s Response, authorized Patent Owner to file an opposition by September 2, 2014, and did not authorize Petitioner to file any reply.  In each of the proceedings, the Board denied Patent Owner’s motion to seal and ordered that the Exhibit and Patent Owner’s Response shall remain provisionally sealed until disposition of Petitioner’s motion.  The Board indicated that if Petitioner did not file its motion to seal by a certain date, then the Exhibit and the confidential/unredacted version of Patent Owner’s Response would be made public.

Patent Owner had filed a motion to seal specific sections of the Exhibit and its Response in each of the subject proceedings.  Patent Owner itself did not believe that the Exhibit contained any confidential information, but noted that Petitioner had asserted otherwise.  Thus, the Board indicated that “[b]ecause Petitioner asserts that Exhibit 2014 contains confidential information, rather than Patent Owner, it is Petitioner’s burden to show good cause to seal the exhibit and Response in each proceeding” (emphasis in original).  Consequently, rather than granting Patent Owner’s motions to seal as filed, the Board denied Patent Owner’s motions, stating that Petitioner could file its own motions to seal if Petitioner thought that the information in question should be kept confidential.  The Board went on to say that any such motions must set forth the reasons why Petitioner maintains that the information in question from the Exhibit 2014 and Patent Owner’s Responses should remain confidential and not be made publicly available.

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, IPR2014-00098
Paper 29: Order on Conduct of the Proceedings
Dated: August 19, 2014
Patents 7,356,498 B2; and 7,980,457 B2
Before: Justin T. Arbes, Rama G. Elluru, and James B. Arpin
Written by: Arbes