Which Party Should File Motion to Seal in Inter Partes Review?

7629450_sThe PTAB has taken seriously the importance of public accessibility to information underlying an inter partes review proceeding. As such, motions to seal have been trickier to navigate than might have been expected. One aspect of these motions that has caused some confusion is: Who is the proper party to file a motion to seal? In Clio USA, Inc. v. The Procter and Gamble Company, IPR2013-00438, IPR2013-00448, and IPR2013-00450, the Board denied Petitioner’s Motion to Seal because, while Petitioner sought to enter certain evidence into the record, it was Patent Owner’s information and Patent Owner that wanted the information sealed. As such, it was Patent Owner who should have filed the motion to seal.

In the subject proceedings, Petitioner sought to file deposition testimony as an exhibit to the proceeding. Patent Owner asserted, however, that portions of the subject testimony contained confidential information. To protect the confidentiality of that information, Petitioner filed Motions to Seal in each proceeding.  Decision at 2.

The Board denied the motions, noting that the moving party bears the burden of showing good cause that the subject information should be sealed. To that end, because it was Patent Owner who was asserting that deposition testimony was confidential, it was Patent Owner who should have moved to seal, not Petitioner. Accordingly, Petitioner’s Motion to Seal in each proceeding was dismissed.

Preserving a Complete (and Confidential) Record for Appeal

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §42.56 

Expungement of confidential information: After denial of a petition to institute a trial or after final judgment in a trial, a party may file a motion to expunge confidential information from the record.[/pullquote]

Now that the first wave of Final Decisions have issued from the PTAB, the question has arisen regarding what to do with sealed documents in an IPR record while the decision is appealed.  Pursuant to Patent Office Trial Practice Guide, Rule 42.56, “confidential information that is subject to a protective order ordinarily would become public…45 days after final judgment in a trial.”  That practice runs counter, of course, to the need for a complete record for purposes of appeal.

In Illimina v. Columbia University, IPR2012-00006, the parties filed a Joint Motion asking that the record in the proceeding be preserved pending the outcome of a possible appeal “including preservation of all sealed documents in non-public form.” The Joint Motion alternatively asked that the sealed files be expunged from the record pursuant to 37 C.F.R. § 42.56. The Board decided under the present circumstances, it is reasonable to maintain the record undisturbed pending outcome of any appeal. At the conclusion of any appeal proceeding however, if the parties do not contact the Board, then the information filed under seal will be made public in due course. Decision at 3.