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.