Takeaway: A party moving to expunge documents from the record must show good cause, and demonstrating a “good-faith effort to preserve portions of the record” relevant to the Board’s Decision while striking an “appropriate balance between the public policy for an open record and the legitimate need to protect confidential information from disclosure” will likely be persuasive.

In its Decision, the Board granted Petitioner’s Motion to Expunge certain papers and exhibits. The Board had previously terminated the proceeding and denied Petitioner’s Rehearing Request. Petitioner then filed the instant Motion seeking to expunge “the unredacted, sealed versions of Papers 21, 35, 42, and 48, and Exhibits 2017, 2018, 2020-2033, and 2040.” Petitioner also filed redacted versions of several exhibits.

The Board noted the existence of a public policy for making information in IPR proceedings publicly available, and that only confidential information is to be protected from disclosure. To establish that information is confidential “requires a showing of ‘good cause’ during a proceeding” and that “Petitioner’s interest in expunging it outweighs the public’s interest in maintaining a complete and understandable history of this inter partes review.”

Petitioner argued that Exhibits 2017 and 2018 were agreements that “include highly sensitive commercial information, including financial terms and other details, concerning Petitioner’s supply agreements with McJunkin Red Man Corporation (‘MRMC’).” The disclosure of the provisions in Exhibits 2017 and 2018 would allegedly put Petitioner at a commercial disadvantage in any subsequent negotiations, and Petitioner and MRMC had both treated the exhibits as confidential. Papers 21, 35, and 42 referred to confidential portions of Exhibits 2017 and 2018. Exhibits 2020-2033 and 2040 contained confidential commercial information related to an indemnification dispute between Petitioner and MRMC. Papers 42 and 48 referenced confidential portions of Exhibits 2020-2033 and 2040.

The Board then explained its reliance upon the exhibits and papers subject to the Motion. The Board did not cite Exhibit 2017 in its Termination Order and only cited Exhibit 2018 “to note that the supply agreement was entered into by Petitioner’s parent on its own behalf and/or on behalf of Petitioner’s parent and one or more subsidiaries of Petitioner’s parent.” Exhibits 2020, 2023-2025, 2027-2029, and 2040 were not cited. With respect to the remaining exhibits, Petitioner provided redacted versions that included “portions of those documents relevant to [the Board’s] Termination Order in unredacted form.” The Board also found that “Papers 21, 35, 42, and 48 were not cited in the Termination Order, and redacted versions that are already part of the record maintain the essence of the arguments in those papers.”

In consideration of the record as discussed above, the Board was persuaded that Petitioner demonstrated good cause and that Petitioner “made a good-faith effort to preserve portions of the record relevant to [the Board’s] Termination Order, striking an appropriate balance between the public policy for an open record and the legitimate need to protect confidential information from disclosure.”

The Board found Patent Owner’s arguments unpersuasive. In particular, Patent Owner asserted that information related to Petitioner’s indemnification dispute that was subject to the Motion was essential “for the public to understand the basis for [the Board’s] Termination Order.” However, the Board in its Termination Order “did not discuss specific details of the substance of the dispute itself.” Moreover, the Board noted that the documents subject to the Motion were all filed by Patent Owner yet contained confidential information of Petitioner. “In considering motions to expunge, it is appropriate to guard against peripheral disclosure of a party’s confidential information because arguments were advanced by an opposing party that ultimately proved unimportant to the merits of the proceeding.”

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., IPR2013-00453
Paper 97: Decision on Motion to Expunge
Dated: April 15, 2015
Patent: 5,810,029
Before: Jennifer S. Bisk, James B. Arpin, and Patrick M. Boucher
Written by: Boucher