Takeaway: Stating that making information public “could prejudice” the moving party or a third party is not enough to make the requisite showing in a motion to seal.

In its Order, the Board denied Petitioner’s Motion to Seal an exhibit to its Petition. The Board began by stating there is a strong public policy for making all information filed in aninter partes review open to the public, but noted that “confidential information” can be protected from disclosure.  “Confidential information” is defined as “trade secret or other confidential research, development, or commercial information.”  The moving party bears the burden of proof in showing it is entitled to the requested relief.

Petitioner argued that the exhibit, a Master Engagement Agreement and a Letter Addendum to the Agreement, contained confidential business information of Petitioner and a third party regarding the type of agreement they entered into for relevant products and the particular terms of the agreement. Petitioner contended that disclosure of the terms “could prejudice them in future negotiations on similar agreements.”  The Board did not find these arguments persuasive because the only part of the Agreement that was redacted was an introductory portion and part of the indemnification section.  Further, Petitioner did not explain how disclosure of the Agreement and Addendum would prejudice itself or the third party because it only asserted there could be prejudice.  Additionally, in the concurrently-filed Decision Denying Institution, the Board relied on the exhibit in determining that the third party is a real party-in-interest.  Therefore, the public’s interest in maintaining a complete file history outweighs Petitioner’s interest in protecting the alleged confidential information.

First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, IPR2014-00720
Paper 9: Order on Motion to Seal Under 37 C.F.R. § 42.54
Dated: October 17, 2014
Patent: 7,302,683 B2
Before: Sally C. Medley, Meredith C. Petravick, and James P. Calve
Written by: Calve