Takeaway: The Board may grant an unopposed motion requesting that sealed records in the proceeding be preserved pending the outcome of a possible appeal.

In its Decision, the Board granted Patent Owner’s unopposed motion “requesting that the records in these proceedings be preserved pending outcome of possible appeal.” The Board ordered “that within ten business days of the conclusion of any appeal proceeding, or if no appeal is taken within ten business days of the expiration of the period to file a notice of appeal, Patent Owner may contact the Board for authorization to file a motion to expunge confidential information” and “that the record shall remain undisturbed” until then.

Sealed information, “ordinarily becomes publicly available after final judgment.” A party, however, “may file a motion to expunge confidential information from the record . . . if wishing to preserve its confidentiality.” In this case, “Patent Owner asks that the record be preserved as is, i.e., without removal or disclosure to the public of the information filed under seal, pending possible appeal.” The Board found that “[u]nder the present circumstances, it is reasonable to maintain the record undisturbed pending outcome of any appeal that is taken.”

The Board instructed that “[a]t the conclusion of any appeal proceeding, or if no appeal is taken, Patent Owner may contact the Board for authorization to file a motion to expunge confidential information.” Further, “[a]ny motion to expunge confidential information should address whether the sealed information is truly confidential in light of Mr. Lerner’s testimony,” which “called into question whether the sealed information . . . was truly confidential.” If Patent Owner does not contact the Board, however, “then the information filed under seal will be made public in due course.”

International Business Machines Corp., et al v. Intellectual Ventures II LLC, IPR2014-00587; IPR2014-00786
Paper 49: Decision Granting Request to Preserve Record Pending Appeal
Dated: November 20, 2015
Patent: 6,826,694 B1
Before: James T. Moore, Meredith C. Petravick, and Benjamin D.M. Wood
Written by: Petravick