Takeaway: That a patent owner may have availed itself of the commercial benefits of its patent grant in negotiating with customers and potential customers does not, without more, justify sealing portions of the record from public disclosure.

In its Order, the Board denied Patent Owner’s post-hearing motion to expunge sealed versions of certain exhibits. Specifically, Patent Owner sought to seal deposition transcripts of two Saint-Gobain employees and named inventors of the ‘640 patent that was challenged in the instant IPR proceeding.

The rules “provide that after final judgment in a trial, a party may file a motion to expunge confidential information from the record.” See 37 C.F.R. § 42.56. In support of the instant motion, “Saint-Gobain submitted redacted versions of Exhibits 1024 and 1025 that it desires to substitute in lieu of previously redacted versions of the depositions.” Saint-Gobain contends that the depositions “contain confidential materials falling into one or more of the following categories: A. Manufacturing Practices; B. Customer Information; and C. Sales Insights and Customer Negotiations.”

The Board addressed each category in turn.

With respect to Saint-Gobain’s manufacturing practices (A), “Saint-Gobain argues that Intri-Plex’s trial counsel went far afield in the questioning of Woodhead and Slayne, delving into information that is not relevant to this proceeding and which the Board did not rely on in rendering its Final Decision.” The Board generally agreed, but noted that “the mere fact that information is not relevant does not make it confidential.” The Board analyzed the testimony and found that the testimony was not confidential because “a person of ordinary skill in the art would immediately recognize how to manufacture such a tolerance ring following a brief inspection of a product sample.”

With respect to customer related information (B and C), Saint-Gobain “seeks to redact each and every mention of the name of one of its customers” and further “contends that we should permit redaction of customer-specific contract terms and information, and ‘sales insights.’” Concerning the former, the Board did “not view the names of Saint-Gobain’s customers to be sufficiently confidential to merit the protection sought.” Moreover, the evidence showed that “there are only a handful of manufacturers of Winchester disk hard drives worldwide and their identities are well known.” Concerning the latter, the Board reviewed the transcripts and did “not discern that any of the testimony is of such sensitivity that Saint-Gobain will experience commercial harm if the subject testimony is disclosed to the public.” Instead the testimony “relates [] facts at a very general, non-specific level” concerning its patent protection on its tolerance ring design. “The prospect that Saint-Gobain may have availed itself of the commercial benefits of its patent grant in negotiating with customers and potential customers does not, without more, justify sealing portions of the record of this proceeding from public disclosure.”

Thus, the Board denied Patent Owner’s Motion to Expunge.

Intri-Plex Technologies, Inc. et al. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-00309
Paper 92: Order Denying Motion to Expunge
Dated: October 2, 2015
Patent: 8,228,640 B2
Before: Michael W. Kim, William A. Capp, and Frances L. Ippolito
Written by: Capp