In a pair of orders addressing confidential information acquired in parallel proceedings, the Patent Trial and Appeal Board (PTAB or Board) denied (1) a request to modify the Board’s default protective order to protect third-party confidential information, and (2) a request for additional discovery to allow the patent owner to submit petitioner’s confidential information subject to a district court protective order.ASML Neth. B.V. v. Energetiq Tech., Inc., IPR Nos. IPR2015-01277; -01279; -01300; -01303; -01377; -01362; -01368; -01375 (PTAB, Feb. 16, 2016) (Parvis, APJ); Meyer Prods., LLC v. Douglas Dynamics, LLC, IPR No. 2015-01247 (PTAB, Feb. 16, 2012) (Worth, APJ).

In ASML, the patent owner sought to revise the Board’s default protective order to submit documents containing third-party confidential information that the patent owner obtained in a parallel proceeding. The patent owner indicated that the third party consented as long as the documents would not be shown to the third party’s competitors’ employees, including the petitioner’s in-house counsel. The petitioner opposed the motion, arguing that its in-house counsel was actively involved in preparing arguments and obtaining evidence for the inter partes review (IPR).

The Board explained that confidential information subject to a protective order in an IPR typically becomes public 45 days after a final judgment, and that there is an expectation that information will be made public where the existence of the information is identified in a final written decision. Furthermore, a motion to expunge the information will not necessarily prevail over the public interest in maintaining a complete and understandable file history.

Ultimately, the Board concluded that the patent owner’s request was premature because the patent owner had not made sufficient efforts to reduce the amount of third-party confidential information. The Board urged the patent owner to work with the third party to reduce the amount of third-party confidential information through redaction and de-designation, and instructed the patent owner to remind the third party that any information submitted may be made public, so that the third party would appreciate the risks associated with submitting such information.

In Meyer, the patent owner sought to submit documents the petitioner had produced in a parallel proceeding, where the documents were subject to a district court protective order. The district court protective order prohibited the use of the documents for any purpose outside of the district court proceeding without the permission of the petitioner. While the patent owner acknowledged that there were no other exceptions to the protective order, the patent owner argued that the documents satisfied the Garmin factors for discovery (IP Update, Vol. 16, No. 4), and suggested that the Board protect the information with a suitable protective order.

The Board declined, finding instead that the patent owner must first obtain permission from the petitioner or the district court. The PTAB explained that the pertinent question was not whether the PTAB could protect the confidential information, but whether the patent owner was complying with the district court protective order. The patent owner was instructed to first seek guidance from the district court if it wished to further pursue the discovery.