Takeaway: If a party demonstrates good cause to seal an exhibit, either in full or in part, the Board may order that terms of a Protective Order apply to the exhibit; however, parties must accept the risk that introducing confidential information into the proceedings may result in its disclosure because there is a presumption that confidential information relied upon in a final written decision of the Board shall become public and the Board may deny a motion to expunge the information to protect the public interest in maintaining a complete and understandable file history.

In its Decision, the Board granted-in-part Patent Owner’s motion to seal certain exhibits.

In an earlier decision, the Board granted the parties’ Second Joint Motion for Entry of Stipulated Protective Order. In compliance with that order, Patent Owner filed redacted versions of Exhibits 2028–2036, 2048, 2054, 2079, 2137, 2138, 2145, 2146, 2148, and 2149. The Board concluded that the Motion to Seal, as to the non-public versions of those exhibits, was in condition for allowance and that the terms of the Stipulated Protective Order apply to the exhibits.

The Board then considered whether Exhibits 2013 and 2014, which were inadvertently omitted from the Order, should be sealed. Exhibit 2013 is a claim chart, and Exhibit 2014 is a declaration of Patent Owner’s witness. Patent Owner alleged that each exhibit reflects “its confidential business information;” however, the Board concluded that “[e]ven a cursory review of those exhibits reveals that much, if not all, of the information contained in them is not confidential.” Thus, the Board determined that Patent Owner did not show good cause for sealing the exhibits in their entirety. The Board denied Patent Owner’s Motion to Seal as to Exhibits 2013 and 2014, without prejudice, and permitted Patent Owner to file a renewed motion “that identifies, with particularity, the ‘confidential data’ allegedly disclosed in Exhibits 2013 and 2014, and establishes good cause for sealing such data” and to file and serve public versions of the exhibits, in which only factual confidential information is redacted.

Next, the Board considered Patent Owner’s renewed request to seal the entirety of Exhibits 2058, 2074, 2083, 2105, 2132, and 2142, which it averred contain information with such a “highly confidential nature” that it is “impossible to reasonably redact [them] for public disclosure.” The Board determined that good cause exists to seal the exhibits, based on the content of the Motion to Seal as well as its review of the exhibits.

Finally, the Board reminded the parties that “there is a presumption that confidential information relied upon in a final written decision of the Board shall become public” and that “a motion to expunge the information will not necessarily prevail over the public interest in maintaining a complete and understandable file history.” Accordingly, each party must “accept that risk of publication before placing confidential information into hazard by introducing it into these proceedings.”

Purdue Pharma L.P v. Depomed, Inc., IPR2014-00377, IPR2014-00378, IPR2014-00379
Paper 62: Decision Granting-in-Part Patent Owner’s Motion to Seal with Respect to Certain Exhibits
Dated: March 17, 2015
Patents: 6,635,280 B2 and 6,340,475 B2
Before: Erica A. Franklin, Grace Karaffa Obermann, and Tina E. Hulse
Written by: Obermann