Takeaway: The Board will weigh a party’s need to protect confidential information against the public’s interest in maintaining a complete and understandable file history of the case, when determining whether to seal confidential information.

In its Decision, the Board granted all four of Petitioner’s motions to seal and entered the stipulated Protective Order.

Petitioner filed four separate Motions to Seal attempting to seal (1) certain exhibits, (2) Petitioner’s Reply Brief on Real Party in Interest, (3) Patent Owner’s First Opposition and Patent Owner’s Motion for Additional Discovery; and (4) Petitioner’s Opposition to Patent Owner’s Motion for Additional Discovery. Petitioner filed an unredacted, confidential version and a redacted, public version of each of the exhibits and pleadings that Petitioner moves to seal. Patent Owner filed an Opposition to each of the Motions.

Petitioner identifies three categories of alleged confidential information in the exhibits and pleadings that it wishes to seal, including: (1) identities of its members; (2) its membership terms and business strategy; and (3) its financial information. Petitioner also filed a Protective Order that was stipulated to by the parties.

The record for an inter partes review shall be made available to the public, except as otherwise ordered, and a document filed with a motion to seal shall be treated as sealed until the motion is decided. A motion to seal is granted if there is “good cause.” See 37 C.F.R. § 42.54.

Regarding identities of Petitioner’s members, Petitioner argues that it should remain under seal because of concerns that Petitioner’s members would experience retaliation from non-practicing entities (“NPEs”) if the identities became public. Petitioner also argues that the list is a trade secret. Specifically, Petitioner contends that the list of its members would be valuable to NPEs because it could identify litigation targets. Patent Owner argues that Petitioner does not provide sufficient evidence to supports its assertion that the list is a trade secret or that there is a concern about retaliation. The Board agrees that Petitioner has not provided much evidence, but also credits the fact that the ’444 patent has been asserted against ten companies in district court patent infringement proceedings. In weighing Petitioner’s needs to protects its members’ identities against the public’s interest in maintaining a complete and understandable file history of the case, the Board determined that as long as none of Petitioner’s members are real parties-in-interest, the public has little interest in knowing the identities. Accordingly, the Board concluded that Petitioner had shown good cause to seal the identities of its members.

Regarding membership terms and business strategy, Petitioner argues that such information is guarded to protect its business and that such information are trade secrets, because its disclosure would provide Petitioner’s competitors with a roadmap of how to replicate their business model. The Board was persuaded by Petitioner’s arguments, and was persuaded that Petitioner had shown good cause to seal its membership terms and business strategy.

Regarding financial information, Petitioner argues that the redactions related to Petitioner’s financial information relate only to the financial information, and do not affect the underlying arguments made by Patent Owner. The Board agreed and was persuaded that Petitioner had shown good cause to seal its financial information.

The stipulated Protective Order differed from the default protective order in a number of ways, including: (1) an additional class of information marked “highly confidential – attorneys’ eyes only” was added with additional restrictions; (2) more extensive procedures for filing documents with regard to a party filing a marked document received from another party; and (3) marked information cannot be disclosed to support personnel unless they have also signed the Acknowledgement.

Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252
Paper 40: Decision on Petitioner’s Motions to Seal
Dated: February 27, 2015
Patent: 5,930,444
Before: Neil T. Powell, Gregg I. Anderson, and J. John Lee
Written by: Powell