Take Care When Modifying the PTAB’s Default Protective Order

By Sachin Patel and Josh Nightingale –

After an initial denial, the PTAB recently granted Unified Patents’ motions for entry of protective order and for seal in Unified Patents, LLC v. Electronics and Telecommunications Research Institute, IPR2020-01048, Paper 33 (PTAB May 29, 2021) because the motions adequately persuaded the PTAB about the nature of the alleged confidential information to be sealed, and the measures did not impose restrictions on employees and representatives of the PTO.

Generally, a party “may file a motion to seal where the motion to seal contains a proposed protective order, such as the default protective order set forth in the Office Patent Trial Practice Guide.” 37 C.F.R. § 42.54(a). The PTAB may enter a protective order to protect a party or person from disclosing confidential information upon a showing of “good cause.” Id.; see also Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 34 (PTAB Mar. 14, 2013). A protective order entered by the Board may forbid the discovery or disclosure of confidential information or specify the terms of such discovery or disclosure, among other measures.  See 37 C.F.R. § 42.54(a) (enumerating non-exhaustive list of measures that may be included in protective order).

On April 12, 2021, Unified Patents filed its initial motions for entry of protective order and for seal.  The proposed protective order differed from the PTAB’s default protective order, and Patent Owner agreed to this proposed order. However, the PTAB denied Unified Patents’ motion for a protective order. The PTAB stated: “Section 2(D) of the proposed order imposes obligations on ‘[e]mployees and representatives of the United States Patent and Trademark Office who have a need for access to the confidential information,’ that are not present in the Board’s default protective order.” Unified Patents, Paper 28 at 2.  Departing from the default protective order, Unified Patents had moved a section pertaining to “Support Personnel” with language referencing “the foregoing persons” below a section pertaining to “The Office,” creating such an obligation. Unified Patents, Paper 27, Attachment A.

On May 18, 2021, Unified Patents filed its second motions for entry of protective order and for seal. Unified Patents’ motion for entry of protective order stated how it rectified its earlier mistake, explaining that “[p]revious Section 2(D) of Exhibit 1029 appeared to impose on employees and representatives of the Office the obligation to inform support personnel of those individuals listed in previous 2(C) of the terms and  requirements of the Protective Order.” Unified Patents, Paper 31, at 3-4. As a result, “[i]n the Revised Protective Order, Employees and representatives of the United States Patent and Trademark Office are now set forth in Section 2(D), such that there are no obligations upon employees and representatives of the Office.” Id. at 4. Unified Patents’ motion to for seal, relying on factors from Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018), argued 1) the information to be sealed contained sensitive business and financial information pertaining to how it conducts business with its members; 2) competitors could replicate Unified Patents’ business model leading to concrete harm; 3) the information to be sealed is unrelated to patentability of the patent-in-issue; and 4) the interest in maintaining confidentiality outweighs the strong public interest in an open record. Unified Patents, Paper 30, at 3–7.

The PTAB granted the motions for entry of protective order and for seal. Unified Patents, LLC, Paper 33. The PTAB noted that the deficiencies from Unified Patents’ first motion “have been cured,” and that they are “persuaded” that the documents sought to be sealed contain “confidential information that should be protected under the Modified Protective Order.” Unified Patents, LLC, Paper 33, at 2.

Takeaway: When modifying the PTAB’s Default Protective Order, make sure to scrutinize how the various provisions interact with each other.