United States: What Information Will The USPTO Allow To Be Sealed During An IPR?

The Patent Trial and Appeal Board (PTAB) issued a decision addressing the treatment of confidential information submitted during an inter partes review (IPR). In Garmin Int'l Inc. v. Cuozzo Speed Tech. L.L.C., IPR2012-0001, Paper 36 (April 5, 2013), PTAB Judge Jameson Lee carefully addressed whether a range of information could be properly sealed (even though the motion to seal itself was unopposed).

Of particular interest, exchanges between the inventor and his patent attorney, submitted to prove pre-filing conception and reasonable diligence, were not permitted to be sealed. Judge Lee balanced the "strong public policy for making all information filed in an inter partes review in support of a substantive argument open to the public" against the inventor's statement of prejudice. The inventor acknowledged that attorney client privilege had been waived with respect to the documents reflecting communications with his attorney, but argued that making the documents available to the public "could impose a heavy burden on [him] to defend against the broad-waiver argument which, although without merit, likely would be raised by other parties." Judge Lee rejected that argument, stating that "the strong public interest in having open access to factual evidence submitted by a party in support of a substantive contention" outweighed the alleged prejudice. On the other hand, Judge Lee found that personal confidential information having no relevance to the case and unimportant business confidential information may be sealed.

The ruling provides helpful guidance for preparing motions to seal during inter partes review and raises interesting questions regarding the confidentiality of conception and diligence documents in particular. The ruling demonstrates that an inventor seeking to seal confidential materials should be prepared to provide a detailed explanation of any prejudice that would result from public disclosure of the information on an item-by-item basis, keeping in mind the public interest.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.