If you are involved in an IPR and you are contemplating whether
to rely on your own confidential information as part of a filing,
you need to consider the risk that the Board will deny your motion
to file under seal because it relied on that confidential
information. In Green Cross Corp. v. Shire Human Genetic
IPR2016-00258, the patent owner submitted several exhibits
containing its confidential information and moved to file those
exhibits under seal. The Board granted patent owner's motion to
seal all but one of the exhibits, Exh. 2106. Patent owner and
patent owner's experts extensively relied on Exh. 2106.
The Board found that, although patent owner had focused in its
preliminary response on one figure of Exhibit 2106, the highlighted
figure "is best understood in the context of the entire
document." Green Cross Corp. v. Shire Human Genetic
Therapies, Inc., IPR2016-00258, Paper No. 91 at 2 (PTAB Mar.
31, 2017). Not only that, but the Board relied heavily on that
exhibit in the Final Written Decision. For all these reasons, the
Board denied patent owner's motion to seal.
Because the information sought to be protected is central to our
Final Written Decision (Paper 89), we find that Patent Owner's
desire for confidentiality is largely outweighted [sic] by the
strong public interest in having an open record. Accordingly, we
deny Patent Owner's Motion with respect to Exhibit 2106.
Practitioners should think carefully about whether to rely on
their own confidential information in an IPR. If the Board decides
to rely on that information in its decisions, your motion to seal
may be denied and your confidential information opened up to the
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.
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