The PTAB has rules for sealing evidence, but they are different from those in district court, like much else at the PTAB. Both parties in Google Inc. v. Summit 6 LLC, IPR2015-00806, got tripped up by them.
In district court, information designated by a party as confidential is treated as such by court until that designation is challenged by the opponent and ruled on by the judge. In the PTAB, information is not treated as confidential until a motion requesting such treatment is granted.
The proponent of confidential information must file it under seal (most typically by designating its availability as “Board and Parties Only” in the PTAB’s electronic filing system) and accompany it with a motion to seal. The motion to seal must demonstrate that the material sought to be sealed is confidential, and it must include a proposed protective order. The PTAB prefers that the parties adopt its default protective order. A redacted version of any paper or exhibit filed under seal also must be submitted.
The parties here had their motions to seal denied (decision for patent owner; decision for petitioner), in both cases because they had not established that the material sought to be sealed was, in fact, confidential information. But rather than deny the motions and unseal the affected documents, a potentially damaging act, the PTAB instead allowed both parties to correct their motions.
The Patent Owner also had sought to seal an exhibit containing a contract it had made with a third party. In this case, the PTAB conditionally granted the motion to seal but warned the Patent Owner that the exhibit would be unsealed if relied upon in a final written decision.
Thus we see the fundamental paradox in how the PTAB handles confidential information: it remains confidential only if it doesn’t matter. The PTAB’s rationale here is that the public is entitled to know the facts underlying a patentability determination, especially in the case of a decision sustaining patentability. If the public is to be excluded from practicing an invention on the strength of certain facts that were persuasive to the PTAB, then the public has the right to know what those facts are.
Parties can encourage the PTAB not to reveal confidential information by making redactions as small and focused as possible. If the confidential information in question were, say, a sales figure, the party proffering this evidence should consider redacting only the exact figure without obscuring the general magnitude. For example, the party could redact a passage that reads “$203 million in sales” as either “$███████████ in sales” or as “$███ million in sales.” The latter option may be preferred because it both conceals the exact figure and models for the PTAB an acceptable way of discussing the evidence.
The affected party probably can live with this level of disclosure in some circumstances but has to be prepared for the possibility that confidential information will be unsealed entirely. Parties must take this risk into account when deciding what confidential information, if any, they will submit in support of their arguments. They must also consider what obligations they have when filing confidential information owned solely by or jointly with third parties. A good guiding principle here is to remember that confidential information is someone’s property, and those property rights must be respected to the greatest extent possible.