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Be careful when changing the default protection order of PTAB | Jones Day


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After a first refusal, the PTAB recently granted the unified patent requests for the entry of a protection order and for the seal in Unified Patents, LLC v. Electronics and Telecommunications Research Institute, IPR2020-01048, Paper 33 (PTAB May 29, 2021) because the motions sufficiently persuaded the PTAB of the nature of the alleged confidential information to be sealed, and the measures did not place restrictions on employees and representatives of the PTO.

Generally, a party “may file a motion for sealing where the motion for sealing contains a proposed protection order, such as the default protection order set out in the Guide to Practice in Patent Litigation of the United States. ‘Office’. 37 CFR § 42.54 (a). The PTAB can issue a protection order to protect a party or an individual from the disclosure of confidential information upon presentation of “good cause”. Identifier.; see also Garmin Int’l, Inc. v. Cuozzo Speed ​​Techs. SARL, IPR2012-00001, article 34 (PTAB March 14, 2013). A protection order issued by the Commission may prohibit the discovery or disclosure of confidential information or specify the terms of such discovery or disclosure, among other measures. See 37 CFR § 42.54 (a) (listing a non-exhaustive list of measures that may be included in the protection order).

On April 12, 2021, Unified Patents filed its first motions for entry of a protection order and for the seal. The proposed protection order differed from the PTAB’s default protection order, and the patentee accepted this proposed order. However, the PTAB denied Unified Patents’ petition for a protection order. The PTAB said: “Article 2 (D) of the proposed ordinance imposes obligations on”[e]employees and representatives of the United States Patent and Trademark Office who need access to confidential information ‘, which is not included in the Commission’s default protection order. ” Unified patents, Paper 28 to 2. Departing from the default protection order, Unified Patents had moved a section relating to “support staff” with wording referring to “the above-mentioned persons” below a section relating to “the Office”, creating such an obligation. Unified patents, Document 27, Attachment A.

On May 18, 2021, Unified Patents filed its second motions for entry of a protection order and for the seal. Unified Patents’ motion for entry of a protection order indicated how it had rectified its earlier error, explaining that “[p]Former Section 2 (D) of Exhibit 1029 appeared to impose an obligation on employees and officials of the Office to inform support staff of the persons listed in Precedent 2 (C) of the conditions and requirements of the order. protection. ” Unified patents, Paper 31, at 3-4. Therefore, “[i]In the revised Protection Order, employees and representatives of the United States Patent and Trademark Office are now defined in Section 2 (D), so there is no obligation for them. employees and representatives of the Office. Identifier. to 4. Application for unified patents to obtain the seal, based on factors of Argentum pharmacy. LLC v Alcon Research, Ltd., IPR2017-01053, Document 27 (PTAB January 19, 2018), argued that 1) the information to be sealed contained sensitive business and financial information about the way it does business with its members; 2) competitors could reproduce the business model of unified patents, causing tangible damage; 3) the information to be sealed is not linked to the patentability of the patent in question; and 4) the interest of maintaining confidentiality outweighs the strong public interest in an open file. Unified patents, Paper 30, at 3-7.

The PTAB granted the requests for registration of protection and sealing orders. Unified Patents, LLC, Paper 33. The PTAB noted that the deficiencies in the first unified patent request “have been corrected” and that they are “satisfied” that the documents requested to be sealed contain “confidential information which should be protected under the amended protection order. ” Unified Patents, LLC, Paper 33, to 2.

Carry: When changing the default PTAB protection order, be sure to carefully consider how the different provisions interact with each other.

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