As discussed in Part 1, unlike in reexaminations, in an inter partes review, a protective order is available to parties seeking to keep their confidential information sealed from public view.
Despite the availability and relative ease of putting a protective order in place, relatively few parties have chosen to do so. In seventy-seven of the inter partes reviews instituted since the beginning of 2013 to date (based on petitions filed between September and December 2012) the parties have moved to seal documents in only six cases. Regardless, the parties to a proceeding should agree to a protective order early-on, so that an agreed-to protective order will be available if and when it is needed.
Parties can enter a protective order along-side a motion to seal documents before the Patent Trial and Appeals Board. The motion to seal must be accompanied by a proposed protective order, and the motion must state good cause for sealing the documents. Good cause is typically shown by demonstrating that the information is confidential, and has not been made publically available.
In three of the six cases, the parties used the Board’s default protective order. In the remaining three cases, the parties used slightly modified versions of the Board’s default order. The modifications to the default order in those cases were generally to clarify or limit who may see the confidential information. In one case, the parties sought to clarify that in-house IP counsel could see documents and information submitted under the protective order. In another case, the parties sought to clarify that executives of one of the named parties could not see the information. In all of these cases the parties agreed to the protective order before filing the motion to seal.
From our research and the available orders, it is not yet clear how far the Board would be willing to let parties diverge from the default order before they reject a motion to seal.
While there is no mechanism by which parties may enter a protective order outside of a motion to seal, the parties should to agree to a protective order early in the proceedings, before filing a sealed document becomes necessary. If the parties have agreed to a protective order in advance, the agreed-to order may be filed whenever it is needed, rather than leaving negotiations over the terms until shortly before filing the motion to seal.