Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC

IPR2012-00001, Paper No. 36, April 5, 2013

Patent No. 6,778,074

[Revised Motion to Seal exhibits that were previously submitted in support of arguments]

FACTS

Following the Board’s denial of its original motion to seal and having the opportunity to revise its motion, patent owner Cuozzo filed a revised motion to seal which limited exhibits relating to inventor’s personal information, business information, and attorney-inventor communications, all of which Cuozzo claimed were confidential.

HOLDING

The Board agreed that the exhibits pertaining to the inventor’s personal information and business information had nothing to do with the merits of the case, and therefore, granted Cuozzo’s motion to seal with respect to those exhibits as being confidential. However, the Board argued that the privilege that would normally attach to the exhibits pertaining to attorney-inventor communications, were waived when Cuozzo offered the exhibits in support of its arguments in the case. The Board stated that the public has “an interest in knowing what information Cuozzo believes is important in determining a substantive issue in the case.”

The Board was unpersuaded by Cuozzo’s argument that it was burdened by the need to defend against a broad-waiver that may be asserted by other parties to make such privileged communications discoverable in a proceeding, calling the argument speculative. The Board was equally unpersuaded by Cuozzo’s argument that the same information was subject to a protective order in a related district court litigation, stating that it was not known whether the information was used for the same purpose in the related litigation as was its purpose in this proceeding.  Thus, the Board denied Cuozzo’s motion to seal with respect to the exhibits pertaining to attorney-inventor communications.

TAKEAWAY

The Board is once again strict on the type of information submitted in a proceeding that is deemed confidential and withheld from the public. If the information was relevant to the merits of the case, especially if it was relied upon substantially by a party in support of its argument or position, then the Board is unlikely to grant a motion to seal such information.

To view full Decision click here.