Argentum v. Alcon (IPR2017-01053): What a Motion to Seal Must Show

PTAB trials are public by default, which surprises parties used to district court practice, where documents are often marked confidential under a protective order with little scrutiny. Argentum Pharmaceuticals LLC v. Alcon Research, Ltd., IPR2017-01053 (Paper 27, January 19, 2018), is a short order explaining what a party must show to keep exhibits out of the public record. It is listed here with the Board’s informative decisions. Designations can change, so check the USPTO’s current list of precedential and informative decisions.

Background

The patent owner, Alcon, moved to seal three groups of exhibits and asked the Board to enter a proposed protective order. The exhibits were laboratory notebooks and related research data, parts of an expert declaration, and summaries of market data that two outside data providers had supplied. Asked by the Board, the petitioner said it would not oppose.

What the Board decided

The Board denied the motion without prejudice. An unopposed motion still has to meet the standard, and the movant bears the burden under 37 C.F.R. § 42.20(c). Drawing on earlier Board decisions in Garmin v. Cuozzo and Corning Optical v. PPC Broadband, the order stated that good cause under 37 C.F.R. § 42.54(a) requires the movant to show that:

1. the information is confidential;
2. a concrete harm would result from public disclosure;
3. there is a genuine need to rely in the trial on the specific information; and
4. on balance, the interest in confidentiality outweighs the strong public interest in an open record.

The motion fell short on each exhibit group:

• Laboratory notebooks. The motion did not explain how they related to any disputed issue, and it even asserted that the data the patent owner relied on were disclosed in public patents. It said only that disclosure “has the potential to cause” competitive harm, which is not a concrete injury.
• Third-party market data. The patent owner claimed no ownership of the data and offered no evidence that it could speak to their confidentiality or to harm to the owners. Counsel’s understanding that the providers sell the data was unsupported attorney argument. The same reasoning applied to the portions of the expert declaration that relied on the data.
• No redacted versions. The motion sought to seal exhibits in full without filing public redacted versions or explaining why full sealing was needed.
• No real conference. The rules require a good-faith effort to confer on the protective order. The patent owner wrote to opposing counsel the same day it filed, leaving the Board to find out on its own whether there would be an opposition.

The exhibits stayed provisionally sealed under § 42.14. The Board allowed a short second motion within five business days, or a one-page motion to unseal, and ordered that any exhibit not addressed would be expunged and that arguments relying on expunged exhibits would receive no weight. It also put both parties on notice that a movant assumes the risk that confidential information relied on in a final written decision will become public.

Why it matters

The order is a practical checklist. Parties planning to rely on sensitive business or technical information should be ready with evidence, usually a declaration from someone with knowledge, of confidentiality and specific harm; narrow redactions with public versions; an explanation of why the information is needed; and a genuine attempt to agree on a protective order. Parties relying on licensed third-party data should consider whether the data owner needs to support the request.

The order also reflects the statute: 35 U.S.C. § 316(a)(1) contemplates that IPR files are public except for material filed under seal, and § 316(a)(7) calls for protective orders governing confidential information. For related evidence issues, see evidentiary considerations in PTAB trials and discovery in PGR versus IPR.

Key takeaways

• An unopposed motion to seal must still show good cause under 37 C.F.R. § 42.54(a).
• The movant must show confidentiality, concrete harm, genuine need and a favorable balance against the public interest.
• Speculative harm, attorney argument about third-party data and wholesale sealing without redacted versions are not enough.
• Exhibits that are neither properly sealed nor unsealed may be expunged and given no weight.