Garmin v. Cuozzo (IPR2012-00001, Paper 36): Sealing Personal Data, Not Waived Privilege

Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 36, entered April 5, 2013, decided the patent owner’s revised motion to seal. It shows how the Board balances a party’s privacy against the public’s interest in a complete record, and why evidence a party chooses to rely on is hard to keep secret.

The Board had found Cuozzo’s first motion inadequate in Paper 34 and allowed a revised filing. Other papers in the proceeding include the institution decision and the additional discovery decision.

Background

The exhibits at issue were attachments to the inventor’s declaration, offered to show that he invented the claimed subject matter before certain prior art. In its revised motion, Cuozzo narrowed its request to six of the sixteen attachments and moved the rest into public exhibits. It submitted the Board’s default protective order as its proposed order, represented that Garmin did not oppose, and noted that the same material had been designated confidential under a protective order in related district court litigation. Garmin filed no opposition.

The six exhibits were:

• B: the inventor’s state driving record;
• I and J: communications between the inventor and a patent attorney, including a patentability search report;
• K: the inventor’s agreement with an invention-submission company;
• L: copies of the inventor’s payments to that company;
• P: a family member’s personal check for the USPTO filing fee.

What the Board decided

Because the parties agreed on its terms, the Board entered the default protective order to govern confidential information in the proceeding. It then applied the good-cause standard of 37 C.F.R. § 42.54, with Cuozzo bearing the burden under § 42.20. The Board said that Garmin’s non-opposition and the district court designation were not enough on their own, though they gave useful context. It also noted that the declaration itself had been public since it was filed.

Sealed: Exhibits B, K, L and P. The driving record was personal and had little to do with the merits; the one relevant speeding ticket was already described in the public declaration. The payment records and check also duplicated facts already in the declaration, and the bank and account numbers had no relevance and carried a risk of misuse. The invention-submission agreement was business information whose details did not matter to the case. For each, the public interest in access was minimal or none.

Not sealed: Exhibits I and J. Cuozzo acknowledged that by filing these attorney communications to prove conception and diligence it had waived privilege on those issues. It argued that making them public might invite others to claim a broader waiver. The Board found that concern speculative. A party that relies on material to support a substantive position cannot then keep it from the public, which has an interest in knowing what the party considers important. The Board also noted that it did not know whether the district court designation involved the same use of the documents.

Cuozzo was given one week either to request rehearing or to move Exhibits I and J into the public exhibits.

A footnote on exhibit numbering. Cuozzo’s exhibits were numbered in the 3000–5000 range. The Board noted that patent owner exhibits should be numbered 2001–2999 under 37 C.F.R. § 42.63(c), but accepted them in the interest of efficiency.

Why it matters

• Redact rather than seal. The Board advised parties not to file personal details that have little relevance to the merits, such as account numbers, Social Security numbers or full driving records. They should redact such details when filing and explain the redaction in a paper.
• Don’t seal what is already public. Moving to seal facts that the movant has itself put in a public filing wastes resources.
• Reliance defeats confidentiality. Evidence offered on a contested issue is presumptively public, even if privileged in other settings.
• The default protective order became the common starting point in AIA trials. See evidentiary considerations in PTAB trials, and check the current Trial Practice Guide for today’s version.

Key takeaways

• The Board entered the default protective order and granted sealing for four exhibits of irrelevant personal or minor business information.
• It refused to seal attorney communications the patent owner relied on to prove conception and diligence.
• Good cause is a balance between the movant’s harm and the public’s interest in an understandable record.
• Redacting irrelevant personal data at filing is preferred to motion practice.