In this patent infringement action between Ultratec and CaptionCall, CaptionCall filed a motion for relief from the stipulated protective order in order to use confidential commercial information from Ultratec (the plaintiffs) in an inter partes review of Ultratec's patent. CaptionCall wanted to use the information to rebut Ultratec's contention that secondary considerations support the validity of the patent.

Ultratec opposed the motion and contended that confidential information presented to the PTAB would necessarily be disclosed to the public if the PTAB bases its decision on that information.

The district court agreed that Ultratec had a legitimate interest in maintaining the confidentiality of its commercial information. Nonetheless, the district court was not "persuaded that PTAB would necessarily disclose legitimately confidential information, even if PTAB based its decision on that information." The district court referred to examples presented in CaptionCall's reply, which showed that the "PTAB handles confidential information just as courts in the Seventh Circuit do. Any confidential information will be presented to PTAB under seal, but ultimately, if that information is a basis for PTAB's decision, Ultratec will have to convince PTAB that its confidential information warrants protection from public disclosure, just as it would have to do in this court."

The district court also stated that "the fate of its confidential information is largely in Ultratec's hands, as it can render this information irrelevant by abandoning or modifying its secondary considerations arguments." But the district court concluded that "it would be grossly unfair to CaptionCall to allow Ultratec to defend the non-obviousness of the '415 patent on the basis of commercial success, while Ultratec uses the protective order in this case to prevent CaptionCall from rebutting that evidence."

Accordingly, the district court granted relief from the protective order, ordering that "CaptionCall may file the documents identified in Dkt. 681 and Dkt. 684 with PTAB, but they must do so in a manner that, with the exception of the disclosure to PTAB itself, presents the documents' confidentiality consistent with the terms of this court's protective order."

Ultratec, Inc. v. Sorenson Communications, Inc., Case No. 14-cv-66-jdp (W.D. Wisc. Sept. 6, 2016)