Taking a hard line on protective-order issues, the PTAB recently dismissed Petitioner CRS’s motion to file information regarding Frontline’s license agreement under seal, criticizing the parties’ agreement that the Board adopt a protective order from a co-pending litigation. CRS Advanced Tech., Inc., v. Frontline Tech., Inc., CBM2012-00005 (SCM), Paper 43 (May 28, 2013) . Before the Board, a party may file a motion to seal accompanied by a proposed protective order, such as the default order in the Patent Trial Practice Guide. CRS shows that the Board may find protective orders from co-pending litigation lacking, even if agreed to by the parties.

Because the Board enforces protective orders it enters, it must understand and agree with their terms. But CRS’s motion provided “no explanation of the contents of the proposed protective order, or how the proposed protective order complies with the Office Patent Trial Practice Guide.” The Board found that on “cursory review” the proposed protective order did not cover USPTO employees and was otherwise over inclusive. The Board expressed concern that “CRS has not explained why the Board would be obliged to enforce the order having terms and conditions not applicable to the proceeding before the Board.” Further, because a motion to seal is granted for “good cause,” the moving party must explain why redacted information should not be public. The Board dismissed CRS’s motion without prejudice, allowing CRS to file a substitute motion to seal with a different proposed protective order.

The Patent Trial Practice Guide states that protective orders “shall include:”

  • Methods of designating confidential information;
  • Identification of persons allowed access to confidential information;
  • A statement that persons receiving confidential information shall take reasonable care to maintain confidentiality;
  • Procedures for treating confidential information exchanged by the parties or filed with the Board;
  • Procedures for designating confidential testimony;
  • Other restrictions imposed by the Board; and
  • A signed acknowledgement from any person receiving confidential information during a proceeding before the Board.

As illustrated by CRS, while parties may agree to deviate from these provisions, proposed protective orders should account for the handling of documents by the USPTO. Parties should think carefully before submitting an protective order from co-pending litigation to the Board. And when submitting a proposed protective order, parties should explain how the order differs from the default form and why it complies with the Patent Trial Practice Guide.

Afterward: Adding to the Practitioner’s Toolkit

In a subsequent telephone conference, the Board rejected a second proposed protective order newly-drafted by the parties for this matter. Upon the Board’s suggestion, the parties then submitted a joint stipulation as to certain facts that CRS wanted entered into the record about Frontline’s license agreement, thereby mooting the motion to seal and avoiding altogether the necessity of a protective order.