The PTAB rules include a default protective order that provides a single-level confidentiality designation, allowing access to any filed confidential documents by the parties, as well as their in-house counsel, outside counsel of record, and experts. A party to an IPR proceeding may move, for good cause, to modify the default protective order to reflect the kinds of individualized provisions often found in district-court protective orders, but historically the PTAB has been reluctant to grant such motions, so practitioners have come to expect that the default protective order will generally govern.
However, last month, in Campbell Soup Co. v. Gamon Plus, Inc.,1 the PTAB granted a motion for a modified protective order proposed by a requester.
The dispute began after the patent owner successfully moved to compel production of certain studies performed by the requester. The patent owner argued that the studies would support its position on secondary considerations of non- obviousness.
In response to the grant of the motion to compel, the requester asked the Board to modify the protective order. The standard protective order already in place would have allowed the patent owner's CEO, who was also designated as an expert witness, to review the studies. The requester argued that the studies included valuable proprietary consumer research that its competitor's CEO should not be allowed to see.
The patent owner countered that it was necessary for the CEO to see the studies in order to respond to them, that in any event it was not truly a competitor, and moreover that the documents in question were nearly two decades old.
The PTAB granted the motion and modified the protective order. It agreed with the requester's arguments about the potential for competitive advantage to the patent owner. Despite its previous grant of the motion to compel, it also found that the patent owner unreasonably delayed in seeking production of the studies. Moreover, the PTAB found, the problem was entirely of patent owner's making—it could have prevented this situation by retaining an expert instead of relying on its CEO.
This decision illustrates that, although one presumed advantage of IPRs is reduced costs, parties would nonetheless be well advised to invest in outside experts when possible, rather than relying on the expertise of their own employees. It also suggests the PTAB may be more willing now to consider customizing its procedures in individual IPRs, and practitioners should accordingly be more optimistic about their chances of obtaining such customization.
Footnotes
1 Case Nos. IPR2017-00087, IPR2017-00091, IPR2017-00094.
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