If you are involved in an IPR and you are contemplating whether to rely on your own confidential information as part of a filing, you need to consider the risk that the Board will deny your motion to file under seal because it relied on that confidential information.  In Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258, the patent owner submitted several exhibits containing its confidential information and moved to file those exhibits under seal.  The Board granted patent owner’s motion to seal all but one of the exhibits, Exh. 2106.   Patent owner and patent owner’s experts extensively relied on Exh. 2106.

The Board found that, although patent owner had focused in its preliminary response on one figure of Exhibit 2106, the highlighted figure “is best understood in the context of the entire document.”  Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258, Paper No. 91 at 2 (PTAB Mar. 31, 2017).  Not only that, but the Board relied heavily on that exhibit in the Final Written Decision. For all these reasons, the Board denied patent owner’s motion to seal.

Because the information sought to be protected is central to our Final Written Decision (Paper 89), we find that Patent Owner’s desire for confidentiality is largely outweighted [sic] by the strong public interest in having an open record. Accordingly, we deny Patent Owner’s Motion with respect to Exhibit 2106.

Id.

Takeaway

Practitioners should think carefully about whether to rely on their own confidential information in an IPR.  If the Board decides to rely on that information in its decisions, your motion to seal may be denied and your confidential information opened up to the public.