Garmin v. Cuozzo (IPR2012-00001, Paper 34): What a Motion to Seal Must Contain

PTAB trial records are public by default. A party that wants to keep evidence out of public view has to earn that protection with a proper motion. Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 34, entered March 14, 2013, is the Board’s early explanation of what that motion must contain.

This note covers Paper 34 only. The Board ruled on Cuozzo’s revised motion three weeks later in Paper 36. Other papers in the proceeding include the institution decision and the additional discovery decision.

Background

On March 11, 2013, patent owner Cuozzo filed a motion to seal Exhibits 3000 and 4000, filed with its patent owner response and its motion to amend. The two exhibits appeared identical: a 71-page compilation of Exhibits A through P to the inventor’s declaration, offered to antedate prior art. The whole motion was a single sentence asking to seal the documents under the default protective order in the Trial Practice Guide. Garmin had not yet responded.

What the Board decided

The Board began with the governing principles:

• Under 35 U.S.C. § 316(a)(1), papers filed in an IPR are open to the public by default. A party may file a motion to seal, and the material stays sealed while the motion is pending.
• 37 C.F.R. § 42.14 says the same: the record is public unless the Board orders otherwise, and a motion to seal must be filed together with the material to be sealed.
• Only “confidential information” is protected (35 U.S.C. § 316(a)(7)). The rules define it consistently with Fed. R. Civ. P. 26(c)(1)(G): trade secrets and other confidential research, development or commercial information.
• The standard is good cause (37 C.F.R. § 42.54), and the movant bears the burden (37 C.F.R. § 42.20(c)).

Measured against these, the motion fell short. It did not include a proposed protective order or a certification that Cuozzo had conferred in good faith with Garmin, both required by § 42.54. It did not explain why any of the 71 pages were confidential. It did not even say that they were.

The Board noted, however, that denying the motion would immediately and irreversibly make the material public. So instead of ruling, it set a deadline. Unless Cuozzo acted by 5 p.m. Eastern on March 21, 2013, the exhibits would become public. Cuozzo could:

1. supplement the motion;
2. revise it to cover fewer items;
3. withdraw it and ask to expunge the exhibits, no longer relying on them; or
4. withdraw it, expunge the exhibits and replace them with redacted versions.

Any supplemented or revised motion had to identify, exhibit by exhibit, which portions were confidential and why. It had to explain good cause, certify that the information had not been made public, include the meet-and-confer certification, and attach a proposed protective order, such as the Board’s default order. Garmin was given time to oppose.

Why it matters

The order works as a checklist for sealing requests that still holds up:

• File the motion with the material, so it is provisionally sealed.
• Say specifically what is confidential and why it qualifies.
• Show good cause by weighing the harm of disclosure against the public interest in a complete record.
• Include a proposed protective order and the conferral certification.
• Consider redaction or withdrawal as alternatives.

The decision also shows the Board’s reluctance to make an irreversible disclosure when a party has filed a weak motion. For how confidential evidence fits into the wider record, see evidentiary considerations in PTAB trials. Sealing practice has been refined in later guidance, so readers should check the current Trial Practice Guide.

Key takeaways

• IPR records are public by default under § 316(a)(1) and § 42.14; sealing needs good cause under § 42.54.
• A motion to seal must explain why each item is confidential and include a proposed protective order and a conferral certification.
• Cuozzo’s one-sentence motion did none of this, but the Board allowed a week to cure rather than unsealing at once.
• The Board ruled on the revised motion in Paper 36.