Shearman & Sterling LLP | IP Blog | PTAB Grants Motion For Modified Protective Order To Prevent Patent Owner’s Expert-Witness/CEO From Accessing Petitioner’s Highly-Confidential Documents<br >  
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  • PTAB Grants Motion For Modified Protective Order To Prevent Patent Owner’s Expert-Witness/CEO From Accessing Petitioner’s Highly-Confidential Documents

    On December 13, 2017, a panel of Administrative Patent Judges (Judges Grace Karaffa Obermann, Bart Gerstenblith, and Robert Kinder) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office granted Petitioner Campbell Soup’s motion for a modified protective order in inter partes review (IPR) proceedings brought against patents owned by Gamon Plus.  Campbell Soup Co. v. Gamon Plus, Inc., IPR case nos. IPR2017-00087, IPR2017-00091, IPR2017-00094.

    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.    

    The dispute began after Patent Owner Gamon successfully moved to compel production of certain studies performed by Petitioner Campbell Soup that Gamon alleged would support its position on secondary considerations of non-obviousness.  Campbell Soup then sought a modified protective order to add an “attorneys’ eyes only” designation, thereby preventing Gamon’s CEO and expert witness, Mr. Johnson, from viewing the studies.  Campbell Soup argued that a modified order was necessary because (1) the documents included valuable proprietary consumer research that Mr. Johnson had never seen; (2) allowing Mr. Johnson access would result in an unfair competitive advantage to a competitor of one of Campbell Soup’s suppliers; and (3) there was no need for Mr. Johnson to review the documents because he could offer nothing more than “rank speculation” about their contents.  According to Campbell Soup, the competitive harm to Campbell Soup far outweighed any benefit to Mr. Johnson reviewing the documents.  Gamon countered that Mr. Johnson’s access was necessary for him to offer both fact and expert testimony, that it was not a competitor of Campbell Soup’s supplier, and, in any event, the documents in question were nearly two decades old and thus of questionable value.

    The PTAB agreed with Campbell Soup, adopting, in full, Campbell Soup’s reasoning.  However, the PTAB did not stop there.  It also found that Gamon unreasonably delayed in first seeking the documents at issue, and that the predicament was entirely of Gamon’s making—Gamon could have prevented this situation by retaining a “neutral” expert without a vested interest in the outcome. 

    The case highlights that parties to IPR proceedings would be well advised to retain outside experts when possible.  Moreover, this decision demonstrates that 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.