Motions to Expunge: A Different Perspective than a Motion to Seal

In RPX Corp. v. VirnetX Inc., IPR2014-00171 (Paper 62, September 9, 2014), the PTAB denied RPX’s motion to expunge from the permanent record all documents that had been filed under seal in the proceeding.

Under Rule 42.54, the Board allowed RPX to file sealed exhibits and redacted copies of transcripts, papers, and decisions alleged to contain confidential information, i.e., “trade secret or other confidential research, development, or commercial information” as defined in 37 C.F.R. § 42.2.

Rule 42.54 allows confidential information to be sealed during the proceeding upon a showing of “good cause.” Rule 42.56 allows a party to move to expunge confidential information from the record “[a]fter denial of a petition to institute a trial or after final judgment in a trial.”

RPX argued that since the “good cause” requirement had been met to seal the exhibits and other papers, a motion to expunge all information previously deemed confidential should be granted. The Board disagreed and held that “RPX must show that any information sought to be expunged constitutes confidential information, and that RPX’s interest in expunging it outweighs the public’s interest in maintaining a complete and understandable file history of this inter partes review.” The Board acknowledged that sealing of the confidential information “for a limited time” during the proceeding was warranted under a balancing of the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information. But a motion to expunge must be considered “from the perspective of creating a final, permanent, public record.” The Board found that “[e]xpunging all previously sealed information, and retaining the previously redacted versions in their place, would result in less than ‘a complete and understandable file history’ and result in an overly inclusive expungement of information that RPX does not show is ‘truly sensitive.’”

The PTAB granted RPX’s alternative motion to expunge confidential information not relied upon in the Decision Denying Institution, finding that the information was “not required for a complete understanding of the record.”

This decision highlights that parties must be vigilant when protecting confidential information. Had RPX not provided an alternative position, the PTAB may have simply denied the motion and all of the confidential information may have become public 45 days after the Decision Denying Institution.  Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).