Essay: Not So Confidential: A Call for Restraint in Sealing Court Records

In a new Patently-O Patent Law Journal essay, Professor Bernard Chao argues that courts should do more to ensure public access to patent litigation documents. The Court of Appeals for the Federal Circuit already requires the parallel submission of non-confidential versions of any briefs filed under seal. Professor Chao argues that same approach could work in the district courts and would go a long way in solving the current problem of overly-sealed records. Read it while its hot:

Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent L.J. 6.

7 thoughts on “Essay: Not So Confidential: A Call for Restraint in Sealing Court Records

  1. 5

    Transparency is a problem across the patent life cycle. Short of trade secrets EVERYTHING filled during patent litigation should be public. This is increasingly important in light of aggressive litigation by non- practicing entities, the convergence of technology that makes comprehensive freedom to operate due diligence daunting and the right of the public to monitor invalidity and infringement dynamics. Increased transparency is not just for lawyers and their clients, it is essential to improving the quality of the patent system.

  2. 4

    I think that’s a different issue though. There, the patentee and defendant would probably settle before the reference ever gets brought up in a brief. Otherwise, other defendants would find out about it. Sealed briefs aren’t beyond the scope of discovery — the patentee would have a duty to disclose that reference in future discovery (under E.D. Tex. rules and it surely would be requested in discovery for other venues). Moreover, a third-party subpoena would get the briefs.

    As for your hypothetical, I don’t know that there’s much that can be done about those situations. I’ve come across an analogous problem where a party discovers evidence pointing to inequitable conduct and then the parties shortly thereafter settle to prevent it from becoming public.

  3. 3

    There is a serious public interest issue here. One of the present defendants in a patent suit may by luck or skill find a fact or reference that clearly invalidates or renders uninforceable that patent, and use that fact or reference to get a very cheap settlement from the patent owner. It is in the interest of both that particular defendant and the patent owner [but not the public] to keep that fact or information secret, so that the patent owner can continue litigation against the competitors of that defendant on that same patent and that patent can continue to discourage others from using that patented feature in competitive products.

  4. 2

    I wholeheartedly agree with Professor Chao. I have often found this frustrating — especially when practicing in the Eastern District of Texas. Often a patent being asserted against my client has previously been litigated. I can’t just simply pull up old court filings. Instead, I have to wait for Plaintiffs document productions or serve subpoenas. It’s even worse when your client just has a demand letter and there isn’t yet a lawsuit.

    Similarly, I have often been frustrated by having to file an entire brief under seal because just a few sentences contain information from the other side’s confidential documents. I think this accounts for invalidity briefs that are sealed. The brief might quote an admission made in one of the Plaintiff’s documents or in a deposition (that was labeled confidential for entirely different reasons). I presume that while the brief may not actually contain any confidential information, it is easier to file under seal as opposed to have the other side make allegations that you have violated the Court’s Protective Order. This is particularly true in contentious lawsuits — as many NPE suits tend to be. (It’s easy to make the judgment call when it is your client’s information. Of course, then you also just have the problem of clients who think every thing is confidential.)

  5. 1


    It be decided. Looks like it is good for the test tube lovers and bad for the computer lovers. Some real strange reasoning in this one regarding the method of comparing sequences. We are back to a mental process. Better add extracting and sequencing to all method claims and then —laugh laugh–somehow that makes all the difference.

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