by Dennis Crouch
In most patent cases, the parties jointly agree to a system limiting the publication of confidential case information and typically file a stipulated motion for protective order seeking the a judicial order requiring the parties to comply. One problem with this approach is that it goes against our traditional notion that courts and court filings are open and accessible to the public. The purpose of open court records is to promote transparency and accountability in the judicial system. Public access to court records allows the public (including journalists) to monitor the work of the courts and acts as a check on the judicial process. However, the public is not a party to the lawsuit and so typically is not asked for input on protective orders. Sealing records and holding proceedings behind closed doors undermines public confidence in the courts and can create a perception that courts or the parties may be engaged in undisclosed improper or illegal activities. While there are valid reasons to keep certain information confidential in some cases, such as protecting trade secrets or personal information, restricting public access should be approached carefully and narrowly to balance the interests of the parties with the public’s right to open courts.
A recent court order in the case of Woodstream Corp. v. Nature’s Way Bird Products, LLC, No. 1:23-cv-294, 2023 WL 6146706 (N.D. Ohio Sept. 20, 2023), demonstrates the balancing act between a party’s interest in keeping information confidential and the public’s interest in open court records.
In its infringement case, Woodstream asserted two hummingbird feeder patents against competitor Nature’s Way. US11147246 and US11033007. The parties filed a joint motion for a protective order to keep confidential information secret during the pretrial discovery process. The defendant, Nature’s Way, then moved to file its claim construction brief under seal because it referred to documents designated “confidential” by the plaintiff, Woodstream. The confidential documents were emails by Woodstream employees giving opinions on the scope and interpretation of Woodstream’s patents at issue in the case. Of note, these emails had been disclosed during discovery since they were not privileged communications with attorneys, but rather discussions among business and engineering employees. Woodstream described the emails as follows:
The designated emails contain discussions between members of the Woodstream Engineering department, including Paul McQuillan, the SVP Research, Development, and Engineering regarding Woodstream’s
(1) approach to pursuing patent infringement claims against competitors, and
(2) an explanation of arguable ways competitors could avoid Woodstream’s patents.
These discussions involve both in-suit patents as well as an uninvolved patent. The public disclosure of this communication would disclose a roadmap to competitors for avoiding Woodstream’s patents and knowledge of Woodstream’s resources and strategy in protecting its patent rights.
Woodstream argued this email string constituted a trade secret and should remain sealed. But the court disagreed. Applying Ohio trade secrecy law, the court found the email did not actually contain trade secrets. To qualify as a trade secret, information must: (1) have independent economic value from being secret, and (2) be subject to reasonable efforts to maintain its secrecy. The court found Woodstream failed to show how its employee’s opinions on patent scope had independent economic value. Nor did Woodstream provide evidence showing efforts it took to keep the email secret.
The court then weighed the public’s interest in access to court records against any interest Woodstream had in keeping the email secret. The public interest in open records is strong because it allows the public to monitor the workings of the court system. As the Sixth Circuit has stated, “[u]nlike information merely exchanged between the parties, ‘[t]he public has a strong interest in obtaining the information contained in the court record.'” See Shane Grp., Inc. v. Blue Cross Blue Shield of Mich., 825 F.3d 299, 305 (6th Cir. 2016). Sealing records can undermine public confidence in the courts, as “sealing court records and proceedings ‘is generally impermissible’ due to the ‘strong presumption in favor of openness’ of court records.” See In re Nat’l Prescription Opiate Litig., 927 F.3d 919, 938-39 (6th Cir. 2019)).
The court found the public interest outweighed Woodstream’s interests because the email was directly relevant to the central issues in the case regarding claim construction and patent scope. “Lubic’s email is directly relevant to adjudicating Woodstream’s patent infringement and claim construction claims.” Therefore, public access to the email through the court record was warranted.
The court also ordered that any future motions to seal must be accompanied by both: (1) a motion explaining why sealing is appropriate, and (2) a public redacted version of the document.
You can now read the email chain for yourself: Woodstream Letter Public Version.
Some important take-aways from this case:
- Businesses often treat many aspects of their business and confidential. However, business confidential information does not necessarily rise to the level of importance required for a court to agree to filings under seal.
- Opinions and analysis on scope and validity of your own patents likely do not qualify as trade secrets, even if useful to competitors. There must be independent economic value from secrecy and reasonable efforts to maintain the secrecy. In addition, it is important to note that these same emails may have been protected as privileged if they had been done as part of an attorney investigation into the potential lawsuit. Here though, no attorneys were even involved in the email conversation.
- Once discovery materials reach the court record, the presumption of public access becomes very difficult to overcome. Only more compelling interests like trade secrets justify sealing records. This is a distinguishing point between the regular out-of-court discovery process (where many items can be kept secret). Once the evidence is brought to court, it will likely become public.
- If you want to keep aspects of a filing secret, be prepared to make particularized showings on a line-by-line basis when seeking to seal court records. Andm be prepared to file public versions containing redactions rather than outright sealing court documents.
Educating engineers and managers in companies not to talk about patents of others in emails that may well be discoverable, as here, is difficult, even if done. On the other hand, these non-attorney opinions or comments may not be usable as “admissions against interest” by the corporation itself in litigation?
“There is a need for inclusive innovation in emerging technologies both ethically and economically. However, involving diverse inventors in large tech companies presents challenges.
Innovation must be highly inclusive at the outset. To do so, tech companies should have all perspectives involved in the inventing and patenting processes.
The language of the invitation matters. Historically, only certain employees have been invited to become involved in patenting. The language should not only be inclusive and welcoming in itself but should also be directed towards all potential employees. To do so, companies should dismantle the exclusion and elitism they had built.”
Disagree x3
“Persistent Gender Disparities: Despite steady progress in hiring women attorneys at junior levels and women constituting over 50% of summer associates since 2018, there have not been similar increases in partner retention in the past thirty years. Women only hold around 23% of equity partner positions in U.S. law firms, highlighting unaddressed, systemic inequalities and exclusionary practices.
Inequitable Attribution in Legal Documents: The current practice of senior-most legal team members signing documents conceals the contributions of associates, leading to unequal attribution. This under-attribution particularly affects female practitioners, people of color, and LGBTQ+ individuals, implying they do less work and do not deserve as much credit as their male counterparts. This iniquity in credit allocation on public-facing legal documents serves to reinforce gender gaps and hinders career advancement, client acquisition, and a sense of belonging within the firm.
Proposed Amendments to USPTO Procedures: To address inequity, USPTO should revise procedures and forms to facilitate equitable attribution for all patent application contributors and to stress the importance of credit, assessing the impact on attribution and retention dynamics, especially for women.”
Yes because they aren’t crazy.
Doubt it.
Disagree, if anyone needs to do anything that would be congress. And I doubt it would help anything even if congress and/or the PTO did anything. They’d just be put down as in the “inferiorlol” role anyway, so nobody would care. Nobody cares now practically speaking in a great many instances as is.
Since the subsequent blog post does not allow comments, this is about “When the senior-most legal team member signs documents on behalf of their legal team, they are erasing the names of associates from the record.” Yes, that frequently occurs in general.
First, since the attorney signatory is the one subject to inequitable conduct and professional discipline, and are often the person the client expects to see responsible for their work, there are good reasons why junior associates are not all listed.
Secondly, while there may be some professional benefit in having one’s name listed on a district court or appellate brief as an associate or other counsel, it is difficult to see how having one’s name added to mere Patent Office application responses would affect one’s career opportunities? Both promotions and parallel hirings are clearly more impacted by billings, client acquisitions, years of experience, personalities, etc., in firms. In many years of patent practice I never heard of a patent attorney job applicant being asked what patent application papers they had their names on, versus their technology expertise, their extent and type of patent practice, etc.
Oh, for C H R 1 S T’s sake, the word “harvesting” was deemed offensive?
Enough already.
It’s all leftoid cope Paul, meant only to bolster the prestige and status of the virtue signalers. None of it would move any needles the tiniest bit. And none of it will. It’s all just “performative change”.
It’s apparently personally beneficial for academic careers to author things like this these days. I am only concerned if they also contain and thus may spread some incorrect factual assumptions about how things really work, such as USPTO signatures vis a vis patent attorney hiring and other legal realities. Also, ignoring the massive progress already made over the widespread prior discriminations. E.g., the current percentage of USPTO female examiners and managers.
“It’s apparently personally beneficial for academic careers to author things like this these days. ”
If the higher status anti-rac ist crowd would do us all a huge favor and denounce them as being w hit e su prem acists we could all rest a bit easier. But for whatever reason they withhold their hands, thus themselves supporting wh ite s upre macy.
“I am only concerned if they also contain and thus may spread some incorrect factual assumptions about how things really work, such as USPTO signatures vis a vis patent attorney hiring and other legal realities.”
All valid concerns, and likely just one of many things that could be spread falsely out to the public. For instance, if enough performative change is enacted the public might actually start to see the PTO as anti-ra ci st rather than r aci st. A truer calamity is difficult to imagine.
“Also, ignoring the massive progress already made over the widespread prior discriminations. E.g., the current percentage of USPTO female examiners and managers.”
That’s actually probably just discrimination against men but whatev. Tomato tomato on that one, too small of taters compared to this other discussion for now.
As you well know (even as you may choose to be coy about it),
anti-ra ci st IS r aci st
Perhaps the most egregious alleged use of secrecy in patent cases is when one defendant in one patent suit finds highly material prior art and uses it to negotiate a very favorable early license settlement for that defendant which is not available to the defendants competitors, to their significant competitive disadvantage, if they cannot obtain or find that same prior art in their own lawsuits in time? [Assuming such alleged situations do actually occur.]
IDK about that one. Attornies have ethical obligations to their client, not their client’s competitors (or, for that matter, society as a whole).
Yes, but that is not the issue here, which is the potential anti-competitive-collusion accusation if that prior art is not obtainable from the first competitor that settles by normal litigation discovery by the sued competitors. As for asserting that attorneys have no ethical obligations to society as a whole, only their client, that validity depends on what they have been doing or concealing. E.g., several Trump attorneys with that attitude are not faring well.
Do not confuse ‘ethical duty’ (or lack thereof) and other actual legal violations.
OC’s point is that there is NO ethical duty that can reach. It is a given that there is also no other actual legal violations in the present context.
“… if they cannot obtain or find that same prior art in their own lawsuits in time?”
I get at least one email/LinkedIn message a day from patent searchers who tell me their AI is gonna find the best of the best of the best of the best prior art in 10 minutes.
And I remember a certain examiner on this site who boasted, like 10 years ago, how he finds “knock out killer 102b prior art” with 15 second Google searches on all of his cases.
I chuckled (as – I imagine – 6 did as well).
I remember when 6 asked us all about his brilliant business strategy to use his awesome Googling skillz to find all that knock out killer 102b prior art in 15 seconds and then offer it to whoever was willing to pay him $25k for it.
It’s an absolute mystery why he’s still at the Office.
…and I chuckled again.
Well-intentioned business folk should refrain from opining about claims. Especially in writing. Another example of education through litigation.
That’s so frustrating. The “business people” — actually the design/technology people — are the ones who know what they are talking about.
How about the IT departments put in a company wide monitor to sniff out and copy emails about inventions to counsel with a “privileged” header?
Great comment Pete. At our company, I was chastised for discussing anything in writing regarding patents and I was the licensed lawyer in the plant! Everything got discussed in person or on the phone without written notes. This concept of no written records is really, really hard for the younger generations who live online and can’t interact effectively in person anymore. Interpersonal skills are urgently important. Any books out there on how to conduct yourself in a highly litigious enviroment?
Copying is so easy to get away with in the U.S. patent system. Reading this email is exasperating, this small business is throwing away money on obtaining and attempting to enforce patents in the U.S.
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