Precedential No. 25: TTAB Rejects Proposed Modification Of Standard Protective Order, Refuses To Apply EU Privacy Regulation

• Published date: 07 October 2021
• Subject Matter: Litigation, Mediation & Arbitration, Privacy, Data Protection, Privacy Protection, Trials & Appeals & Compensation
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In a precedential order, the Board denied a motion to modify the Standard Protective Order (SPO) to permit in-house counsel to view documents designated as "Confidential - Attorney's Eye's Only" (trade secret and commercially sensitive) ("AEO"), and it ruled that the European Union General Data Protection Regulations (GDPR) does not apply in Board proceedings. As to the motion, Opposer Chicago Mercantile Exchange (CME) failed to show good cause for modification of the SPO. As to the GDPR, the Board found that the SPO adequately protected any personal information that Intercontinental Exchange (ICE) sought to redact from its discovery responses. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc. and Chicago Mercantile Exchange, Inc. v. Intercontinental Exchange Holdings, Inc., 2021 USPQ2d 988 (TTAB 2021) [precedential] (Order by M. Catherine Faint, Interlocutory Attorney).

Modification of the SPO: Under the SPO, which is automatically entered in all inter partes proceedings, only outside counsel have access to confidential material and information that is designated as AEO. However, under Rule 2.116(g), the SPO may be modified by stipulation approved by the Board, or upon a motion granted by the Board. CME sought to designate either of two individuals as an in-house counsel with access to AEO.

To establish good cause to allow disclosure of AEO material to in-house counsel, the movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements," based on "the factual circumstances surrounding each individual counsel's activities, association and relationship with a party."

The Board applied a three-element test to determine "whether, to whom and under what circumstances a protective order may be amended to allow release of AEO to in-house counsel:

• (1) consideration of a party's need for the confidential information in order to adequately prepare its case,
• (2) the harm that disclosure would cause the party submitting the confidential information, and
• (3) the forum's interest in maintaining the confidentiality of the information sought.

Akzo N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1483-84, 1 USPQ2d 1241, 1249 (Fed. Cir. 1986).

The Board "must be able to balance the risk of inadvertent disclosure of trade secrets or commercially sensitive matter against the risk that protection of those trade secrets will impair CME's prosecution of [its] claims."

CME did...