ESN Confidential Markings
In oral argument for ESN v. Cisco, Appeal No. 2010-1185, at the Federal Circuit Court of Appeals on Wednesday, October 6, the court inquired about the amount of information that the parties had marked as confidential. Judge Prost noted that the documents before the court have “a lot of confidential markings” and that therefore “it’s kind of hard to contemplate writing an opinion” limited to the publically available information. Judge Dyk characterized a general trend in increased confidential marking as “an absolute plague,” acknowledging that because district courts do not have time to police the potentially excessive marking of information as confidential, such information often remains a confidential part of the record on appeal.
As a result, said Judge Dyk, the Federal Circuit sees, as “confidential,” information such as standard arbitration clauses and arguments that the parties have made to district courts. Indeed, the Federal Circuit has noted arbitration clauses that parties have improperly marked as confidential. See Microchip Tech. Inc. v. U.S. Philips Corp., 367 F.3d 1350, 1353 (Fed. Cir. 2004).
Regarding the confidential information in ESN, Judge Rader ultimately stated that “if we feel it’s necessary for our opinion, we’ll probably use it anyway.”
Parties to patent litigation must therefore strike a careful balance between confidential marking and public disclosure. While companies with valuable business information may need to protect some of that information from public knowledge, they may also have to disclose enough information in litigation to support or disprove any allegations before a court. Where legal issues may involve parties’ strategies for the marketing of technologies, such as in damages or in the ITC’s domestic industry requirement, parties may need to carefully consider the balance between confidentiality and adequate disclosure.