412.02(b)    Pro Se Litigants and In-House Legal Counsel

While the Board’s standard protective order sets forth guidelines for the disclosure of confidential information to pro se litigants and in-house counsel, in some cases, a modification of the Board’s standard protective order upon motion or by stipulation of the parties, approved by the Board, may be desirable. Special issues regarding the exchange and disclosure of information during discovery may arise in cases involving pro se litigants and in-house legal counsel. For example, under the terms of the Board’s standard protective order, such individuals do not have access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information. [ Note 1.] The financial burden of retaining either legal counsel in the case of a pro se litigant or outside legal counsel in the case of in-house counsel does not constitute good cause to amend the Board’s protective order to remove the restriction with respect to Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) information. [ Note 2.] In instances where in-house counsel moves to amend the Board’s protective order to permit access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information, the determining factor is whether in-house counsel is involved in its employer-litigant’s "competitive decision making." [ Note 3.]

NOTES:

 1.   Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1867 n.6 (TTAB 2010) (pro se applicant hired outside attorney solely for purpose of reviewing opposer’s "trade secret/commercially sensitive" information and documents pursuant to the protective order).

 2.   See A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987).

 3.   See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468, 1 USPQ2d 1241, 1249 (Fed. Cir. 1984) (three-part balancing test includes consideration of (1) a party’s need for the confidential information in order to adequately prepare its case, (2) the harm that disclosure would cause the party producing the confidential information, and (3) the forum’s interest in maintaining the confidentiality of the information sought); Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (applying three-part balancing test of U.S. Steel and denying motion to modify protective order to permit in-house counsel to access competitive information); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1953 (TTAB 2006) (Board applied test to deny opposer’s motion to modify protective order to permit in-house counsel access to trade secret or commercially sensitive information where opposers made only minimal showing that their in-house legal counsel was not involved in "competitive decision-making" activities).