Reexamination Counsel For Both Patentee and Accused Infringer May Access Protective Order Information

Scott Daniels | September 28, 2010

Judge Howard R. Lloyd of the Northern District of California has resolved a protective order dispute in Vasudevan Software, Inc. v. IBM, et al., by allowing the patentee’s in-house counsel to participate in a reexamination for the patent-in-suit, despite having access to the accused infringer’s “Highly Confidential” information.

The parties had agreed to a “prosecution bar,” so that the in-house counsel for the patentee – Vasudevan – (with access to the accused infringer’s protective order information) could not prosecute patents or patent applications related to the patent-in-suit.  The parties also agreed that the in-house counsel for the accused infringers – IBM and Oracle – could sign the protective order, thereby gaining access to the patentee’s highly confidential information, and still participate in a reexamination of the patent.    The accused infringers, however, strongly objected to the patentee’s in-house counsel defending the reexamination for the patentee. Such access “would be contrary to the fundamental purpose of a prosecution bar,” the accused infringers argued.

The sole question before Judge Lloyd was therefore whether the patentee’s in-house counsel who was barred from prosecution of related applications because of access to protective order information, could nonetheless work for the patentee on the reexamination of the patent-in-suit.  The Judge ruled for the patentee.

Judge Lloyd explained that the justification for a prosecution bar – concern that the patentee might use the accused infringer’s confidential information to broaden the scope of pending claims to embrace the accused infringer’s current or future products – does not apply to reexamination because enlarging the scope of claims is not permitted in reexamination.  He then cited a case from the Eastern District of New York for the proposition that

unlike prosecution of an initial patent application, the Patent Act, 35 U.S.C. §§ 305, 314, expressly curtails the scope of reexamination, prohibiting any claim amendment that would enlarge the scope of the initial patent.  This restriction both underscores the distinction between initial patent prosecution and reexamination, and effectively mitigates the potential to misuse PTO procedures to gain a collateral business or litigation advantage, thereby rendering a prosecution bar in the reexamination context largely unnecessary.

(Emphasis added).  Judge Lloyd then cited a series of decisions from Texas, Michigan and Pennsylvania, reaching similar conclusions.

We would add that Judge Lloyd’s ruling is consistent with that of the decision of Judge Magistrate Thynge of Delaware mentioned in our New Requests post of September 22.

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