Patentee’s Litigation Counsel Allowed to Participate in Reexamination, but with Limitations

Scott Daniels | November 17, 2010

The recent trend among the trial courts is to draft protective orders to permit the patentee’s litigation counsel to participate in any reexamination involving the patent-in-suit.  Magistrate Judge Edward Chen of the Northern District of California continued that practice this past Friday in Shared Memory Graphics v. Apple et al., 3-10-cv-02475 VRW-EMC.

The parties agreed that the protective order should contain a “prosecution bar” preventing litigation counsel for the patentee Shared Memory from participating in the prosecution of new applications related to the patents-in-suit.  The parties disagreed, however, on whether Shared Memory’s litigation counsel, who had access to Defendants’ confidential information pursuant to the protective order, would be barred from participating in any reexamination proceedings regarding those patents.

Magistrate Judge Chen held that they would not be barred.  He began his analysis by citing those cases that distinguish between initial prosecution and reexamination – specifically the cases holding that litigation attorneys may work on reexaminations because claims in reexamination may not be broadened – since claims cannot be broadened, the risk of patentee’s counsel improperly using Defendants’ protective order information to rewrite claims to embrace Defendants’ future products, is greatly reduced.  Magistrate Judge Chen nonetheless acknowledged the lingering possibility of patentee’s litigation counsel “restructuring claims … in a manner informed by the alleged infringer’s confidential information gleaned from litigation.” 

Magistrate Judge Chen therefore imposed two limitations on Shared Memory’s litigation counsel.  First, they may participate in reexamination proceedings for the patents-in-suit, but only for reexaminations requested by the opposing parties.  If the reexamination is requested by Shared Memory, it must hire separate reexamination counsel.  Second, Shared Memory’s litigation counsel must “expressly state” that they will not rely on the Defendants’ protective order information in any reexamination.

Magistrate Judge Chen’s ruling is consistent with similar rulings reported in our posts of September 22nd and 28th (herehere).  More generally, his ruling takes into account the increasing recognition that reexamination is a natural adjunct to litigation and that a judicially imposed requirement of separate reexamination counsel would be an undue burden on the patentee.

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