Prosecution Bar should not Apply to Reexamination, Judge Noel Rules

Scott Daniels | February 4, 2011

The trend among the trial courts to permit the patentee’s litigation counsel to participate in a reexamination involving the patent-in-suit (see Shared Memory Graphics v. Apple et al., 3-10-cv-02475 VRW-EMC), continued this week in 3M v. Avery Dennsion, 310-2630-MJD-FLN.

There, the accused infringer, Avery Dennison, requested that the PTO reexamine one of 3M’s patents-in-suit.  Avery also asked that the provision of the protective order that bars 3M’s in-house patent counsel, with access to “highly confidential information,” from participating in patent prosecution, also bar that counsel from participating in the new reexamination.  Avery argued that reexamination is no different from routine patent prosecution, with the same potential for in-house counsel to abuse its access to confidential information covered by the protective order.  3M replied that the pending reexamination is merely “another aspect” of the pending litigation and that its in-house patent counsel should be allowed to participate in both.

Magistrate Judge Franklin Noel agreed with 3M, finding that it had “the more realistic view of the situation.”  The Judge was careful, however, to limit 3M’s counsel to participation to the specific reexamination now underway and not to all reexaminations involving 3M patents.

Accused infringers need to take this trend into account when they initially propose a protective order – patentee’s counsel granted access to protective order information are likely also to be permitted to participate in any reexamination of the patents-in-suit.

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