Complying with the Duty of Disclosure in Reexamination

Scott Daniels | March 14, 2011

In a case with parallel reexamination and District Court proceedings, a patentee sometimes faces annoying problems in attempting to comply simultaneously with the PTO’s duty of disclosure and the Court’s protective order.  For instance, counsel for the patentee may receive documents from the accused infringer that contain confidential business information – for instance expert reports on infringement – and that also contain information that would be material to the reexamination.  Last week in Sloan Valve v. Zuru, 2011 U.S. Dist. LEXIS 23269 (N.D. Ill.), Judge Amy J. St. Eve modified her protective order and in doing so, provided a nice roadmap for patentees in such parallel proceedings.

In December Judge St. Eve stayed the patent infringement pending completion of the PTO’s reexamination of the patent-in-suit.  Shortly thereafter, the patentee filed a motion to reopen the case for the limited purpose of amending the protective order to allow submission of material information to the PTO.  The patentee explained that the PTO’s duty of disclosure in reexamination proceedings requires submission of all information that may be material to the patentability of the patent.  The protective order, however, did not “expressly permit submission of confidential information to the PTO.”   Because of these conflicting obligations, the patentee asked that the protective order be changed to recite an express exception that the disclosing party must submit “confidential” or “highly confidential” information using the specific procedure outlined in MPEP 724.02.

The accused infringer opposed amendment of the order, asserting that only patent and printed publications were relevant to reexaminations and that the patentee was trying to bypass improperly the requirements of the protective order.  Judge St. Eve disagreed, finding that “material information” in a reexamination, as in original prosecution, may include information beyond “patents and other printed publications,” and that the patentee’s was request was only to amend the protective order not to violate it.

Judge St. Eve therefore granted the patentee’s motion and amended the protective order to recite:

Other Proceedings: By entering this Stipulated Protective Order and limiting the disclosure of information in this case, the Court does not intend to preclude another Court or the United States Patent and Trademark Office from requiring, by an order, law, or regulation, the disclosure of documents, things, or information in another case or proceeding. Any party or other person subject to this Stipulated Protective Order that is required to disclose information designated CONFIDENTIAL or HIGHLY CONFIDENTIAL pursuant to this Stipulated Protective Order shall promptly notify the Disclosing Party so that the Disclosing Party may have an opportunity to appear and be heard on whether that information should be disclosed, and shall notify the Requesting Party that such information is subject to this Stipulated Protective Order. Any submission of information designated as CONFIDENTIAL or HIGHLY CONFIDENTIAL to the United States Patent and Trademark Office shall be made under MPEP § 724.02.

The Judge also required the patentee to petition for expungement once the reexamination is completed.

Perhaps other judges will be persuaded to include a similar provision in their orders.

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