Scott Daniels | July 10, 2012
The issue of a prosecution bar – whether a lawyer who represents a patentee and who receives confidential information from an opposing party in an infringement action should be permitted to participate in a parallel reexamination – arose last week in the Northern District of California infringement action, Pragmatus v. Facebook (5:11-cv-2168).
Magistrate Judge Paul Grewal granted Facebook’s motion to prevent Pragmatus’ lawyers who had subscribed to the Protective Order in the case from also participating in parallel reexamination proceedings at the Patent Office. Magistrate Grewal first cited the CAFC’s decision in Deutsche Bank, 605 F.3d 1373 (Fed. Cir. 2010) to the effect that, in determining whether a particular lawyer may participate in a reexamination, a court must (1) consider the risk of inadvertent use in the reexamination of confidential information learned by the lawyer from the litigation, and then (2) balance the potential harm to the accused infringer from that risk of inadvertent use and the potential harm to the patentee from using separate counsel.
Magistrate Grewal then explained that “it would be unfair to allow representatives of Pragmatus to make choices about whether to and how to narrow a given claim during reexamination with [Facebook’s] highly confidential information in hand.” He acknowledged the additional expense to Pragmatus of hiring separate reexamination counsel, but concluded that this expense did not outweigh the risk to Facebook.
In analyzing the issues, Magistrate Grewal referred to the relevant portion of the Northern District’s Model Protective Order, which is consistent with his ruling and reads:
Absent written consent from the Producing Party, any individual who receives access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information shall not be involved in the prosecution of patents or patent applications relating to [insert subject matter of the invention and of highly confidential technical information to be produced], including without limitation the patents asserted in this action and any patent or application claiming priority to or otherwise related to the patents asserted in this action, before any foreign or domestic agency, including the United States Patent and Trademark Office (“the Patent Office”). For purposes of this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims. To avoid any doubt, “prosecution” as used in this paragraph does not include representing a party challenging a patent before a domestic or foreign agency (including, but not limited to, a reissue protest, ex parte reexamination or inter partes reexamination). This Prosecution Bar shall begin when access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information is first received by the affected individual and shall end two (2) years after final termination of this action.
(Emphasis added). Note that the Model Order allows the lawyer for the accused infringer to participate in parallel reexaminations. Also, the prosecution bar extends two years after the end of the litigation.