Judge Grewal Compromises in Prosecution Bar Cases

Scott Daniels | May 9, 2013

Disputes over the role of infringement litigation counsel in parallel reexamination/review proceedings at the Patent Office are becoming commonplace.

The patent owner typically prefers that its lawyers who are handling the litigation also work on the prosecution before the PTO – they hope to minimize attorney fees and to avoid conflicting arguments in the two forums.  The accused infringer, on the other hand, worries that the patent owner’s litigation counsel might improperly use proprietary information obtained through the protective order to gain an unfair advantage in reexamination or review.  The accused infringer therefore asks that the protective order prohibit the patent owner’s litigation counsel from participating in any way in PTO proceeding.

Judge Paul Grewal of the Northern District of California was called upon to resolve this dispute in two cases this week – Grobler v. Apple, Inc. 2013 U.S. Dist. LEXIS 65048 & John v. Lattice Semiconductor Corp., 2013 U.S. Dist. LEXIS 65121 – and managed a compromise between the respective positions.  In two nearly identical decisions, Judge Grewal will allow the limited participation of the patent owner’s litigation counsel in the co-pending reexamination, but prohibit litigation counsel from participating in the amendment of original claims or the addition of new claims.

Judge Grewal began by acknowledging that a number of “other courts have rejected any expansion of the prosecution bar to reexamination or review proceedings because neither permits the broadening of patent claims.”  Nonetheless, the Judge concluded that the accused infringer still needs some protective: “the fact remains that claims [might] still be restructured in these proceedings in a way that would undoubtedly benefit from access to an alleged infringer’s proprietary information.”

The Judge therefore adopted the patent owner’s proposed compromise:

litigation counsel is prohibited from assisting in any crafting or amendment of patent claims. … While one might rightly question how [the accused infringer] is to police whether [the patent owner’s] litigation counsel has crossed the line from mere participation to crafting or amendment of claims, the risk of counsel ignoring its duties is inherent even under [the accused infringer’s] proposed total ban, and in any event counsel is presumed to follow its obligations to adhere to this court’s orders.

In one of the decisions, he added somewhat sardonically that “where, as here, reexamination or review proceedings are really nothing more than an extension of the litigation in the district court, there is even less of a reason to impose a total ban of the kind [the accused infringer] seeks.”


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