Prosecution Bar : US PTO Litigation Alert™

District Court Developments

Scott Daniels | February 15, 2013

Two reexamination issues that frequently face District Court trial judges in patent infringement actions are (1) whether to stay the action pending completion of a parallel reexamination proceeding at the PTO and (2) whether to bar the patent owner’s litigation attorneys from participating in the reexamination.  This week saw interesting examples of both.


In Reiber v. TDK, 2013 U.S. Dist. LEXIS 19658, Judge William Shubb issued the tersest, yet most nuanced stay decision we have ever seen.

Considering the stage of the litigation, the potential simplification of the proceedings, and the potential for undue prejudice or tactical disadvantage to the plaintiffs should a stay issue … the court finds that the balance of the equities favors a stay as to dispositive motions, any Markman hearings, the final pretrial conference, and trial, but does not favor a stay as to discovery, discovery-related motions, and status (pretrial scheduling) conferences.

In a single sentence Judge Shubb identified and analyzed each of the three factors required for determination of whether to stay his case.  He then split the baby in half, suspending the substantive events of the litigation, but allowing discovery between parties to continue.

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Specific Threat Required for Reexamination Prosecution Bar against Patentee’s Litigation Counsel

Scott Daniels | December 10, 2012

In cases where a patent is simultaneously involved in litigation in District Court and reexamination at the Patent Office, it is common for the accused infringer to ask that the protective order bar the patentee’s litigation counsel from participating in the reexamination.  Trial judges, however, are often reluctant to grant such a reexamination prosecution bar, unless the accused infringer identifies specific threats that would justify the bar.  This reluctance was on display last week in Helferich Patent Licensing v. Phoenix Newspapers, 2012 U.S. Dist. LEXIS 172422 (D. Ariz.).

The case is a consolidation of four infringement actions, involving seven patents, each of which is now in reexamination.  The accused infringers noted that the patentee is “currently pursuing additional claims” in the reexaminations, and asked Judge Neil Wake to bar the patentee’s litigation counsel from participating in the prosecution of the reexaminations.  The accused infringers were evidently concerned that patentee’s litigation counsel might use confidential information, obtained under the protective order, to fashion new claims that would cover the accused infringer’s intended future products.

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Facebook Obtains Prosecution Bar against Pragmatus for Reexamination

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. 

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Judge Campbell Denies Prosecution Bar in Reexamination

Scott Daniels | October 26, 2011

Cases with parallel infringement litigation in District Court and reexamination at the PTO often present the issue of whether a patentee’s lawyer, with access to confidential information under a protective order, may also defend the patent-in-suit in reexamination.  Accused infringers sometimes worry that the patentee’s counsel will use their confidential information, disclosed under the court’s protective order for use in the court case only, in the co-pending reexamination.   Patentees, on the other hand, often do not want to be forced to hire separate litigation and reexamination lawyers.

Judge David Campbell of the District Court in Arizona wrote an informative decision last week in NeXedge v. Freescale Semiconductor et al., 2011 U.S. Dist. LEXIS 121737, summarizing the applicable standards for resolving such disputes.  The accused infringer asked Judge Campbell to include in his protective order a provision barring each of the patentee’s lawyers, who had subscribed to the protective order, from participating in the reexamination. 

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