Protective Order : US PTO Litigation Alert™

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.

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