Archive for the ‘Prosecution Bar’ Category

Prosecution Bars and PTAB Practice

Friday, May 10th, 2013

In an earlier post we explored many ways that reexamination differs from post-grant review, inter partes review, and covered business method review. The PTAB has been very clear that reexamination and AIA patent trials are very different.  For example, in ScentAir Technologies v. Prolitec, Inc. (IPR2013-00179 (JL)), the PTAB denied authorization for ScentAir to file a motion to disqualify Prolitec’s counsel in an inter partes review based on a prosecution bar in a protective order from the parallel litigation (paper no. 9).

During the conference call, the PTAB received assurances from counsel for ScentAir that “. . . nothing in the district court’s protective order expressly bars counsel from being counsel of record in an inter partes review before the Patent Trial and Appeal Board, although there is a ‘prosecution bar’ in the protective order prohibiting litigation counsel from drafting or amending claims while prosecuting an application before the U.S. Patent and Trademark Office.”

The Board denied authorization for ScentAir to file a motion for disqualification:

The Board finds informational and key that the protective order at issue specifically bars litigation counsel from prosecution activities without mentioning litigation or trials before the Patent Trial and Appeal Board. An inter partes review is not original examination, continued examination, or reexamination of the involved patent. Rather, it is a trial, adjudicatory in nature and constituting litigation.

In the future, litigation counsel will have to be more detailed about what activities are subject to a prosecution bar to avoid confusion about whether counsel in the district court litigation may participate in trials before the PTAB.

Pro Hac Vice Admission Challenge to Test Extent of Participation of Litigation Team Member with Knowledge under Protective Order in Covered Business Method Patent Review

Tuesday, November 6th, 2012

In the first covered business-method patent review ever filed (CBM2012-000001), SAP America and Versata Development Group are in a dispute as to whether a litigation attorney for Versata should be admitted pro hac vice in the PTAB trial. Apparently there is concern by SAP’s counsel about the attorney’s participation, because the Versata litigator was exposed to sensitive information, including information about SAP’s products, covered under a protective order in the earlier litigation (currently on appeal before the Federal Circuit).  SAP is concerned that the sensitive information (which it asserts is more than is publicly known), would give Versata an unfair advantage in the trial.

In an order entered November 1, 2012 as paper no. 16, the PTAB summarized the arguments and requested further information about the protective order from the parties before making a final determination:

SAP Opposes Versata’s request.  SAP Opposition to Motion for Pro Hac Vice Admission, Paper 15. SAP states that Mr. Cole, as trial counsel in the related litigation, gained access to highly confidential and proprietary information about SAP and its products. The use of this information is said to be governed by a protective order from the district court. SAP expressed a concern that Mr. Cole’s participation in both the district court litigation and the review proceeding puts him in a position where he could affect the scope of the claims of the ’350 patent while knowing how SAP’s products operate beyond that publically known. Id. at 2. SAP also represents that:

[A]llowing Mr. Cole to participate in this proceeding could effectively circumvent the restrictions of the underlying district court’s protective order, which precludes litigation counsel’s use of any SAP protected materials beyond the scope of that litigation.

Id. at 3.

In addition to Mr. Cole, Versata also seeks to employ expert witnesses in this proceeding that had access to SAP’s confidential information in the related litigation. SAP again sought to oppose this reliance representing that the protective order in the related litigation precluded the use of experts and consultants that received information under the district court protective order in proceedings before the Office.

Versata sought to allay SAP’s concerns by stating that they would not seek to file a motion to amend in this proceeding. The Board appreciates Versata’s attempt to lessen any potential prejudice to SAP should Versata be authorized to rely upon Mr. Cole and the requested experts. The Board however, has reviewed Versata’s motion for pro hac vice and has determined that it requires further information regarding the protective order to better understand what, if any, impact the district court’s protective order has upon this proceeding.

Versata’s offer to forego amendment is directed to a frequent concern of patent owners in reexamination proceedings who seek to bar litigation counsel with access to protected information from participating in prosecution activities.  But in responsive briefing, SAP identified a concern beyond mere amendment of the ‘350 patent:

Regarding Section I.c of the Board’s Order, Versata’s offer not to amend its claims does not allay SAP’s concerns regarding participation by Versata’s lead trial counsel in this proceeding. It is well established that, with or without a formal amendment, statements and arguments made during post-grant proceeding can change the meaning of a claim term, and thus scope of that claim. See Marine Polymer Technologies, Inc. v. Hemcon, Inc. 672 F.3d 1350, 1363-64 (Fed. Cir. 2012) (en banc); Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, 1336 (Fed.Cir.2011); CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1362– 63 (Fed.Cir. 2007). Thus, even if Versata does not amend its claims, Mr. Cole can still influence the scope of Versata’s claims through his participation in this proceeding.

It is now up the PTAB to make a decision in this dispute.  It will be interesting to see how that PTAB uses the information concerning the protective order to decide this matter.  We will all stay tuned.

Protective Orders in View of Reexamination

Saturday, July 16th, 2011

In 55 Brake, L.L.C. v. Audi of America, Inc. et. al., (case 1-08-cv-00177, IDD), plaintiff 55 Brake is a patent owner asserting patent infringement of its ‘587 patent by several large automobile manufacturers.  The parties entered a protective order to control the discovery of confidential information.  It bars litigation counsel in the case from participating in any reexamination proceedings of the ‘587 patent:

Unless otherwise directed by the Court or authorized in writing by the Producing Party, no person involved in Patent Prosecution (defined below) on behalf of Plaintiff 55 Brake, L.L.C., including without limitation the inventors of any pending patent application described herein, shall have access to CONFIDENTIAL or HIGHLY CONFIDENTIAL Discovery Material of a Producing Party . . . For purposes of this Protective Order, Patent Prosecution shall be defined as preparing, drafting, reviewing, filing, responding to office actions, signing oaths or declarations, or prosecuting patent applications or patents, or assisting in any of those activities, with respect to . . . (c) any . . .re-examinations of any of the patents asserted in the current litigation . . . .

One of the defendants filed a reexamination of the ‘587 over two years later.  55 Brake then motioned the Court to amend the protective order to allow its litigation counsel to assist its reexamination counsel in the defense of the ‘587 patent.  55 Brake offered that its litigation counsel would only assist in prior art issues since its litigation team had much more knowledge about the prior art issues than the reexamination team.  But the Court was not persuaded. (more…)

Stays Pending Reexamination and Experts Subject to a Prosecution Bar

Thursday, July 14th, 2011

In Interval Licensing LLC v. eBay, Inc., et. al., 2-10-cv-01385 (WAWD),  Interval Licensing (Interval) filed a motion for reconsideration of an earlier order by the Court to stay the litigation pending reexamination.  On July 12, 2011, Judge Marsha J. Pechman denied the motion.

The order states that motions for reconsideration are disfavored in that district and that the court will ordinarily deny them absent a showing of manifest error in the prior ruling or a showing of new facts or legal authority which could not have been brought to its attention with reasonable diligence.  The order found that the facts presented by Interval were not new because they could have been presented in the original opposition to the stay filed by Interval.  For example:

  • Interval chose to rely on its March 28, 2011 brief when filing its opposition motion on June 6, 2011, rather than to supplement the June 6th filing for reasons that are not clear.
  • Interval argued that it performed substantial work on briefing Markman issues and discovery, yet failed to show why this work would be lost pending the outcome of the reexamination.
  • Interval argued that the experts it retained to review source code will be prejudiced by virtue of the stay because they agreed to a patent prosecution bar until one year after resolution of the case.   But the protective order was entered on April 14, 2011 and Interval failed to point out this provision in its opposition to the motion to stay.  Also, the Court found the prejudice to the experts was not a factor.  “Presumably, the restriction to which the experts choose to submit is more than offset by the benefit of generating substantial income by rendering expert services.”
  • Interval also took issue with the Court’s statement that “Defendants have presented a substantial body of prior art that they believe will reshape the four patents at issue in this litigation.”  Interval noted that the examiner granted reexamination on fewer references than the Defendants reported.  However, since the examiner is not precluded from relying on other references, this does not show manifest error.

So what are the takeaways from all of this?

  1. If you want to oppose a motion to stay, present all of your facts in your original motion.  Be thorough.
  2. If you are going to assert that a stay is detrimental due to preparation (e.g., Markman analysis, or discovery), clearly describe how the stay is prejudicial to the case. 
  3. If you are an expert involved in a matter with a prosecution bar, consider the possibility that a stay of the matter may preclude your activities in that technology area for years if a stay pending reexamination is ordered.  Consider the possibility that your exposure to confidential material could be minor at best, yet you could be precluded for the duration of the stay (which may also end in dismissal of the case).