Archive for the ‘Protective Order’ 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.

Declaratory Judgment Plaintiff and Stays Pending Reexamination

Monday, March 12th, 2012

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents in suit.


Vertical owns U.S. Pat. Nos. 6,826,744 and 7,716,629 relating to Internet technologies.  Vertical sued Microsoft in the Eastern District of Texas and settled in 2009.  Later, Vertical informed Interwoven that its products infringed the patents as well.   Interwoven filed a declaratory judgment action in the Northern District of California and Vertical countered with a counterclaim for patent infringement. (more…)

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…)