On October 24, 2016, ALJ Dee Lord issued the public version of Order No. 42 (dated October 14, 2016) granting-in-part Respondents Broadcom Limited and Broadcom Corporation’s (collectively, “Broadcom”) motion to amend the protective order to add a patent prosecution bar in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same (Inv. No. 337-TA-1010).

By way of background, this investigation is based on a complaint filed by Tessera Technologies, Inc., Tessera, Inc., and Invensas Corp. (collectively, “Tessera”) alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain semiconductor devices, semiconductor device packages, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,856,007; 6,849,946; and 6,133,136. See our May 24, 2016 and July 1, 2016 posts for more details on the complaint and Notice of Investigation, respectively.

According to the Order, the ALJ found a risk of inadvertent use of confidential business information (“CBI”) outside of the investigation by seven attorneys representing Tessera who are licensed to prosecute patent applications at the U.S. Patent and Trademark Office. ALJ Lord expressly limited the information triggering the prosecution bar to the technical CBI identified by Broadcom, such as “design rule” documents that “specify certain geometric and connectivity parameters provided by semiconductor manufacturers to verify that a specific semiconductor can be manufactured properly by the foundries” and GDS files that “provide layer-by-layer descriptions of integrated circuits.” Further, the ALJ found that the proposed bar reasonably reflects the risk of technical CBI being inadvertently misused, noting that the first three subject matter categories in the proposed bar (“semiconductor device interconnects,” “planarization of semiconductor device surface topography,” and “packaging of semiconductor devices”) reflect the subject matter of the asserted patents and thus render the fourth category (“subject matter of the patents-in-suit”) redundant.

The ALJ also held that the patent prosecution activities prohibited under the bar are those constituting “competitive decisionmaking” which, over Tessera’s objection, includes amending claims in post-grant proceedings such as inter partes reviews. ALJ Lord noted, however, that the prosecution bar would not preclude trial counsel from participating in “all other aspects of the post-grant review proceedings,” including those involving “claim construction and prior art.”

In addition, ALJ Lord found the duration of the proposed bar—two years after the earlier of (i) the final resolution or termination of this investigation, including all appeals; or (ii) the withdrawal of that attorney from the protective order—to be reasonable.

Finally, the ALJ determined that Tessera did not make the requisite showing for exempting particular individuals to the prosecution bar, noting Tessera’s acknowledgement that other than post-grant proceedings, it is unlikely that its trial counsel will be performing the proscribed activities.

Thus, ALJ Lord granted-in-part Broadcom’s motion and amended the protective order to include the foregoing provisions relating to a prosecution bar.