In ScentAir Technologies, Inc. v. Prolitec, Inc., IPR2013-00179 (JL), Paper 9 (April 16, 2013), the Board denied ScentAir’s request to file a motion to disqualify Prolitec’s lead counsel from representing Prolitec in an inter partes review (IPR) before the PTAB. ScentAir argued that Prolitec’s counsel should be disqualified because they were subject to a protective order in a related district court case involving the same patent and parties that precluded litigation counsel from using confidential information obtained in the district court case in other proceedings and that Prolitec’s counsel could not participate in the IPR without revealing such confidential information. The Board rejected that notion, stating: 

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. 

The Board refused to presume that counsel would violate the district court protective order and instructed counsel to promptly notify the Board “if it becomes impossible for counsel to represent Prolitec properly without violating the protective order.” The Board also stated that ScentAir could renew its request “upon receiving indication from the [district court] that any protective order entered in that case bars litigation counsel from being counsel of record in an inter partes review before the [PTAB].”

This is not the first time the Board addressed the issue of participation by litigation counsel in an AIA post-issuance proceeding. In SAP America, Inc. v. Versata Development Group, Inc., CBM2012-0001, Paper 21 (November 6, 2012), the Board denied the patent owner’s motion for pro hac vice admission for its litigation counsel’s participation in the PGR proceeding. The Board determined that the patent owner failed to meet its burden of showing good cause for the Board to recognize litigation counsel pro hac vice during the proceeding based on its failure to address or mention the district court’s finding of a pattern of protective order violations by litigation counsel in a related litigation involving the parties and the patent under review.