Patent attorneys play many roles in the life of their clients’ patents, from drafting and prosecuting patent applications before the Patent Office, to defending the validity of granted patents before the Patent Office, as well as litigating patent infringement cases in the Federal courts. However, when litigating patent infringement cases, attorneys are often exposed to confidential material of their clients’ adversaries during the discovery process. To prevent attorneys who view such confidential material from using it to exercise competitive decision making on behalf of their clients, courts routinely institute “prosecution bars” which prevent such attorneys from prosecuting their clients’ related patent applications at the Patent Office.
While prosecution bars are nothing new in patent cases, where highly confidential technical material often plays a substantial part of discovery, the scope and severity of such prosecution bars, and protective orders in general, vary a great deal from circuit to circuit and district to district. Prosecution bars also vary in how they address or distinguish between pre-grant and post-grant activities at the Patent Office. Judge Robinson, who earlier this year already made news by changing her form scheduling order to shift discovery burdens towards the initial stages of discovery, has potentially set a benchmark in how prosecution bars may be handled in her court and others around the country.
In a sua sponte motion, Judge Sue Robinson of the District of Delaware established a “limited prosecution bar” for all of a plaintiff’s attorneys who view a defendant’s highly confidential source code, barring those attorneys from participating in any reexamination, inter partes review or any other post-grant review before the Patent Office. Versata Software Inc., et. al. v. Callidus Software Inc., D.I. 106, 1-12-cv-00931 (DED June 19, 2014) (Robinson, J.) Judge Robinson’s order cites to and closely tracks Judge Ron Clark’s similar order in the Eastern District of Texas, issued late last year. Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd., et al., D.I. 129, Civ. No. 12-557 (E.D. Tex. Nov. 18, 2013) (Judge Ron Clark)
Judge Robinson’s order comes at a time of incredible change as the patent bar adapts to the new administrative review procedures established by the America Invents Act (AIA). Such procedures provide new avenues to challenge the validity of patents in the Patent Office after they are granted. Data from the Patent Office show that the use of such procedures is increasing rapidly, with over 1500 petitions filed since the procedures’ inception.
Judge Robinson’s prosecution bar is notable for several reasons, both pro-plaintiff and pro-defendant:
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Whether Judge Robinson’s limited prosecution bar will catch on in other courtrooms remains to be seen, however with the ever more important role the AIA’s new review procedures are playing in patent litigation, it would not come as a surprise if it does.
