Terms and Concepts
A protective order dictates how confidential documents produced during a litigation are handled by the parties. When crafting a protective order, it is imperative for both the plaintiff and defendant to consider the possibility of a concurrent reexamination. For example, the interplay between the duty of disclosure in a reexamination proceeding and a protective order in a concurrent litigation is a critical and difficult issue facing both the patent owner and the third party requester. Another important issue is the extent to which individuals involved in the litigation (and privy to confidential materials) should be involved in prosecution of a reexamination.
How should parties craft a protective order in a concurrent district court litigation or ITC investigation to prepare for a possible reexamination proceeding at the PTO? Is it possible for a patent owner to satisfy its duty of disclosure while adhering to the guidelines of a protective order? What limitations does a protective order place on the resources available to a patent owner to prosecute the reexamination proceeding? What mechanisms are available to provide information of nonobviousness covered by the protective order in the reexamination proceeding?
General Prosecution Bars May Be Insufficient
When crafting a protective order (“PO”), it is imperative for both parties to consider the possibility of a concurrent reexamination. The court’s standard PO may include a general prosecution bar, or the parties may be relying on previous templates that include a general prosecution bar. Reexamination was not a significant issue in patent litigation in the recent past. Unfortunately, such prosecution bars typically refer only to “patent applications.” But a reexamination proceeding is not a patent application and it unclear whether such a prosecution bar would apply to reexamination proceedings. Whether either of the parties are contemplating reexamination or not, the PO should explicitly deal with reexamination proceedings.
The PO Must Balance Competing Concerns
The parties will have competing concerns. The accused infringer will be concerned that its confidential information may be used to amend existing claims or craft new claims to better cover accused products. This concern is ameliorated to some degree by the fact that claims may not be broadened during reexamination beyond the claims in reexamination, so the concern is not as great as it is with a patent application with no such restrictions. The patent owner, on the other hand, must be able to freely communicate its trial strategy, including invalidity and claim construction positions, to its reexamination counsel lest the two teams inadvertently take inconsistent positions. This is especially a concern given the different claim construction regimes used by the PTO and the court. The accused infringer is not so restricted because it has no right to amend the claims in reexamination. Both parties may also need to rely on material produced by the other side over the course of discovery in support invalidity (or patentability). One example is evidence related to secondary considerations (objective indicia) for nonobviousness such as commercial success, copying, failures, long felt need (or lack thereof). The PO must balance these legitimate competing concerns.
In short, the authors have seen a wide spectrum of POs. Some are overly restrictive and effectively wall off trial counsel from reexamination counsel on the patent owner side, putting the patent owner at severe risk of taking inconsistent positions between the two proceedings. Some are not restrictive enough, putting no restraints on trial counsel’s participation. Some altogether fail to deal explicitly with reexamination, thereby leaving the issue open to further dispute, resolution of which may waste valuable court resources.
Scope of the Duty of Disclosure in a Reexamination Proceeding
In a reexamination proceeding, each individual associated with the patent owner has a duty of candor and good faith in dealing with the PTO. The duty of candor includes a duty to disclose to the PTO all information known to that individual to be material to patentability in a reexamination proceeding [37 C.F.R. §§ 1.555(a) and 1.933(a)]. Individuals who have a duty to disclose to the PTO all information known to be material to patentability in a reexamination proceeding include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved in a reexamination proceeding” [37 C.F.R. §§ 1.555(a) and 1.933(b)].
Some practitioners argue that the scope of the duty of disclosure in 37 C.F.R. § 1.555 is ambiguous. Are all employees of the patent owner as well as every attorney or agent that represent the patent owner subject to the duty of disclosure regardless of their involvement in prosecution activities? For example, are litigation counsel covered by the duty of disclosure? Are retained experts?
Several district courts have limited the scope of the duty of disclosure to only those attorneys or agents substantively involved in preparation or prosecution. In Intelli-Check v. Tricom Card Techs., Inc. [2005 U.S. Dist. LEXIS 38794 at *14 (D. N.J. Nov. 10, 2005)] the District Court for District of New Jersey subscribed a duty of candor on each named inventor, prosecuting attorney, and other individuals who are substantively involved in the preparation or prosecution of the patent application. Similarly, Chief Judge Spencer in the Eastern District of Virginia found that a “party is only bound by the duty of candor, and therefore can only be penalized for failure to disclose material information, if they are substantively involved in the preparation and prosecution of the patent application” [Memorandum Order, March 31, 2009, in TeleCommunication Systems, Inc. v. Mobile 365, Inc., C.A. No. 3:06CV485, p. 8].
Therefore, a key question facing a patent owner is who can be called upon to prosecute or consult on strategy for the reexamination proceeding or the prosecution of other pending applications. To what extent may the patent owner’s trial team participate in prosecution of its pending patent applications, reexaminations, reissues, or interferences using information derived from the litigation? To what extent may the accused infringer’s trial team participate in prosecution of their own patent applications in the same subject matter as the patents in suit, in reexaminations of the patent owner’s patents, or in interferences involving the patent owner? Many litigation attorneys take a conservative approach to this issue and strictly avoid any involvement or discussions related to the prosecution of pending applications or reexaminations. Other litigation attorneys take a less conservative approach and participate in consultation on specific reexamination issues.
Additionally, a patent owner also must consider to what extent their reexamination expert may be considered to be “substantively involved in the preparation or prosecution of the patent application.” This consideration may influence whether a patent owner utilizes that same expert for the litigation as in the reexamination proceeding.
Considerations for Crafting a Protective Order
When crafting a protective order for district court litigation or ITC investigations, the parties must consider the possibility of a reexamination being filed. For example, the parties may establish procedures to allow the filing of materials obtained during discovery that are subject to a protective order in the PTO reexamination proceeding. Absent sufficient procedures, a patent owner may be barred by the protective order from presenting materials to support patentability (e.g., evidence of secondary considerations of nonobviousness) to the PTO. Similarly, the third party requester may be barred from submitting evidence supporting its obviousness position to the PTO.
Another important consideration is how to craft the prosecution bar provision of the protective order. Prosecution bar provisions set forth the parameters for the involvement of individuals associated with litigation in a PTO proceeding involving the patent-in-suit or a family member of the patent-in-suit. Patent owners typically will want the attorneys handling their reexamination to be able to discuss strategy with litigation counsel so consistent positions can be advanced in the multiple forums. Furthermore, it is more cost effective for the patent owner to utilize the same counsel in both proceedings. When negotiating the prosecution bar provisions, the patent owner typically argues for a very narrow prosecution bar or even no prosecution at all. Defendants typically want broader, more restrictive, prosecution bars.
As a general matter, it is often argued that no party having access to another party’s highly-confidential technical information under a protective order should be allowed to amend or supervise the amendment of pending claims in applications or claims under reexamination in the same technical space, nor should they be allowed to draft new claims (the protective order should explicitly and separately address applications and reexaminations. A reexamination is not an “application” and if the order simply addresses “applications,” then reexaminations would not expressly be covered). In-depth knowledge of a competitor’s highly-confidential technical information, combined with the ability to amend or draft claims, may convey an unfair advantage to the claim drafter. This applies equally to patent infringement plaintiffs and defendants, and applies equally whether the highly confidential information is received from an adversary or a party with temporarily aligned interests such as a co-defendant.
Unresolved questions remain regarding the interplay between non-prosecution clauses in a protective order and a patent owner’s duty of disclosure under 37 C.F.R. §§ 1.555 and 1.933. We expect significant developments in this area as the Office of Patent and Legal Administration (”OPLA”) and the courts wrestle with this issue.
Handling Conflicting Duties
In a concurrent litigation, a patent owner may be faced with the circumstance in which it has the duty to disclose materials to the PTO under the duty of disclosure but has a conflicting duty to maintain the confidentiality of these materials under the protective order. How does a patent owner handle these conflicting duties?
Several practitioners have argued that the duty of disclosure to the PTO takes precedence over a protective order of a district court. Chief Judge Spencer of the Eastern District of Virginia addressed the issue of whether the PTO’s duty of disclosure overrides the protective order of a district court such that the party does not have to obtain authorization to file materials subject to the protective order in the PTO [Memorandum Order, March 31, 2009, TeleCommunication Systems, Inc. v. Mobile 365, Inc., C.A. No. 3:06CV485, p. 9]. Judge Spencer found that there was “no evidence – legal or logical – to support” the patent owner’s (plaintiff’s) contention that the protective order is overridden in its entirety by the PTO’s disclosure requirements. A patent owner must therefore carefully consider the provisions of the district court’s protective order before submitting materials covered by the protective order to the PTO.
In sum, both parties must consider the possibility of concurrent reexamination and must pay close attention to the protective order. Patent owners must understand their disclosure obligations under the reexamination rules. Patent owners should also consider carefully the duties and restrictions imposed upon them by receipt of such confidential or classified information. Accused infringers likewise need to be concerned about the impact of disclosing highly-confidential technical information to other parties capable of drafting and amending patent claims.
The PTO has struggled with the issue of submission of third party confidential materials covered by a protective order. In recent decisions, the PRO has stated that information covered by a court’s protective order is not to be submitted without evidence that permission has been granted for the public disclosure of the information. If such evidence is not provided, the PTO expunges the entire filing containing the information.
Submission of Evidence Supporting Patentability
Another important consideration in drafting a protective order is the ability to submit to the PTO evidence favorable to patentability. Often in patent litigation, the best evidence of patentability originates from the accused infringer or another third party. This is especially true where the defendant is advancing obviousness-based invalidity challenges. If evidence of secondary considerations of non-obviousness exists, the patent owner will want to present this evidence to the PTO in a reexamination. However, if this evidence is marked confidential pursuant to a protective order, the patent owner will not be able to submit the evidence without permission from the owner of the information or the Court.
The issue of submission of third party confidential materials to the PTO in support of patentability is particularly difficult. Currently, no PTO procedures exist to file evidence in support of patentability under seal. Once filed, the materials are placed in the public record. In contrast, documents material to unpatentability may be filed under seal. Some practitioners argue that this provides an unfair advantage to the third party because a third party can allow the filing of documents counter to patentability in the PTO but block the filing of documents in support of patentability.
When negotiating the protective order, the patent owner must consider the potential need to file confidential evidence in support of patentability to the PTO and put provisions in place. One avenue to consider is a proactive procedure to challenge the designation of materials as confidential. Often protective orders require challenges to the confidentiality designation of a document to be made promptly, often long before the prospect of reexamination has particularized in the minds of the parties. Therefore, the parties should address exceptions to allow for later challenges to the designation of documents in the event of a reexamination proceeding. Finally, there is a need for the PTO to be mindful of this issue and implement procedures to address it.
- Intelli-Check v. Tricom Card Techs., Inc. (D. N.J. Nov. 10, 2005)
- TeleCommunication Systems, Inc. v. Mobile 365, Inc. (C.A. No. 3:06CV485)