At least one Judge has now ruled that trial counsel may advise a plaintiff patentee on amending its claims subject to patent reexamination before the USPTO, even where trial counsel has access to defendants’ confidential information disclosed during litigation. 

On September 8, 2010, in Xerox Corp. v. Google, Inc. et al., the District of Delaware adopted plaintiff’s proposed-protective-order language because, according to the court, plaintiff patentee should not be denied the advice of its trial counsel in amending claims on reexamination even where counsel had access to defendants’ confidential information.  Following the Federal Circuit’s logic in In re Deutsche Bank Trust Co., 605 F.3d 1373 (Fed. Cir. 2010) (precedential Order), the Court balanced defendants’ concern that their confidential information could be competitively misused in strategically narrowing plaintiff’s patent claims during reexamination against plaintiff’s right to counsel of its choice.  Where Deutsche Bank considered whether trial counsel with access to defendant’s confidential information should be barred from prosecuting patents, Xerox explicitly considered whether trial counsel with access to defendant’s confidential information should be barred from participating in patent reexamination.  The Xerox Court ultimately found that the potential harm in denying plaintiff the full benefit of its trial counsel outweighed the risk of inadvertent or competitive use of defendants’ confidential information by plaintiff’s trial counsel in evaluating potential claim amendments on reexamination. 

The Court First Analyzed The Risk of Inadvertent Disclosure of Defendants’ Confidential Information

The Xerox Court first considered the risk of inadvertent disclosure of defendants’ confidential information.  The Court agreed with defendants that any use of their confidential information by plaintiff during reexamination would be improper and a violation of the interim protective order; however, that risk was not “unacceptable” as delineated by the Federal Circuit in its Order in Deutsche Bank for at least five reasons.  First, unlike patent prosecution, patent reexamination is a “limited proceeding assessing only the patentability of existing claims against specific prior art references.”  Second, defendants’ confidential information is “basically irrelevant” to determining patentability in the reexamination context.  Third, “while claims may be broadened during prosecution to support new, tailor-made infringement allegations, amendments made during reexamination can only serve to narrow the original claims.”  Fourth, any details added to a claim in reexamination to distinguish it from the prior art must already exist in the original patent’s specification.  Fifth, a patentee seeks to preserve the broadest possible reading on its claims during reexamination, regardless of any insight gleaned from defendants’ confidential information. 

The Court Then Analyzed The Potential Harm To Plaintiff In Limiting Its Choice Of Counsel

After considering the risks to the defendants, the Court analyzed the potential harm in denying the plaintiff its choice of reexamination counsel, finding that plaintiff had a strong interest in choosing its own counsel “particularly in the complex and technical realm of patent litigation.”  Plaintiff’s choice of reexamination counsel was significant for two reasons.  First, plaintiff’s trial counsel acquired expertise in the patents-in-suit, including an in-depth understanding of the claim language and prior art.  The Court reasoned, “[f]orcing plaintiff to rely on less knowledgeable counsel during reexamination would thus increase costs and duplicate efforts.”  Second, plaintiff had the right to formulate consistent litigation strategy because “choices made before the PTO [] have consequences in this court.”

This case is significant in what it adds to the Federal Circuit’s recent precedential Order in Deutsche Bank, which was silent on the issue regarding patent reexamination.  Judge Thynge recognized the key differences between patent prosecution and patent reexamination, such as the inability to broaden claims in reexamination and the importance of maintaining consistent arguments across the two parallel proceedings.  Relying on Deutsche Bank, the Court then tailored a decision appropriate for patent reexamination.  This case is a welcome addition to the growing body of decisions addressing the overlap between patent reexamination and parallel district court litigation.