Magistrate Judge Grewal in Software Rightrs Archive, LLC v. Facebook, Inc. (N.D. Cal. Jan. 15, 2014), held that the Northern District's Model Protective order applied to IPR proceedings (which were adopted long after the model order was), because they cover patent prosecution, including "directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims." The court also held it applied to expired patents. The case also discusses burdens of proof in light of the adoption of the model order. (At time of posting, the court's web page seems to be down, but it's here, and hopefully the order will be there.)
Balance the risk to the discloserthat an amendment would use confidential information adverselyagainst the very substantial harm to the patent owner of not being able to use his litigation counsel in an IPR… — On balance all I really see is hypothetical damage to the discloser but very real and substantial damage to the patent owner.
That’s a valid point but it doesn’t entirely eliminate the risk to the alleged infringer. While intervening rights could limit pre-amendment damages, there’s the still the risk of post-amendment damages. I don’t recall any case actually applying equitable intervening rights going forward though I guess that’s technically possible…but I wouldn’t want to rely on that as the alleged infringer. I’d much rather not give the patentee my confidential info.
Thanks – not something I’ve ever thought about. Seems weird though — what if the claim is narrowed but still infringed? Anyhow, adios to this thread!
David, an expired patent cannot be amended — at least where scope is changed. Reason, the amended claim is barred from any damages by 252.
Derek, well I beg to differ. The vice that the prosecution bars avoids is removing unnecessary limitations to broaden the claims.
During reissues, reexaminations, and IPR, claims can be narrowed. But if they are narrowed, the infringer gets absolute intervening rights and he is out of the case.
How is he harmed?
I don’t know the answer to this: you get six years after expiration to get pre-expiration damages (barring laches, etc.). So, if I have a patent in IPR and it expires, can it be amended so that I can recover damages for period prior to expiration on those claims? I just don’t know.
Just because IPRs only provide for narrowing amendments does not mean that an alleged infringer cannot be harmed. The claims could be absurdly broad (and very unpatentable), and the patentee could narrow the claims to cure the patentability problem while still covering the alleged infringer. I don’t see why the patentee should have access to the alleged infringer’s confidential info during that process.
But I don’t see how that logic holds up for an expired patent where claim amendments aren’t possible.
In other words, if counsel or an expert receives “counsel only”(?) confidential information they would then be barred from IPRs.
Of course, I think this is wrong because claim in IPRs are, like reissues and reexaminations, incapable of being broadened. There is no way a disclosing infringer could be adversely affected.
What this does is strip patent owners of counsel most familiar with a case from defending parallel litigation.
I hope that patent owners refuse to sign these kinds on protective orders and take a case up to the Federal Circuit ASAP.
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