Prosecution Bars, Experts, and IPR

I’ve written a lot about so-called prosecution bars (buy some of the books for Christmas gifts here!  They make great stocking stuffers for toddlers), and this case is in many ways not that unusual but it does raise one interesting issue and serves as a reminder to both check your side and the other’s for folks who may need to be subjected to a bar, and its scope.

The opinion is not online that I can find but is Emerson Electric Co. v. Sipco, LLC, 2016 WL 6833741 (N.D. Cal. Case No.16-mc-80164-DMR, Nov. 21, 2016).  A third party, Linear Technologies Corporation (“LTC”) was served with a subpoena that included a request for its source code.  LTC sought to ensure that one of the party’s experts, Ameroth, would not have access to it because he was participating in IPRs.  LTC had not instituted the IPRs and was not a party to the litigation.

Everyone agreed to amend to include a prosecution bar in the protective order (apparently it did not, before the subpoena, contain one), but the dispute was over whether Ameroth could view LTC’s source code and still participate in the IPR.

The magistrate granted a prosecution bar that precluded the accused party’s expert from participating in an IPR if the expert gained access to source code from the patentee.  In that sense, the case doesn’t add a whole lot to the mix.  But in its plain reasoning are three hidden lessons.

First, two lessons arise out of the way that courts (and the parties) define the “activities” that courts (and lawyers) focus on to determine whether someone should be barred, or not.  The typical court focuses on patent prosecution, and whether a particular practitioner is doing rote prosecution or is instead in position to be doing “competitive decision making” in terms of prosecution bars.  This court wrote:

[C]ompetitive decisionmaking may be a regular part of representation for counsel or experts who are engaged in work such as: obtaining disclosure materials for new inventions and inventions under development, investigating prior art relating to those inventions, making strategic decisions on the type and scope of patent protection that might be available or worth pursuing for such inventions, writing, reviewing, or approving new applications or continuations-in-part of applications to cover those inventions, or strategically amending or surrendering claim scope during prosecution.

That definition raises the first two lessons.

The first lesson is don’t use a form that simply says “prosecution.”  Even when applying this definition to practice before the USPTO, courts continue to split on whether IPRs (reeexam, reissue, etc.) are “prosecution.”  Some courts formalistically say “prosecution isn’t IPR” and so a protective order may not prevent someone from receiving highly confidential information but being involved in IPR.  (Or, it might:  therein is the issue). Other courts, even if they go beyond formalistically reading the protective order, hold that IPR does not create the same risk as prosecution, and so is not covered. Given the initial differences between the realistic probability of the PTAB in allowing claim amendments, you can understand why some courts had held that IPR did not present the risk of “shaping” claims that ordinary prosecution did.  (Given the slightly more moderate view of the PTAB in allowing amendments, maybe the reason for the split is dissipating?)

The take away on this first lesson?  If your prosecution bar does not specifically address IPR you may want to amend it.  Without clarity, you may be violating it, or the other side may be doing things you “think” they’re not supposed to do but which may be proper.  Many “forms” out there are not very good if you want clarity.

The second lesson is:  don’t stop at patent prosecution when figuring out what activities need to be covered, and as a result who needs to be covered.  Instead, imagine who else besides the lawyers on the other side who are prosecuting patent applications might need to be barred, and who on your side may need to be barred.  A good protective order will go beyond “prosecution” and cover other activities that present risk for misuse. Those could include IPR, reissue, reexam, or licensing activities, patent acquisition, or a host of other things).  Those activities may mean that people far beyond patent prosecutors will be covered, including experts, inventors, owners of NPEs, and so on.  Folks besides patent practitioners can misuse information.  Again, you need to be sure you know who is covered, and be sure you look at the other side’s folks, too.

The third lesson is procedural.  In this case, the magistrate imposed a burden on the party receiving information to establish that an individual is “exempt” from the bar.  This makes sense, since there (often) will be no way for Party A to know what Party B’s lawyers, and so on, are doing.  But, some courts require the party seeking a bar to show that a person working for the other side should be included. That can be awkward, to say the least.  But that also reiterates lessons one and two above, and the need for diligence — for protecting your client’s information and protecting your side from being accused of misusing information when the bar was not clear.