As I’ve pointed out elsewhere here, the adoption of the AIA has created various issues for existing prosecution bars: if you are using a pre-AIA form, consider whether it applies to the new post-grant proceedings. Courts are splitting on whether bars that don’t mention them can, or should, apply. My article on the broad topic of prosecution bars is here.
In this recent case, Voice Domain Techn. LLC v. Apple, Inc. (D. Mass. Oct. 8, 2014), the court faced a couple of unique circumstances, while also addressing whether post-grant proceedings were “competitive decision-making” within the meaning of prosecution bars. Specifically, the patentee was essentially a one-man company and that one man was also the named inventor on the patents-in-suit. Apple sought to exclude him from having access to key information, asserting that, no matter his best intentions, he would at least likely inadvertently misuse the information. Apple asserted that his involvement in licensing, patent acquisition, and prosecution all made inadvertent disclosure possible.
The court agreed, holding that, though not doubting his integrity, “it questions whether it is possible to avoid the subconscious use of Apple’s confidential material in his future endeavors.” Thus, as a competitive decision-maker he was subject to a bar unless Voice Domain showed that the prejudice to it of a bar outweighed any potential harm. The court found it did not, concluding that because trial counsel and experts could have access, this outweighed the potential harm.
That aspect of the case — the sole-employee patentee — is fairly rare in my research, and this case discusses a few other similar cases.
The case addresses various other issues, but whether reexamination and other post-grant proceedings should be covered was a key issue. The court held that although courts had usually held reexamination proceedings were not subject to a prosecution bar, “a newer line of cases recognizes that even in a reexamination proceeding, a patent owner can use confidential information to restructure or amend its claims so as to improve its litigation position against alleged infringers.” (citing several cases from 2013 and 2014). The court adopted the approach of these more recent cases, but entered an order that allowed for court permission for counsel to participate.
Takeaways: (1) don’t assume post-grant proceedings are covered, or not, by a bar and make it clear; (2) be sure that any of your lawyers who are subject to a bar comply with it and (3) figure out who on the other side needs to be barred. As my paper points out, with respect to that last point, some courts hold that the party seeking the bar has to show that a lawyer on the other side is likely engaged in competitive decision-making; that is not practicable. Finally, and again, double-check any old form and be sure you update it, as appropriate.