Another Prosecution Bar Case, but With a Twist

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.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “Another Prosecution Bar Case, but With a Twist

  1. 2

    In case anybody’s curious, here is the ridiculous “all functional, all the time” computer-implemented claim being asserted by one Bruce Barker:

    1. A data entry system comprising a handheld peripheral and a processing system, wherein said handheld peripheral comprises:

    a microphone for providing a microphone signal representative of a user’s voice,

    a voice command button for providing a command notification signal indicating whether said voice command button is asserted,

    a voice data button for providing a data notification signal indicating whether said voice data button is asserted,

    a cursor position transducer for providing a cursor signal representative of a desired cursor position on a display screen of said processing system, and

    a coupling mechanism for providing said microphone signal, said command notification signal, said data notification signal, and said cursor signal to said processing system; and wherein

    said processing system comprises:

    said display screen, and

    microphone interpretation mechanism which, in response to said command and data notification signals, determines when said microphone signal represents command and when it represents data.

    From the spec: All of the above described buttons 18-26 are housed in the same chassis as the microphone and track ball and are conveniently located beneath (or within reach of) one of the user’s fingers. Accordingly, the user can dictate text into the computer, move the cursor on the computer’s display screen and manipulate the text, all with the same handheld device. Thus, the user need not release the device and move his hands to another input device to perform the above described functions.

    But wait — there’s more: The embodiment shown in FIG. 3 includes a track ball for entering cursor control commands. However, the track ball could be replaced by spoken cursor control commands such as “cursor right”, cursor left “cursor up”, and “cursordown”.

    Get it? You can put all the buttons on one device, or you can just use voice commands, or you can mix and match. Truly impressive stuff, especially when you consider that button technology and voice command technology was pretty much non-existent in 1993 when this amazingly detailed application was filed.

    Oh, but wait … forgot about these admissions in the specification:

    Some computers [in the prior art] also include a microphone which provides the computer with an electrical representation of a user’s voice. Such computers may include voice recognition software for converting the electrical representation of the user’s voice to text. …. Each of the above described input transducers [including hand-held peripherals for data input, generally] are well known to those skilled in the art.


  2. 1

    The court found it did not, concluding that because trial counsel and experts could have access, this outweighed the potential harm.

    Sounds like he should just fire his attorney.

    1. 1.1

      This issue seems to point out an interesting risk that a company would take when suing an (alleged) infringer that is too small to afford counsel.


          Sister anon, if you are going to use the moniker, please try to uphold the reputation for accuracy.

          To wit: please see 37 CFR 1.31 Applicant may be represented by one or more patent practitioners or joint inventors.

          An applicant for patent may file and prosecute the applicant’s own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant.” (emphasis added)



            Corporations also can’t appear “pro se” in court, at least every where I’ve ever practiced.

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