My book on ethical issues in patent litigation (shameless plug there!) spends a significant amount of time on prosecution bars. They create more issues than most people think, and deserve careful attention by counsel. Perhaps because of the difficulty of policing violations, there are not many decisions addressing what to do if there is a violation.
Magistrate Judge Grewal out in the Northern District of California recently faced that. The defendants learned that the plaintiff’s expert had prosecuted a patent application in a “barred” area. The magistrate ordered the expert to return the information he had received during the suit, to not use any information he remembered for any purpose, and excluded the expert as a witness in the case. The magistrate, however, pointed out that the plaintiff could retain another expert. It did not award any costs. Avago Technologies Fiber IP (Singapore) PTE. Ltd. v. IPtronics Inc., 5-10-cv-02863 (N.D. Cal. June 11, 2015) (Grewal, M.J.). (Opinion here.)
There are lessons all around. For experts, it is to understand what these bars mean. For counsel, it is to ensure that experts understand what those bars mean. For everyone, it means to use reasonable care to ensure compliance — by your team as well as the other side’s.