This one is fun for me, since I teach civil procedure, patents, and ethics, and have written about prosecution bars way too much.
Prosecution bars are used when a court concludes that, although the usual rule is that lawyers will abide by provisions in a protective order that say “don’t use information disclosed in this suit for any other purpose,” there’s a risk that a lawyer will, perhaps even inadvertently, misuse the opposing party’s information disclosed in discovery because of work the lawyer does for his client. Here, in a case Eolas (represented by McKool) filed for its client against Amazon (and others), it seems that as part of the protective order, McKool agreed that its lawyers were in such a position — they were prosecuting patents for Eolas in similar technologies, presumably, to what was involved in the suit — and so the protective order provided that no McKool lawyer who received certain categories of confidential information from Amazon would prosecute patents for Eolas in those fields, for a time.
And there is the issue: how long? The protective order stated (in part — I’d want to see the entire thing to really understand this), that the bar expired “one (1) year following the entry of a final non-appealable judgment…”
Eolas lost at trial, and the Federal Circuit affirmed and entered judgment on July 22, 2013.
If the one year date runs from there — which I so far think it does — then it expired on July 22, 2014. And it was only after that date that McKool lawyers allegedly violated the prosecution bar.
However, Eolas could have petitioned for cert for the 90 days after July 22, 2013. If you use the expiration of those 90 days as the date for “entry” of the final judgment, then the “entry of a final non-appellable final judgment” occurred in October, and one -year later puts you in October, 2014. Eolas didn’t seek cert, however. (I don’t think that matters, but I’ll come back to that.)
And of course, it was after July and before October 2014 that McKool allegedly started the work that violated the protective order. When Amazon saw a patent issue which, it seems, resulted from McKools’ pre-October 2014 work, Amazon moved for sanctions, asserting (among other things) that the patent should be unenforceable.
I honestly don’t think this is a close case: the judge got it wrong. First, it says “entry.” That occurred in July. It says “non-appealable” A judgment from a circuit court, including the CAFC, isn’t appealable to any court: you can file a petition for cert, but that’s not an appeal. Finally, it could have said (and some protective orders do) “until everything at the Supreme Court is over and done,” but it seemingly didn’t do that. I also have grave doubts that under Aptix and other cases from the Federal Circuit that Amazon’s request that the patent be held unenforceable as a result of litigation misconduct will fail, but, again, I think we never get there.
So, what’s this mean for your practice?
First off, suppose there isn’t an appeal in a district court case. You go to trial, you get judgment on July 22, 2013, and nothing happens. On July 22, 2014, can you start work? Well, there’s 30 days after entry of final judgment that the other side could appeal, so don’t you have to wait until August 22, 2014 (or 21, whichever)?
If there is an appeal to the CAFC, do you need to add 90 days to the date of entry of judgment even though they don’t apply for cert, and even if it doesn’t say “and we’re done at the supreme court?”
I think this one is clear. Do you?