The Federal Circuit Issued New Standards for Application of Patent Prosecution Bar

In re Deutsche Bank Trust Co. Ams., No. 2010-M920 (Fed. Cir. May 27, 2010).

Holding:

“[A] party seeking imposition of a patent prosecution bar must show that the information designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” Slip op. at 13.

“[T]he party seeking an exemption from a patent prosecution bar must show on a counsel-by-counsel basis: (1) that counsel’s representation of the client in matters before the PTO does not and is not likely to implicate competitive decisionmaking related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation, and (2) that the potential injury to the moving party from restrictions imposed on its choice of litigation and prosecution counsel outweighs the potential injury to the opposing party caused by such inadvertent use.” Id.

Relevant Facts:

Deutsche seeks a protective order including a patent prosecution bar preventing anyone who gains access in the litigation to certain confidential documents from any involvement in prosecuting any patent in the related technical field, and for a limited period after, the conclusion of this litigation. The district court granted the patent prosecution bar as to all of Island’s trial counsel except for its lead counsel. Deutsche petitioned for a writ of mandamus. The Federal Circuit granted in part the petition, vacated the discovery order, and remanded the case to the district court for reconsideration of its order under the new standards.