Delaware IP Law Blog

Negotiating protective orders can be a mundane affair. But the D. Del. litigator may want to take notice of an attorneys-eyes-only provision recently fashioned by a special master appointed by distict judge Sue L. Robinson. In his report and recommendation, the special master adopted the following passage to address the parties' concerns over handling the use of confidential information during the course of both reexamination and separate prosecutions:

"No attorney or other individual who has access to the other parties' [confidential information] . . . shall be involved thereafter in the prosecution or drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications, excluding a patent in reexamination [involving an] . . . opposing party in this case, before the [PTO or foreign agencies], and proceedings related to [the patent-in-suit] . . . . [A]ny individual's participation in reexamination proceedings(s) also is expressly conditioned on his/her/its legal obligation, established by Order of the Court, not to use in any way an opposing party's [confidential information] to draft new claims, or to amend previously existing claims, through the reexamination process. The above conditions and exclusions continue for a period of one year following the final resolution [of the case]."

Apeldyn Corp. v. AU Optronics Corp., C.A. No. 08-568-SLR (D. Del. March 1, 2010) (Poppiti. S.M.).

In Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009), Honeywell filed a motion to dismiss Defendant InnoLux without prejudice under Fed. R. Civ. P. 41, while InnoLux, in addition to previously filing a motion for summary judgment, requested that InnoLux be dismissed from the litigation with prejudice. Id. at 1-2. Special Master Poppiti denied both requests for dismissal. Instead, Special Master Poppiti gave Honeywell two days to decide whether they would “either (1) accept dismissal of InnoLux with prejudice or (2) withdraw the Motion and proceed to a resolution of InnoLux’s pending Motion for Summary Judgment.” Id. at 2, 14. Special Master Poppiti reasoned that the factors evaluated to determine whether voluntary dismissal without prejudice would prejudice the dismissed defendant weighed in InnoLux’s favor. Id. at 6-12.

Honeywell International Inc. et al. v. Apple Computer, Inc. et al., C.A. 04-1337-JJF (D. Del. Oct. 5, 2009)