Special Master Collins J. Seitz, Jr., recently issued a report that made recommendations with respect to whether defendants should be permitted to use information from the litigation at hand in an ex parte reexamination of plaintiff’s two asserted patents that defendants intend to initiate. Inventio AG v. ThyssenKrupp Elevator Ams. Corp. et al., C.A. No. 08-874-RGA (D. Del. Jan. 22, 2013). In the litigation, the Court entered a protective order, which permitted the parties to designate certain information as “Confidential” and other information as “Highly Confidential.” Id. at 2-4. In light of the intended reexamination, defendants filed a motion requesting that the Court “(1) declassify some or all of the information as non-confidential; or (2) modify the Protective Order so that some or all of the information can be submitted to the USPTO under seal in accordance with the procedures of Section 724.02 of the Manual for Patent Examining Procedure (‘MPEP’).” Id. at 2. Pursuant to this motion, the Court addressed 31 disputed categories of information, 30 of which were excerpts from “deposition transcripts of [plaintiff’s] 30(b)(6) witnesses,” and one which was a page that plaintiff argued came “from the prosecution file in the Singapore patent office.” Id.
Special Master Seitz recommended granting defendants’ motion to reclassify as non-confidential 24 of the categories of disputed information. Id. at 15. Despite plaintiff’s designation of this information as “Highly Confidential,” Special Master Seitz found that this information did not fall under any specific category of information permitted to be designated as “Highly Confidential” or “Confidential” pursuant to the Protective Order. Id. at 15. For example, in his analysis, Special Master Seitz frequently found that information from the deposition excerpts did not fall under the categories of “non-public technical information of [plaintiff],” “[n]on-public research,” or “non-public information about [plaintiff’s] ‘internal studies, . . . testing and evaluations.’” See id. at 8-15. Moreover, none of the information fell under the “catch-all category” in Paragraph xviii, as plaintiff failed to demonstrate “with any specificity how it would be harmed by the disclosure of [the] information.” Id. at 15.
Special Master Seitz found that the 7 remaining categories of information were appropriately designated as “Highly Confidential,” but he was nevertheless required to address defendants’ alternative request to modify the protective order to use the protected information in the anticipated reexamination. See id. at 8-15. To determine whether to grant the modification, Special Master Seitz considered whether “good cause still exist[ed] for the order,” which in this instance required him to consider the “relevancy of [the disputed] information to the proposed ex parte reexamination.” See id. at 15-16. Special Master Seitz noted that if information submitted under seal is found “material to patentability” during the reexamination, it will be made available to the public. See id. at 5 (citing MPEP § 724.04(c)(D)). It was further explained that an ex parte reexamination is comprised of two distinct phases—the request phase and the substantive review phase. A third party may submit “admissions” of the patent owner during both the request and substantive review phases. See id. at 22 (citing MPEP § 2258(I)(F); 37 C.F.R. § 1.104(c)). Moreover, under the provisions of the newly-enacted AIA, a third party may also submit “statements” during the substantive review phase. See id. at 22 (citing 35 U.S.C. §§ 301, 302).
However, for a third party to submit an “admission,” it must found “in the [patent] file or in a court record.” Id. at 22. Similarly, to qualify as a “statement,” the information must at least “be filed by the patent owner in a proceeding before a Federal court or the [USPTO],” and the patent owner must have “[taken] a position on the scope of any claim of the patent.” Id. at 17 (citing 37 C.F.R. § 1.501(a)(2)). Special Master Seitz reasoned that the information at issue was not “in a court record” because it was not “filed with the court,” and thus the information would likely not qualify as an “admission.” Id. at 22. Similarly, the information at issue was not filed with the Court or USPTO, and the patent owner did not take a position regarding claim scope. Thus, the information would also likely not qualify as a “statement.” Id. Special Master Seitz therefore concluded that “the information at issue would likely not be considered by the USPTO if [defendants] submitted it as part of a request for an ex parte reexamination,” and thus defendants’ “stated need to submit [the] information to the USPTO should be given little weight.” Id. at 24. Moreover, “[e]ven in the unlikely event that this information is deemed material by the USPTO, the importance of this information to the reexamination . . . [would] not outweigh the harm to [plaintiff] caused by public disclosure.” Id. at 26. Special Master Seitz thus recommended that “good cause” still existed for the protective order with regard to the 7 remaining categories of disputed information. See id. at 25-26.