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Judge Andrews resolves protective order disputes regarding prosecution bar and use of confidential information across related cases

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In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, et al., C.A. Nos. 14-1006, 14-1212-RGA (D. Del. Nov. 17, 2015), Judge Richard G. Andrews resolved two disputes regarding the parties’ proposed protective orders. First, Judge Andrews found that Plaintiff should not “be allowed to share Highly Confidential Information received from a defendant in one of the above-captioned cases with a defendant in the other case.” Id. at 1-3. Specifically, Judge Andrews pointed to the fact that “¶6(C) permits disclosure of Highly Confidential Information to outside counsel ‘of the receiving party’ in particular, and therefore does not contemplate disclosure to counsel for another party.” Id. at 3. Moreover, Judge Andrews found that Defendants showed good cause to prevent Plaintiff from sharing Highly Confidential Information across cases. Specifically, Judge Andrews found that if Plaintiff were permitted to disclose the Highly Confidential Information of one defendant to outside counsel and experts in the other case, “Defendants would suffer prejudice.” Id. Judge Andrews provided the following example: “If Plaintiff were allowed to use . . . Comcast’s Highly Confidential Information in its expert report in the Verizon case, Verizon’s in-house counsel would be prohibited from viewing those portions of Plaintiffs expert report. Such a circumstance would impair Verizon in its defense.” Id. On the other hand, the parties seemed to agree that “if the Protective Order permitted disclosure of one defendant’s Highly Confidential Information to in-house counsel of defendants in the other case, that information would be unacceptably compromised.” Id.

Second, Judge Andrews found that the prosecution bar should not extend to post-grant proceedings. Judge Andrews explained that “[i]nvolvement in post-grant proceedings does not raise the same risk of competitive misuse as does involvement in prosecution.” Id. at 4. Judge Andrews further noted that “[p]ost-grant proceedings, including reexamination, inter partes review, and covered business method review, all involve assessing the patentability of existing claims.” Id. In addition, “only narrowing claim amendments may be made during post-grant proceedings.” Id. Judge Andrews therefore concluded that “[t]here is . . . little risk that confidential information learned in litigation will be competitively used to draft claims that read on Defendants’ products” and that “Defendants have not recited any circumstances specific to proceedings related to these patents that suggest otherwise.” Id. Accordingly, “[t]he risk of inadvertent disclosure or competitive use of Defendants’ confidential information [was] outweighed . . . by the potential harm to Plaintiff by denying its choice of counsel in post-grant proceedings.” Id. at 5.

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