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Judge Burke resolves dispute over scope of prosecution bar

Magistrate Judge Christopher J. Burke recently resolved a protective order dispute between the parties as to whether plaintiff’s lead counsel could participate in “any post-grant proceedings in which they would be defending the patents-in-suit.”  Toshiba Samsung Storage Technology Korea Corporation v. LG Electronics, Inc., et al., C.A. No. 15-691-LPS-CJB (D. Del. Feb. 4, 2016).  Judge Burke agreed with defendant that because counsel overlapped between the litigation and the inter partes review proceedings, there was “some risk” that counsel “may ‘inadvertently rely on or be influenced by information they may learn as trial counsel during the course of litigation’ were they, for example, to later participate in the process of ‘strategically amending or surrendering claim scope’ during the IPR proceedings.”  Id. at 3-4.  But, such risk is “less pronounced” as compared to prosecution of a new patent.  Id. at 4.  On the other hand, plaintiff would be prejudiced because they have played “substantial roles” in litigation for plaintiff and “have already been representing [plaintiff] in IPR proceedings for approximately 6 months.”  Id. at 5.   Therefore, Judge Burke concluded that LG did not demonstrate that the potential risk of inadvertent disclosure would outweigh the harm to plaintiff to deny plaintiff the counsel of its choice.  Id.

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