Judge Richard G. Andrews recently ruled on a protective order dispute relating to the level of access granted to in-house counsel for a plaintiff whose business model was designed to avoid the hiring of lead outside trial counsel. Blackbird Tech LLC d/b/a Blackbird Technologies v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com et al., C.A. Nos. 15-53-RGA, 15-56-RGA, 15-57-RGA, 15-58-RGA, 15-59-RGA, 15-60-RGA, 15-61-RGA, 15-62-RGA, 15-63-RGA (D. Del. May 18, 2016). In its own words, the plaintiff “is not designed, from a financial standpoint, to litigate through outside counsel. . . . Accordingly, aside from local counsel, Blackbird intends to litigate these cases entirely through its in-house lawyers.” Id. at 7. To date, three in-house lawyers had been admitted pro hac vice, two of whom Judge Andrews found were competitive decision makers (the President/CEO and a Vice President and Head of Litigation). Id. The plaintiff argued that these individuals should be permitted to access confidential information in the case because, “without such information, Blackbird would be prevented from pursuing these cases within its low-cost litigation business model, which will make continued litigation of these cases extremely difficult.” Id. at 9 (internal quotation marks omitted).
Judge Andrews explained that “[w]hen attorneys serve the dual role of competitive decisionmakers and litigation counsel, . . . courts must consider both of those roles and cannot simply ignore the competitive decisionmaker aspect. For this reason, I cannot approve Blackbird’s request for carte blanche access . . . without affording stronger protections for Defendants. Id. at 16-17. Here, because there was “a concrete, particularized risk of inadvertent disclosure and misuse here. To give Blackbird’s competitive decisionmakers access to Defendants’ confidential technical and financial information would raise the specter of prosecuting or acquiring patents that read on Defendants’ products.” Id. at 12. Accordingly, Judge Andrews explained, “if the threat of future litigation is taken off the table, there is significantly less likelihood of harm to Defendants.” Id. at 13. The Court therefore ordered the parties to submit a proposed protective order that included a prosecution bar and a covenant not to sue Defendants on any patents acquired by the plaintiff in the relevant technology during the course of this litigation and for one year after its conclusion. Id. at 15-16.