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Judge Goldberg denies plaintiff’s request to modify prosecution bar to permit attorney and expert participation in PTO proceedings

Judge Mitchell S. Goldberg, sitting by designation from the Eastern District of Pennsylvania, recently denied plaintiff Transcend Medical, Inc.’s request to modify the stipulated Protective Order governing the exchange of confidential information in this case “to allow one attorney and one expert from each side to participate in certain Patent and Trademark Office (‘PTO’) proceedings or similar proceedings in other countries[.]”  Transcend Medical, Inc. v. Glaukos Corp., C.A. No. 13-830-MSG (D. Del. Aug. 12, 2014).  Transcend argued that its counsel had “gained extensive knowledge” over the course of representing Transcend and that counsel would not draft claims or use confidential information.  Id. at 2.  Further, the significant prejudice to Transcend would outweigh any risk of inadvertent disclosure of confidential information.  Id. at 2-3.  Glaukos objected noting that both parties knew of the potential of PTO proceedings at the time they agreed to the prosecution bar and that it would be “impossible to meaningfully participate in the [PTO] proceedings without advising or opining on the scope of patents, or without inadvertently using confidential materials.”  Id. at 3.  Judge Goldberg agreed, noting that the parties acknowledged the risks associated with allowing those with access to confidential information to participate in PTO proceedings when they agreed to the prosecution bar less than six months before Transcend requested the modification.  Id. at 3-4.

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