United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE
the Court is a Joint Motion for a Protective Order (Dkt. No.
August 31, 2016, Plaintiff Intellectual Ventures II LLC filed
a Complaint against Defendants FedEx Corporation, Federal
Express Corporation, FedEx Ground Package System, Inc., FedEx
Freight, Inc., FedEx Custom Critical, Inc., FedEx Office and
Print Services, Inc., and GENCO Distribution System, Inc.
(collectively, “FedEx” or
“Defendants”). (Dkt. No. 1.) Plaintiff alleges
that Defendants infringe U.S. Patent Nos. 6, 633, 900; 6,
909, 356; 7, 199, 715; 8, 494, 581; and 9, 047, 586
(collectively, the “Patents-in-Suit”).
(Id.) Defendants have also requested inter
partes review (“IPR”) for each of the
Patents-in-Suit. No IPRs have been instituted at the time
of this opinion.
February 21, 2017, the parties filed the joint motion now
before the Court. The dispute between the parties is a
proposal to exclude certain experts and consultants from
participating in post grant review proceedings under the
prosecution bar in the Parties' proposed protective
order. (Dkt. No. 59 at 2.)
seeking a protective order must demonstrate “good
cause” for its issuance. Fed.R.Civ.P. 26(c). “The
same is true for a party seeking to include in a protective
order a provision effecting a patent prosecution bar.”
In re Deutsche Bank Trust Co. Americas, 605 F.3d
1373, 1378 (Fed. Cir. 2010). In assessing the scope of such a
bar, a court first (1) determines whether there is an
“‘unacceptable opportunity for inadvertent
disclosure'” of confidential information to an
individual involved in “competitive
decisionmaking” with his or her client and then (2)
“balance[s] this risk against the potential harm to the
opposing party . . . .” Id. at 1378, 1380
(quoting U.S. Steel Corp. v. United States, 730 F.2d
1465 (Fed. Cir. 1984)); see also Toshiba Samsung Storage
Tech. Korea Corp. v. LG Elecs., Inc., No. CV
15-691-LPS-CJB, 2016 WL 447794, at *1 (D. Del. Feb. 4, 2016).
“In balancing these conflicting interests the district
court has broad discretion to decide what degree of
protection is required.” In re Deutsche Bank,
605 F.3d at 1380.
Court begins by considering whether permitting experts and
consultants to participate in this litigation and related PTO
proceedings creates an “unacceptable opportunity for
inadvertent disclosure” of confidential information
based on Deutsche Bank.
argue that Plaintiff's experts may use knowledge acquired
in this litigation to “advis[e] counsel on drafting
claim amendments” in the IPRs that have been filed.
(Dkt. No. 59 at 7.) The Court is not persuaded that this is
an “unacceptable” risk, particularly where the
parties already agree that outside counsel for both parties
may overlap between this litigation and related PTO
proceedings. Even if some risk of inadvertent disclosure in
hypothetical IPR proceedings were considered to be present
here, Defendants have not demonstrated that such a risk is
substantial. See, e.g., Two-Way Media Ltd. v. Comcast
Cable Commc'ns, LLC, Civil Action No. 14-1006-RGA,
Civil Action No. 14-1212-RGA, 2015 WL 7257915, at *2 (D. Del.
2015) (explaining that “[i]nvolvement in post-grant
proceedings does not raise the same risk of competitive
misuse as does involvement in prosecution” because in
post-grant proceedings the PTO is assessing existing claims
that may only be narrowed such that there is “little
risk that confidential information learned in litigation will
be competitively used to draft claims that read on
[d]efendants' products”); Ameranth, Inc. v.
Pizza Hut, Inc., No. 3:11-CV-01810-JLS, 2012 WL 528248,
at *6 (S.D. Cal. 2012) (concluding that “a review of
cases directly discussing a prosecution bar applied to
reexamination finds near unanimous support against extending
the bar to cover reexamination” and collecting cases);
Document Generation Corp. v. Allscripts, LLC, No.
CIV A 6:08-CV-479, 2009 WL 1766096, at *2 (E.D. Tex. 2009)
(noting that fears a plaintiff might use confidential
information to “enlarge the scope of the initial
patent” in reexamination were “largely
misplaced”); Toshiba Samsung, No. CV
15-691-LPS-CJB, 2016 WL 447794, at *2. Instead, Defendants
have argued that such risk “is too great” without
support or citation to legal authority. (Dkt. No. 59 at 6.)
contrast, the burden imposed on Plaintiff by Defendants'
proposal is substantial. Plaintiff would be required to
retain one set of experts for this case and another set of
experts for any future PTO proceedings related to this case.
Defendants argue, however, that Plaintiff faces “no
prejudice” in this circumstance because “there
are ample experts available in the field.” (Dkt. No. 59
at 7.) However, the burden imposed on Plaintiff here arises
from the cost of hiring two sets of experts and the
additional expense related to counsels' time in
familiarizing both sets of experts with the same facts.
light of these circumstances, the Court is not persuaded that
good cause exists for Defendants' proposed prosecution
bar. Having considered the motion, the Court has determined
that it will not restrict experts from participating in
post-grant or reexamination proceedings related to this case,
absent some agreement between the parties. The parties are
therefore ORDERED to submit a final proposed Protective Order
incorporating the above decision. Such should be submitted
within three days of this order.