The opinion of the court was delivered by: Magistrate Judge Bissoon
On March 19, 2009, the parties were directed to cross-brief whether the proposed bracketed language in Exhibit "C" to their Rule 26(f) Report should be added to Paragraph 8 of this District's standard Protective Order, entered by operation of L.P.R. 2.2. See Case Mgmt. Order (Doc. 32) at ¶ 21. The parties have briefed the issue, and the matter now is ripe for adjudication.
Exhibit C contains language commonly referred to as the "prosecution bar," and it reads:
[N]o attorney or other individual who has access to the other parties' Confidential Attorney Eyes Only Information designated pursuant to this order shall be involved thereafter, in the [prosecution or] drafting of patent applications, claim language for patent applications, or arguments made in support of patent applications [or a patent in reexamination], before the U.S. Patent and Trademark Office or foreign patent agencies, for inventions related to methods or apparatus for displaying high resolution images of the type disclosed generally in U.S. Patent 6,078,038. This exclusion continues for a period of one year after the conclusion of this litigation.
Id. (disputed language in bold text).
Defendant has requested the inclusion of the bracketed text, and Plaintiff now acquiesces to the adoption of the phrase "prosecution or." See Pl.'s Br. (Doc. 35) at 1, 4. Thus, the only remaining dispute is whether the prosecution bar should extend to reexaminations. Compare id. with Exhibit C, quoted supra. Defendant bears the burden in this regard. See District's standard Protective Order (omitting Defendant's requested language); see also Photoprotective Techs., Inc. v. Insight Equity A.P. X, LP, 2007 WL 2461819, *1 (W.D. Tex. Aug. 27, 2007) (for purposes of prosecution bar, requesting party bears burden of demonstrating necessity) (citation in footnote omitted).
All of the precedent cited by Defendant addresses the prosecution bar generally, as opposed to its application within the context of reexamination. See cases cited in Def.'s Br. (Doc. 33) at 2-5.*fn1 Defendant's assertions regarding reexamination are limited to the following:
The rationale for preventing attorneys with access to confidential information from . . . prosecut[ing] new applications applies with equal force to patents in reexamination. A reexamination of a patent before the [USPTO] is a continuation of the pre-issuance prosecution of the patent. The patent holder must make decisions concerning claim scope and emphasis.
During a reexamination, [Plaintiff] would be able to modify its claims by filing amendments. Counsel that ha[ve] reviewed [Defendant's] confidential information would be unfairly equipped to tailor such modifications, even unintentionally, to cover [Defendant's] products. Even if [Plaintiff] does not amend the claims, any decision not to do so would be unfairly influenced if [Plaintiff's] prosecution counsel ha[ve] possession of [Defendant's] confidential . . . product information. In any event, [Plaintiff] would still need to respond to the USPTO's decisions that certain prior art raises "a substantially new question of patentability.' Allowing [Plaintiff's] prosecution counsel access to [Defendant's] confidential information will provide [Plaintiff] with an unfair competitive advantage when forming its responses to the USPTO.
Defendant is not the first alleged infringer to have raised these arguments, and there is some split of authority on the matter. The bulk of recent cases, however, have determined that the confidentiality concerns cited by Defendant are mitigated by the nature of the reexamination process.
As observed in Pall Corporation v. Entegris, Inc.,
[T]he Patent Act . . . expressly curtails the scope of reexamination, prohibiting any claim amendment that would enlarge the scope of the initial patent. . . . [Thus, a]n important limitation on reexamination is that no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted . . . . [C]laims added or amended in a reexamination proceeding will necessarily be narrower[ and, t]herefore, no device can ...