During the course of a Section 337 investigation before the US International Trade Commission ("ITC"), a party's confidential information is normally disclosed to opposing counsel and experts for the other side as part of the discovery process, under the terms of a Protective Order governing use of confidential information. Due in part to the complexity of current technology, it is not uncommon for a party's litigation counsel or expert witnesses to also represent or assist the party in patent prosecution matters. Consequently, to avoid the risk that opposing counsel or experts may use confidential information disclosed in an ITC investigation during subsequent or concurrent patent prosecution, a party may seek to amend the governing Protective Order to include a prosecution bar.
A prosecution bar prohibits an individual from participating in patent prosecution on behalf of the opposing side within the particular technology field at issue for a specified time period. A prosecution bar is a powerful weapon to prevent the opposition's patent prosecutors from obtaining an unfair advantage through the exchange of confidential information in an investigation. However, as illustrated in a recent order from one of the ITC's Administrative Law Judges ("ALJ"), a prosecution bar will only be allowed if the request is timely and specific individuals and triggering information are precisely identified.
In Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, respondent Apple, Inc. ("Apple") filed a motion to amend the Protective Order to add provisions regarding a prosecution bar against attorneys and experts retained by complainants S3 Graphics Co. Ltd. and S3 Graphics, Inc. ("S3"). The original Protective Order was issued on July 6, 2010, but Apple did not move to add the prosecution bar until almost four months later, on October 28, 2010. The requested prosecution bar would have prevented anyone who reviews Apple's confidential information from being involved in any patent prosecution relating to the technology field at issue for at least two years.
Apple claimed that information responsive to S3's discovery requests should prompt a prosecution bar because S3's attorneys and experts "work directly with Apple's fierce competitors" and the existing Protective Order was not sufficient to prevent "inadvertent compromise" of Apple's confidential information, citing In Re Deutsche Bank Trust Co. Americas, 605 F.3d 1373 (Fed. Cir. 2010). S3 argued in response that it would be prejudiced if a prosecution bar were imposed so late in the investigation because it would be forced to find new experts. S3 further opposed the motion because Apple had not made the specific "counsel-by-counsel" showing required by Deutsche Bank, nor did it cite any pending patent application involving any of S3's attorneys.
ALJ Gildea denied Apple's motion to add a prosecution bar as untimely, citing Apple's four-month delay following the issuance of the Protective Order before requesting the bar. The Order is available online. He also indicated that much of the information that would trigger the prosecution bar had already been produced in response to the subpoena issued at S3's request, and Apple had not filed a motion to quash the subpoena. In support of the denial of the prosecution bar, the ALJ cited 19 C.F.R. § 210.2, which requires the parties and their counsel to "make every effort at each stage of the investigation or related proceeding to avoid delay."
Although ALJ Gildea determined that the delay provided sufficient basis to deny the motion, he also determined that the motion failed on the merits. Before a prosecution bar should be entered, ALJ Gildea held that Deutsche Bank requires the movant to show: (1) the information triggering the bar is confidential and relevant to patent prosecution; (2) a particular person having access to the information is involved in the competitive decision making (i.e., "crafting the content of patent applications or advising clients on the direction to take their portfolios") of patent prosecution; and (3) the risk of inadvertent disclosure outweighs the burden a prosecution bar would impose. ALJ Gildea held that the rationale in Deutsche Bank applies to experts as well as attorneys.
In applying the Deutsche Bank test, ALJ Gildea first concluded that Apple had not demonstrated that the confidential information covered by the proposed prosecution bar was relevant to a competitor's prosecution activities, since the information had already been developed, sold, or disclosed in patents and did not involve technology under development. Second, the ALJ determined that the generalized prosecution bar which was being sought, which did not identify specific individuals or precise triggering information, did not meet the "counsel-by-counsel" test of Deutsche Bank. Specifically, Apple failed to make an explicit showing that any of S3's attorneys or experts engaged in patent prosecution for S3 or any other client or that any such prosecution rose to the level of "competitive decision making." Finally, the ALJ found that, balancing the "slim" evidence as to inadvertent disclosure offered by Apple with the restrictions on S3's right to choose its counsel and the undue prejudice caused by the late need to replace experts, weighed in favor of denying the prosecution bar.
Practice Tip: Parties seeking a prosecution bar should request one as early as possible after the Protective Order is issued, but at least before confidential information is produced in discovery. The request for a prosecution bar should precisely identify:
- specific attorneys and experts and their relevant prosecution activities to which the bar would apply; and
- the exact type of information which would trigger the bar and how this information is relevant to patent prosecution.
To increase the chance that a prosecution bar will be entered, a party should be sure that the information which triggers the requested bar relates to technology under development rather than patented technology already known or used in the field.
Parties should also remember to request information on an expert's other clients and whether the expert participates in any patent prosecution related activities as part of their review of an expert's credentials during the 10-day objection period provided for under the standard ITC Protective Order.
Below please find examples of prosecution bar decisions issued in other Section 337 proceedings:
- Inv. No. 337-TA-710, Certain Personal Data and Mobile Communications Devices and Related Software – The ALJ granted the motion for entry of a prosecution bar, finding that the complainants satisfied the standard articulated in Deutsche Bank. The ALJ noted that complainants were entitled to a prosecution bar because the investigation involved highly confidential source code, several of respondents' attorneys involved in the investigation also engaged in patent prosecution in fields relating to the asserted patents, and the complainants unsuccessfully sought from respondents information regarding the patent prosecutors in order to assess the extent of their prosecution and competitive decision making activities. The ALJ's order is available online.
- Inv. No. 337-TA-625, Certain Self-Cleaning Litter Boxes and Components Thereof – After determining that a prosecution bar should be entered, the ALJ held that the prosecution bar would apply only to individual attorneys and would not be imputed to every attorney at the law firm at issue. The ALJ reasoned that an individual bar would ensure that an entire law firm is not prevented from prosecuting patents when one of its attorneys views confidential information in litigation, which he suggested would be unworkable and unfair to both the law firm and the client. The ALJ's order is available online.
Special thanks to Alison Taroli for her assistance in the preparation of this update.
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