In Boston Scientific Corporation v. Cook Group Incorporated, C.A. No. 15-980-LPS-CJB (D. Del. Feb. 10, 2017), Magistrate Judge Burke granted and denied in part the parties’ proposed modifications to the inter partes review (“IPR”) provision of the protective order. The Court denied the defendant’s proposal requiring the plaintiff’s outside counsel to withdraw from representing the plaintiff in the litigation before participating in any IPR proceedings. Judge Burke stated that an amendment to the protective order in that regard was not necessary because the protective order only excluded counsel with access to the defendant’s confidential information and the plaintiff’s counsel represented that they had not been given access to the defendant’s confidential information. Additionally, the Court denied the plaintiff’s proposal to allow the plaintiff’s counsel, including in-house counsel, with access to confidential or highly confidential information to participate in the IPR proceedings, even if (as proposed by the plaintiff) those attorneys would have no involvement in claim drafting or amendments.
Key Points: The Court is careful to weigh, under the particular circumstances of each case, a party’s choice of counsel with the potential for improper use of confidential information in deciding the extent of a post-grant proceedings bar.