Judge Andrews Rules on Disputed Terms of Proposed Protective Order

December 1, 2015

Publication| Intellectual Property

In Two-way Media Ltd. v. Comcast Cable Communications, LLC, C.A. No. 14-1006 (D. Del. Nov. 17, 2015), Judge Andrews ruled on disputed terms in the parties’ proposed protective order, prohibiting the plaintiff from sharing highly confidential information received from one defendant with defendants in the related cases, but refusing to extend the prosecution bar to cover post-grant PTO proceedings.

The parties disagreed on protective order provisions regarding the sharing of the highly confidential information of one defendant with another defendant in a related case. The plaintiff argued that the protective order provision limiting the distribution of highly confidential information to “outside counsel and experts” provided sufficient protection, but the Court agreed with the defendants that the language specifically allowed for disclosure of highly confidential information only with outside counsel “of the receiving party,” not with other parties.

Judge Andrews further noted that permitting the plaintiff to use one defendant’s highly confidential information in an expert report served on a second defendant would cause prejudice, since the second defendant’s in-house counsel, for example, would be unable to review the portions of the expert’s report that included another defendant’s highly confidential information. As such, the Court found the defendants’ ability to defend their cases would be “impaired.” Thus, Judge Andrews found good cause to prevent the plaintiff from sharing highly confidential information of one defendant across related cases.

But Judge Andrews declined to adopt the post-grant proceedings bar proposed by the defendants, which would have prevented plaintiff’s counsel from participating in post-grant proceedings at the PTO. The Court explained that the possible harm to the plaintiff by depriving it of its counsel of choice outweighed the risk of inadvertent disclosure or competitive use of confidential information. According to Judge Andrews, “disclosure to attorneys ‘substantially engaged with prosecution’ no longer presents a risk of competitive use because prosecution of the patents-in-suit is closed.” Moreover, the Court noted that, as post-grant proceedings are limited to “assessing the patentability of existing claims,” the involvement of litigation counsel does not raise the same risks of competitive misuse as involvement during prosecution. Accordingly, Judge Andrews rejected the defendants’ proposed post-grant proceedings bar.

Analysis: Efficiency has limits—although related cases are often coordinated for purposes of scheduling, the Court may treat them individually on the merits.

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