Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd. et al, 1:12cv557 (11/18/13)
Judge: Ron Clark
Holding: Motion for Relief from Protective Order GRANTED
The plaintiff in this case sought to modify the protective order to allow its litigation counsel to participate in re-examinations and appeals related to the patents in suit and other patents within the same family. Following an oral hearing, Judge Clark granted the motion to modify the protective order, and permitted plaintiffs litigation counsel who had viewed highly confidential source code to be subject to a limited prosecution bar.
Judge Clark noted that the parties did not disagree about the need for protective order, nor certain aspects of the prosecution bar, including the two-year duration in the bar or the actual, original prosecution of patents describing related technology by attorneys who see confidential information. The dispute in this case was as to whether litigation counsel for the plaintiff could participate in re-examinations or other post-grant proceedings, a participation the plaintiff contended was appropriate because those proceedings could only narrow claims. Defendants, on the other hand, countered that the risk still existed of the rewording of claims in light of seeing highly confidential information.
“Of importance to this case,” Judge Clark wrote, “is the [Federal Circuit’s] discussion of the burden of proof [regarding entry of a prosecution bar]. The party seeking a prosecution bar must first show that the information designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” (Internal quotation omitted). Judge Clark noted that although he noted this case law at the hearing, “defendants’ response was little more than repetition of ‘source code is our gem’ as though that was a protective mantra.” He noted that there was no evidence presented, not even in camera, to give him the basis to weigh the information, the scope of activities, or the subject matter reflecting the risk, and specifically called out that there was no concern expressed over codefendants attorneys and experts, even where they were in close competition, examining all discovery in the case. Judge Clark similarly noted that the plaintiff had provided little information about whether each of its trial attorneys is, or is not included in competitive decision-making.
Judge Clark noted that he had already entered his standard protective order in this case, and that while the parties had disputes over the provisions of that initial protective order, and he ruled on those disputes, none dealt with the exact wording of the prosecution bar, so he had included form language from the Northern District of California Model Rules, without objection. “A federal court hearing is not a trial run conducted for the issuance of an advisory opinion, after which counsel submit their “real” evidence and make their “strong” arguments,” he cautioned. Nonetheless he reevaluated the relevant provision of the protective order under the applicable Federal Circuit law in light of the presentations made to him.
Judge Clark’s opinion analyzed the issue of “competitive decision-making” and then considered separately the proceedings at the PTO as opposed to the pending Federal Circuit case. Judge Clark considered the risk of even inadvertent disclosure of defendants’ source code in filings or argument before the Federal Circuit very low, balanced against the burden to the plaintiff of selecting new counsel for the appeal. Accordingly, he held that the appellate counsel could continue to represent the plaintiff throughout the appeal before the Federal Circuit, but did order that these counsel could not include in the briefing or record any portion of or description of source code, nor make any such disclosure in oral argument.
With respect to the re-examination and other post-grant proceedings, however, Judge Clark concluded that some measure of protection was necessary, and crafted a limited prosecution bar the permitted some involvement in re-examination without engaging in the sort of competitive decision-making that was a concern to the Federal Circuit. Interestingly, as he had already determined to transfer this case eventually to the Northern District of California, Judge Clark reviewed decisions from that district that address this issue. His final ruling was that the plaintiff designate one or more attorneys on its trial team who will be responsible for coordinating with, and consulting with, counsel handling the re-examinations in order to address plaintiff’s concern that it not inadvertently take inconsistent positions in the various proceedings. Those attorneys could not be involved in reviewing highly confidential source code of any defendant, nor take part in discussing such code with any cocounsel or any witness in the case, nor could they read reports from witnesses in the case concerning such code or attend depositions or read portions of transcripts, etc.. However they could participate in all other aspects of the case, as well as participating in trial. Whether such trial exposure causes them to become subject to the limited bar for attorneys reviewed code would depend on exactly what was revealed at trial and what stage the re-examination was in at that time. The other attorneys and witnesses who view source code could not participate in the proceeding.
From Docket Navigator.