I was always disappointed when I became a lawyer that my day-to-day work did not involve more loopholes. You watch any TV show -- Law & Order (original or extra crispy (that's SVU)), The Good Wife, Matlock, all you hear is loophole this and loophole that. But every day I come into the office and its just the regular old law. It just seemed less clever than a loophole.
I was thus borderline ecstatic to see Judge Burke deciding a discovery dispute over what seems to be a genuine loophole in a protective order.
The prosecution bar in FedEx Corporate Services, Inc. v. Roambee Corp., C.A. No. 21-175-CFC-CJB (D. Del. Feb. 13, 2023) had three distinct parts.
The first was a basic prosecution bar:
[P]ersons . . . who have received access to Designated Material, shall not be engaged . . . in prosecution of patent applications on behalf of the Receiving Party . . . claiming tracking devices used in systems that monitor shipments, without prior approval to do so from the Producing Party.
The second allowed persons otherwise covered by the bar to advise on subjects other than the drafting crafting or amending of claims before the PTO:
This subparagraph does not prevent these persons from monitoring or providing advice concerning such prosecution, but such advice cannot include providing recommendations regarding drafting, crafting, or amending of patent claims to persons engaged on behalf of the Receiving Party in such activities or performing work before the USPTO or foreign patent office, and no Designated Material of the Producing Party shall be used or disclosed.
The last prohibited actually using confidential information in the drafting or amending of claims in an IPR:
This subparagraph further precludes the use of all Designated Material by such persons for the purpose of amending, crafting, or drafting of patent claims on behalf of the Receiving Party . . . claiming tracking devices used in systems that monitor shipments during post-grant proceedings, including inter partes review proceedings. . .
The apparent loophole here came to when some of the plaintiffs lawyers who had seen confidential material moved to amend a claim in a related IPR. The defendant argued this violated essentially all of the provisions above. Judge Burke, however, found no violation pointing out that the provision neatly allowed the attorneys to be involved in amending claims so long as they did not do so during prosecution, and did not actually use any confidential information:
The Court rejects Plaintiff's assertion that the second sentence of paragraph 6(a) of the PO has anything to do with the parties' obligations as to IPR proceedings; that sentence relates only to "advice" given regarding "prosecution" of patents in the U.S. Patent and Trademark Office ("PTO"), which is not at issue here. (D.I. 33, ex. A at 11) The third sentence of paragraph 6(a) is the one that applies, inter alia, to "inter partes review proceedings[.]" (Id. at 11-12) But the parties drafted that sentence only to preclude "the use of all Designated Material" by covered persons "for the purpose of amending, crafting, or drafting of [certain] patent claims on behalf of the Receiving Party[.]" (Id.) Plaintiff suggests that this sentence prohibits any acts at all by covered persons for the purpose of claim amendment in an IPR. But the parties and their counsel are sophisticated, and if they had wished for that type of broader prohibition, they would have drafted the sentence to read "This subparagraph further precludes any act by such persons for the purpose of amending..." or something to that effect. Therefore, and in the absence of proof that any covered person has actually used Designated Material for the purpose of amending patent claims in the IPR, the Court cannot grant the Motion.
Id.
It was a pretty small hoop, but it seems they jumped through it.
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