The protective order hearing last week was even more interesting than anticipated. We laid out the background our last post, but here are the basics:
In this patent action, the inventor of the patents-in-suit is also a principal of the plaintiff entity Rein Tech, as well as the prosecuting attorney, the testifying expert, and (likely) a fact witness. He's doing a lot here.
Because he is the principal and a competitive decision maker, and even though he is a testifying expert who apparently issued a report, the parties (more or less) agreed that he is precluded from seeing Attorneys' Eyes Only ("AEO") information under the protective order in the action.
Beyond that, the protective order has a prosecution bar, and the principal has acted as the prosecuting attorney in pursuing a certificate of correction for an asserted patent. If he had received AEO information, he shouldn't have been prosecuting anything in the field of the asserted patents.
Going into the hearing, the defendants' allegation was basically that the principal received AEO information at some point (a protective order violation on its own), and that he nonetheless proceeded to prosecute one of the patents-in-suit to seek a certificate of correction.
At the hearing, the Court laid out its views on the importance of protective orders—and of investigating what happened if a protective order may have been violated. The Court ultimately granted the defendant's motion and sanctioned the plaintiff entity.
I had initially intended to write this post on Friday, but this is one that really, absolutely called for a transcript of the hearing—which we now have. Below are some potentially helpful (or interesting) excerpts from the transcript.
The Court Really, Really Takes Protective Orders Seriously
The Court reiterated multiple times how seriously the Court takes protective order violations, and how litigation in this district (which is often between major companies and can involve critically secret information such as source code) could not proceed if parties could not trust that the Court would enforce protective orders.
THE COURT: . . . Protective orders are important documents. If I don't enforce protective orders, then litigation in this court will grind to a halt because if people don't have faith in the protective orders that we enter, then they won't produce documents and we can't have litigation.
Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1683-MN, at 2:13-18 (D. Del. Aug. 1, 2025)(transcript).
[I]f the Court were not to sanction -- and sanction severely -- repeated violations of provisions meant to protect sensitive information in litigation, protective orders would be rendered worthless. This Court's assurances that sensitive information would be protected would be meaningless. And litigation would grind to a halt.
Id., 45:8-14.
The Court Put The Inventor Under Oath—And It Did Not Go Well for Him
The Court went so far as to put the inventor under oath and question him directly about his protective order violation. This is not something that happens often—although it's also not that surprising given that the Court ordered him to appear.
The inventor didn't seem to grasp the seriousness of the situation or take it seriously (which is honestly pretty incredible), at one point complaining that he felt like he was being deposed:
THE COURT: There was a document that was given to me that showed that edits, additions were made to the supplemental interrogatory responses. Who made those edits?
[THE INVENTOR]: Well, there are some edits -- this reminds me of the deposition. I think what you're talking to me about --
THE COURT: It's not a deposition and it's not a talk around. Someone wants sanctions because you violated a protective order. It's very serious. So just answer my questions. Who made them? . . .
Id., 27:12-18.
The inventor's testimony overall really shows the importance of witness preparation. If you represent a client who is specifically called into court for a hearing, you have to expect he or she may end up testifying.
It may take some doing, but it's critical that you prep the client to be respectful to the Court, to take the hearing seriously, to stand when introduced and when speaking, to not interject in the middle of a back-and-forth between counsel and the Court, and so on.
I expect most of our attorney readers already know this, but it's still a good reminder of what can go wrong. You absolutely do not want to be in a situation where the judge feels that the client is not taking the process seriously.
Aside from his demeanor and overall behavior, his testimony was inconsistent, as the Court noted. And he didn't seem to grasp that an expert report that quotes AEO information is itself AEO:
[THE INVENTOR]: Once I found out about the protective order, I complied with it.
THE COURT: You still have documents in your possession that are attorneys' eyes only.
[THE INVENTOR]: No, I don't.
THE COURT: You just told me you have a paper copy of documents.
[THE INVENTOR]: Well, that's a PDF.
THE COURT: A PDF is confidential information.
[THE INVENTOR]: I threw away the papers and deleted that file. Yes, I have.
THE COURT: I don't know that I believe that. When I asked you if you currently have any, you said yes.
[THE INVENTOR]: Currently have?
THE COURT: Any confidential information of Defendant's.
[THE INVENTOR]: I do not have that. No, I do not.
THE COURT: So you have deleted the infringement contentions, your expert -- your own expert report, and any documents you received and every draft of those documents?
[THE INVENTOR]: No, just the exhibits that had "attorneys' eyes only" on them.
THE COURT: When you cite to things in those documents, you realize that's "attorneys' eyes only"?
. . .
[THE INVENTOR]: Looking at the pictures on the claim chart, yes, I would refer to those. But those pictures don't show -- I don't see any --
THE COURT: Doesn't matter, does it? When someone marks something confidential, you don't get to decide.
[THE INVENTOR]: It's not marked.
THE COURT: It is marked confidential. The documents that are attached to that claim chart are marked attorneys' eyes only; right?
[THE INVENTOR]: No, I don't see it. I never saw any attorneys' eyes only.
THE COURT: I don't understand how you can say you edited a document that refers to confidential documents. You said, "I edited the text that refers to confidential documents but I never saw the documents, Judge." Would you believe anyone who said that to you? . . . [O]n page 15 of the claim chart, there was an addition which is a quote from a document that's Exhibit 20 that was marked attorneys' eyes only. That was an addition that was made to this claim chart. Who made that?
[THE INVENTOR]: I don't know at this time. I have to look that up.
Id., 30:6-31:5, 34:6-35:12.
Some, Uh, Pointers on Courtroom Decorum
One day we should do a post on the basics of courtroom decorum. Maybe we'll cite this transcript for basic points like "don't yell at the judge" and "stand when you address the Court":
[Plaintiff's Attorney]: I asked the client how did you get these -- I didn't know these documents were designated as --
THE COURT: Don't raise your voice at me.
Id., 6:15-17.
THE COURT: You don't know what was disclosed because you did not look at what was disclosed.
[Plaintiff's Attorney]: Because the Dropbox documents were deleted before.
THE COURT: When? Give me a date. The Dropbox -- when were the Dropbox documents deleted?
[The inventor spoke from his chair and away from the microphone, inaudible to the court reporter]
Stand up when you talk to me.
[The Inventor]: December 2023.
Id., 9:2-9.
Ignorance Is No Excuse
The Court rejected the idea that ignorance is an excuse for failing to comply with a protective order—especially for an attorney of record in the case:
[PLAINTIFF'S ATTORNEY]: I will say outset that I was unaware and I believe that Mr. Klicpera was also unaware that there were any --
THE COURT: Doesn't matter. You know what? You are an attorney of record in this case. One of the first things that you need to do is make sure that everything is in compliance, and it wasn't. You guys are sitting there like it's okay to violate court orders because I just didn't know what was going on. That's not the way it works.
Id., 4:1-9.
The Court repeatedly emphasized that an attorney of record in the case—even if "temporary"—has a duty to investigate when a protective order violation occurs:
[PLAINTIFF'S ATTORNEY]: We're in the process of bringing in additional counsel who does patent prosecutions. I initially got into this case on a temporary basis, and I happened to be caught in the middle of this maelstrom that I had nothing to do with to begin with. I had no idea --
THE COURT: The problem is that you are counsel of record in this case. You know that this maelstrom occurred, and you have done very little to figure out what's going on. I mean, the defendant says in their papers we don't even know what the extent of the violations are, is.
And that's true. And part of the reason for that is because you've done no investigation. You're like, I'm caught in the middle of this. You know what a responsible attorney would do? A responsible attorney would find out what happened and say it. You're just saying he inadvertently got a document. I cannot believe that. I cannot take that as credible because you don't know because no investigation has been done.
Id., 5:17-6:10.
When the attorney got defensive about his own lack of a violation, the Court pushed back and reminded him that this is about his client's violation of the protective order:
[PLAINTIFF'S ATTORNEY]: . . . This was not -- there was nothing that was intentional here, at least certainly not by my office. I wasn't even aware --
THE COURT: You're also responding on behalf of the client. It's not just you here; right? Because the fact is, you're an attorney. You can see this information. Why I am not happy with you at the moment is because it was your job to find out, when there are serious accusations being made, even if you didn't have a part in the conduct that created them, it's your job because you are an officer of this court to help figure it out.
And you have not done that. You've sort of washed your hands. You say, "I asked the client what happened. I never saw the Dropbox [on which AEO material was transmitted to the client by a prior attorney]." I mean, how do I take any assertion that there were just a few documents in the Dropbox and they were all mostly publicly available? There is no basis for you to say that. You've told me you don't know what was in the Dropbox. You never bothered to look at it. You just asked the client. And the client already had no idea that he was looking at confidential information or he ignored the fact that he was.
Id., 7:9-8:8.
[PLAINTIFF'S ATTORNEY]: Nothing was produced to me except by my client.
THE COURT: It's not you. You are here representing your client. Your client is who's going to be sanctioned. They want sanctions against your client.
[PLAINTIFF'S ATTORNEY]: Understood.
THE COURT: So you're just protecting yourself.
Id., 19:9-15.
This excuse didn't work for the inventor, either:
THE COURT: . . . Prosecution is barred under the terms of the protective order.
[THE INVENTOR]: That I didn't know about, wasn't told about.
THE COURT: That's not my problem, but it is a problem that you have with your counsel. But it is a valid order of this Court.
[THE INVENTOR]: Doesn't it say in paragraph 19 that I'm supposed to sign a document [as an expert to get access under the protective order]?
THE COURT: That's just another violation of the protective order. That's not Defendant's obligation. That is if you have an expert who is going to have access, you're supposed to sign that and disclose it to them so they can decide whether or not they want to object. That's yet another violation of the protective order that that wasn't done.
[THE INVENTOR]: How am I supposed to sign it if I I don't know about it?
THE COURT: Don't argue with me. Ask your counsel. It's not my problem. You have access to the docket on this case; right?
[THE INVENTOR]: Access to the docket? Yes, Pacer.
THE COURT: Okay. The protective order is on Pacer, so it's not really an excuse to say that you didn't know about it because it's on Pacer.
Id., 37:16-38:19.
Sanctions Granted
Ultimately, the Court sanctioned the plaintiff by enjoining further violations, disqualifying the inventor from testifying as an expert witness or further accessing confidential information, and granting the defendant its fees and costs in bringing the motion. The Court also ordered that the inventor certify what AEO information he and others had access to and whether it has been destroyed.
The Court concluded by pointing out the plaintiff's inappropriate attitude towards confidential information:
I have to say that this whole experience has been really disappointing in terms of Plaintiff's attitude towards confidential information, Plaintiff and Plaintiff's counsel desire to rectify the situation and figure out what happened so that I had some confidence that Plaintiff actually cared about the violations, which I still don't really have.
Id., 47:22-48:4.
One final note—this hearing also involved some really nice investigative work on PDF metadata by the defendant's counsel. They used metadata from the plaintiff's public PACER filings to show who had access to AEO information. But that will have to be another post.
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