1 HONORABLE RICHARD A. JONES 2 3 4 5 6 7 UNITED STATES DISTRICT COURT AT SEATTLE 9 11 CASE NO. 2:20-cv-00428-RAJ Plaintiff, v. 13 INNOVATIVE INTELLIGENT 14 PRODUCTS, LLC D/B/A/ GPS 16 Defendant. 17
18 I. INTRODUCTION 19 This matter comes before the Court on Defendant’s Motion for Protective Order 20 with Prosecution Bar Provisions. Dkt. # 27. Plaintiff opposes the motion. Dkt. # 28. 21 For the reasons below, the Court DENIES the motion. 22 II. BACKGROUND 23 Plaintiff National Products Inc. (“NPI” or “Plaintiff”) filed suit against Defendant 24 Innovative Intelligent Products, LLC d/b/a/ GPS Lockbox (“GPS Lockbox” or 25 “Defendant”), alleging four patent infringement claims involving electronic device cases 26 and docking cradles. Dkt. # 43 at 2. After engaging in a meet and confer, the parties 27 1 agreed to a protective order based on the Model Stipulated Protective Order form for this 2 district. Dkt. # 27 at 4. However, the parties were unable to agree on whether to include 3 prosecution bar provisions that would preclude Plaintiff’s attorneys who review 4 “attorney’s eyes only” information from using such information in patent prosecution for 5 Plaintiff. Id. at 4-5. The dispute surrounds the following provisions:
6 4.5 Disclosure of “ATTORNEYS’ EYES ONLY – PROSECUTION BAR” 7 Information or Items. Attorneys Eyes’ Only – prosecution bar documents and information is limited to 8 (a) technical information concerning GPS Lockbox products currently being 9 developed by GPS Lockbox but neither the product nor its technical details have been released or are otherwise publicly available, and (b) any information in the 10 nature of trade secrets pertaining to any products of GPS Lockbox (regardless of whether previously released or not released to the public) that was obtained 11 through production by the designating party and that is not readily ascertainable by 12 inspection of publicly-available GPS products. . . . 13 7. PROSECUTION BAR 14 Absent written consent from the producing party, any individual who receives access to “Attorneys’ Eyes Only – prosecution bar” information shall not be 15 involved in the prosecution of patents or patent applications relating to the subject matter of this action, including without limitation the patents asserted in this action 16 and any patent or application claiming priority to or otherwise related to the 17 patents asserted in this action, before any foreign or domestic agency, including the United States Patent and Trademark Office (“the Patent Office”). For purposes 18 of this paragraph, “prosecution” includes directly or indirectly drafting or, 19 amending, advising, or otherwise affecting the scope or maintenance of patent claims, and includes, for example, original prosecution, reissue and reexamination 20 proceedings. To avoid any doubt, “prosecution” as used in this paragraph does not include representing a party challenging a patent before a domestic or foreign 21 agency that does not involve amendment of the claims at issue (including, but not 22 limited to, a reissue protest, ex parte reexamination or an inter partes review). This prosecution bar shall begin when access to “Attorneys’ Eyes Only – 23 prosecution bar” information is first received by the affected individual and shall 24 end at the earlier of two (2) years after final termination of this action or when the GPS Lockbox products or technical details about the GPS Lockbox product 25 become publicly available. 26 Id. at 5. 27 1 Defendant argues that such language is necessary because Plaintiff’s pending 2 discovery requests seek information that “constitutes confidential or trade secret 3 information . . . including still-confidential GPS Lockbox products.” Id. at 7. Defendant 4 contends that “the potential injury to GPS Lockbox that could result from the disclosure 5 of its confidential or trade secret product-related technical information greatly outweighs 6 the minimal inconvenience to NPI.” Dkt. # 27 at 11. Plaintiff disagrees, arguing, inter 7 alia, that a prosecution bar is unwarranted under the circumstances and would unfairly 8 burden Plaintiff. Dkt. # 28 at 4-5. 10 Under Federal Rule of Civil Procedure 26(c), the Court may, for good cause and 11 with a showing that the parties have conferred in good faith, issue a protective order. 12 Fed. R. Civ. P. 26(c)(1). To establish good cause for a protective order Rule 26(c), “[t]he 13 courts have insisted on a particular and specific demonstration of fact, as distinguished 14 from stereotyped and conclusory statements.” Gulf Oil Co. v. Bernard, 452 U.S. 89, 102, 15 (1981). The “determination of whether a protective order should include a patent 16 prosecution bar is a matter governed by Federal Circuit law.” In re Deutsche Bank Tr. 17 Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). “The scope of protective orders 18 seeking to limit access to attorneys to confidential information is governed by the 19 principles” articulated in U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed.Cir.1984) 20 and later in Deutsche Bank. Avocent Redmond Corp. v. Rose Elecs., Inc., 242 F.R.D. 21 574, 577 (W.D. Wash. 2007). Defendant, as the party seeking a prosecution bar, carries 22 the burden of showing good cause for issuing a protective order with a prosecution bar. 23 605 F.3d at 1378. 24 Protective orders usually include provisions indicating that specific confidential 25 information may be used only for purposes of current litigation. Id. Under certain 26 circumstances, however, courts have recognized that “even the most rigorous efforts of 27 1 the recipient of such information to preserve confidentiality in compliance with the 2 provisions of such a protective order may not prevent inadvertent compromise.” Id. The 3 Federal Circuit in Deutsche Bank stated that “[w]hether an unacceptable opportunity for 4 inadvertent disclosure exists . . . must be determined . . . by the facts on a counsel-by- 5 counsel basis.” Id. (internal quotations and citation omitted). Such a determination, the 6 court held, is based “on the extent to which counsel is involved in competitive 7 decisionmaking with its client.” Id. 8 Here, Plaintiff argues that a prosecution bar is unwarranted for several reasons: (1) 9 the Court’s Model Protective Order already provides adequate protection of confidential 10 information; (2) Defendant has not identified any particular information that presents a 11 significant risk of inadvertent disclosure; (3) Plaintiff’s counsel are not competitive 12 decisionmakers for Plaintiff; and (4) a prosecution bar unfairly burdens Plaintiff. Dkt. 13 # 28 at 4-5. With respect to the first reason, Plaintiff cites the provision on access to and 14 use of confidential material in the district court’s Model Protective Order, which states 15 that “[a] receiving party may use Confidential material and Attorneys’ Eyes Only 16 material that is disclosed or produced . . . in connection with this case only for 17 prosecuting, defending, or attempting to settle this litigation.” W.D. Wash. Model 18 Protective Order, 4.1; Dkt. No. 27-1, § 4.1. Based on this provision, Plaintiff argues, 19 Plaintiff’s counsel is already barred from using any confidential information for any 20 purposes other than this litigation. Dkt. # 28 at 10. The Court agrees.
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1 HONORABLE RICHARD A. JONES 2 3 4 5 6 7 UNITED STATES DISTRICT COURT AT SEATTLE 9 11 CASE NO. 2:20-cv-00428-RAJ Plaintiff, v. 13 INNOVATIVE INTELLIGENT 14 PRODUCTS, LLC D/B/A/ GPS 16 Defendant. 17
18 I. INTRODUCTION 19 This matter comes before the Court on Defendant’s Motion for Protective Order 20 with Prosecution Bar Provisions. Dkt. # 27. Plaintiff opposes the motion. Dkt. # 28. 21 For the reasons below, the Court DENIES the motion. 22 II. BACKGROUND 23 Plaintiff National Products Inc. (“NPI” or “Plaintiff”) filed suit against Defendant 24 Innovative Intelligent Products, LLC d/b/a/ GPS Lockbox (“GPS Lockbox” or 25 “Defendant”), alleging four patent infringement claims involving electronic device cases 26 and docking cradles. Dkt. # 43 at 2. After engaging in a meet and confer, the parties 27 1 agreed to a protective order based on the Model Stipulated Protective Order form for this 2 district. Dkt. # 27 at 4. However, the parties were unable to agree on whether to include 3 prosecution bar provisions that would preclude Plaintiff’s attorneys who review 4 “attorney’s eyes only” information from using such information in patent prosecution for 5 Plaintiff. Id. at 4-5. The dispute surrounds the following provisions:
6 4.5 Disclosure of “ATTORNEYS’ EYES ONLY – PROSECUTION BAR” 7 Information or Items. Attorneys Eyes’ Only – prosecution bar documents and information is limited to 8 (a) technical information concerning GPS Lockbox products currently being 9 developed by GPS Lockbox but neither the product nor its technical details have been released or are otherwise publicly available, and (b) any information in the 10 nature of trade secrets pertaining to any products of GPS Lockbox (regardless of whether previously released or not released to the public) that was obtained 11 through production by the designating party and that is not readily ascertainable by 12 inspection of publicly-available GPS products. . . . 13 7. PROSECUTION BAR 14 Absent written consent from the producing party, any individual who receives access to “Attorneys’ Eyes Only – prosecution bar” information shall not be 15 involved in the prosecution of patents or patent applications relating to the subject matter of this action, including without limitation the patents asserted in this action 16 and any patent or application claiming priority to or otherwise related to the 17 patents asserted in this action, before any foreign or domestic agency, including the United States Patent and Trademark Office (“the Patent Office”). For purposes 18 of this paragraph, “prosecution” includes directly or indirectly drafting or, 19 amending, advising, or otherwise affecting the scope or maintenance of patent claims, and includes, for example, original prosecution, reissue and reexamination 20 proceedings. To avoid any doubt, “prosecution” as used in this paragraph does not include representing a party challenging a patent before a domestic or foreign 21 agency that does not involve amendment of the claims at issue (including, but not 22 limited to, a reissue protest, ex parte reexamination or an inter partes review). This prosecution bar shall begin when access to “Attorneys’ Eyes Only – 23 prosecution bar” information is first received by the affected individual and shall 24 end at the earlier of two (2) years after final termination of this action or when the GPS Lockbox products or technical details about the GPS Lockbox product 25 become publicly available. 26 Id. at 5. 27 1 Defendant argues that such language is necessary because Plaintiff’s pending 2 discovery requests seek information that “constitutes confidential or trade secret 3 information . . . including still-confidential GPS Lockbox products.” Id. at 7. Defendant 4 contends that “the potential injury to GPS Lockbox that could result from the disclosure 5 of its confidential or trade secret product-related technical information greatly outweighs 6 the minimal inconvenience to NPI.” Dkt. # 27 at 11. Plaintiff disagrees, arguing, inter 7 alia, that a prosecution bar is unwarranted under the circumstances and would unfairly 8 burden Plaintiff. Dkt. # 28 at 4-5. 10 Under Federal Rule of Civil Procedure 26(c), the Court may, for good cause and 11 with a showing that the parties have conferred in good faith, issue a protective order. 12 Fed. R. Civ. P. 26(c)(1). To establish good cause for a protective order Rule 26(c), “[t]he 13 courts have insisted on a particular and specific demonstration of fact, as distinguished 14 from stereotyped and conclusory statements.” Gulf Oil Co. v. Bernard, 452 U.S. 89, 102, 15 (1981). The “determination of whether a protective order should include a patent 16 prosecution bar is a matter governed by Federal Circuit law.” In re Deutsche Bank Tr. 17 Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). “The scope of protective orders 18 seeking to limit access to attorneys to confidential information is governed by the 19 principles” articulated in U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed.Cir.1984) 20 and later in Deutsche Bank. Avocent Redmond Corp. v. Rose Elecs., Inc., 242 F.R.D. 21 574, 577 (W.D. Wash. 2007). Defendant, as the party seeking a prosecution bar, carries 22 the burden of showing good cause for issuing a protective order with a prosecution bar. 23 605 F.3d at 1378. 24 Protective orders usually include provisions indicating that specific confidential 25 information may be used only for purposes of current litigation. Id. Under certain 26 circumstances, however, courts have recognized that “even the most rigorous efforts of 27 1 the recipient of such information to preserve confidentiality in compliance with the 2 provisions of such a protective order may not prevent inadvertent compromise.” Id. The 3 Federal Circuit in Deutsche Bank stated that “[w]hether an unacceptable opportunity for 4 inadvertent disclosure exists . . . must be determined . . . by the facts on a counsel-by- 5 counsel basis.” Id. (internal quotations and citation omitted). Such a determination, the 6 court held, is based “on the extent to which counsel is involved in competitive 7 decisionmaking with its client.” Id. 8 Here, Plaintiff argues that a prosecution bar is unwarranted for several reasons: (1) 9 the Court’s Model Protective Order already provides adequate protection of confidential 10 information; (2) Defendant has not identified any particular information that presents a 11 significant risk of inadvertent disclosure; (3) Plaintiff’s counsel are not competitive 12 decisionmakers for Plaintiff; and (4) a prosecution bar unfairly burdens Plaintiff. Dkt. 13 # 28 at 4-5. With respect to the first reason, Plaintiff cites the provision on access to and 14 use of confidential material in the district court’s Model Protective Order, which states 15 that “[a] receiving party may use Confidential material and Attorneys’ Eyes Only 16 material that is disclosed or produced . . . in connection with this case only for 17 prosecuting, defending, or attempting to settle this litigation.” W.D. Wash. Model 18 Protective Order, 4.1; Dkt. No. 27-1, § 4.1. Based on this provision, Plaintiff argues, 19 Plaintiff’s counsel is already barred from using any confidential information for any 20 purposes other than this litigation. Dkt. # 28 at 10. The Court agrees. 21 In determining whether a prosecution bar is proper, the Federal Circuit has noted 22 that protective order provisions “specifying that designated confidential information may 23 be used only for purposes of the current litigation” are “generally accepted as an effective 24 way of protecting sensitive information while granting trial counsel limited access to it 25 for purposes of the litigation.” 605 F.3d at 1378. A prosecution bar may be imposed 26 under specific circumstances under which “inadvertent compromise” cannot be prevented 27 1 despite “the most rigorous efforts of the recipient of such information to preserve 2 confidentiality in compliance with the provisions of such a protective order.” Id. The 3 Court does not find such circumstances exist here. 4 In fact, Plaintiff has separate representation for patent prosecution and for this 5 litigation. Id. at 8. The law firm of Fenwick & West LLP represents Plaintiff in this 6 litigation and does not prosecute patents for Plaintiff nor represent Plaintiff in 7 reexamination, reissue, or original prosecution proceedings as the United States Patent 8 and Trademark Office (“USPTO”). Id. at 7. Although Fenwick & West LLP attorneys 9 have represented Plaintiff in two inter partes review proceedings at the UPTO, the 10 proceedings involved an unrelated patent. Id. at 8. The law firm of Lowe Graham Jones 11 PLLC represents plaintiff in patent prosecution matters and does not represent Plaintiff in 12 this litigation. Id. at 8. This separate representation diminishes the risk of inadvertent 13 disclosure. See 605 F.3d at 1379 (nothing that “[t]he concern over inadvertent disclosure 14 manifests itself in patent infringement cases when trial counsel also represent the same 15 client in prosecuting patent applications before the PTO”). 16 Furthermore, Defendant provides no persuasive evidence that Plaintiff’s patent 17 litigators are competitive decisionmakers for Plaintiff. The Federal Circuit initially 18 defined competitive decisionmaking accordingly:
19 [S]horthand for a counsel’s activities, association, and relationship with a client 20 that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or 21 corresponding information about a competitor. 22 U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). Subsequent 23 opinions have since acknowledged a broader list of activities that might implicate 24 competitive decisionmaking. Id. Such activities include the following: 25
26 [O]btaining disclosure materials for new inventions and inventions under development, investigating prior art relating to those inventions, making strategic 27 1 decisions on the type and scope of patent protection that might be available or worth pursuing for such inventions, writing, reviewing, or approving new 2 applications or continuations-in-part of applications to cover those inventions, or strategically amending or surrendering claim scope during prosecution. 3
4 605 F.3d at 1380. 5 Defendant’s argument that Plaintiff’s lead litigation attorney, Mr. Tellekson, is a 6 competitive decisionmaker for Plaintiff because he “is occasionally involved in high- 7 level legal discussions that sometimes touch on patent prosecution” and has represented 8 Plaintiff in two previous and unrelated inter partes review proceedings is unconvincing. 9 Dkt. # 29 at 7 (citing Dkt. # 28 at 2). Defendant does not provide any specific facts 10 demonstrating that Mr. Tellekson or any other attorney representing Plaintiff in this 11 litigation participate in Plaintiff’s pricing or product decision or are involved in other 12 activities that render them competitive decisionmakers. See U.S. Steel Corp., 730 F.2d at 13 1468 (holding that “the factual circumstances surrounding each individual counsel’s 14 activities, association, and relationship with a party . . . must govern any concern for 15 inadvertent or accidental disclosure”). Indeed, high level legal discussions and unrelated 16 inter partes review proceedings do not constitute competitive decisionmaking, as defined 17 in Deutsche Bank, nor present a threat that confidential information will be misused in 18 the absence of a prosecution bar. See Avocent Redmond Corp. v. Rose Elecs., Inc., 242 19 F.R.D. 574, 579 (W.D. Wash. 2007) (holding that the court “is unwilling to preclude 20 lawyers from litigating here or in front of the patent office on a vague and generalized 21 threat of future inadvertent misuse of discovered materials”). 22 Finding that the protective order agreed upon by both parties provides sufficient 23 protection of confidential information at issue and in the absence of evidence that 24 Plaintiff’s patent litigators are competitive decisionmakers, the Court denies Defendant’s 25 request that the Court enter a prosecution bar provision in the protective order. The Court 26 27 1 finds that Defendant has failed to establish good cause for a prosecution bar provision 2 under Rule 26(c). 4 For the reasons above, the Court DENIES Defendant’s Motion for Protective 5 Order with Prosecution Bar Provisions. Dkt. # 27. 6 7 Dated this 29th day of June, 2021. 8 A 9
10 The Honorable Richard A. Jones 11 United States District Judge 12
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