A standard component of any patent litigation is a protective order. Such orders will invariably include a “prosecution bar. ” The prosecution bar operates to ensure that individuals accessing confidential data of an opponent are precluded from prosecuting patent applications in the area of the litigated technology (usually for a fixed duration of time). Absent this bar, patent applications/claims could be fashioned by competitive decision makers involved in the litigation based on the confidential information of their rival.
With concurrent PTAB proceedings now commonplace with most patent litigation, the question becomes:
Should a prosecution bar extend to PTAB post grant patent proceedings?
The answer to the above question varies across district courts, and, of course, is highly dependent upon the agreed upon language of the Order. The problem becomes, in many cases, when outdated boilerplate that does not directly reference new proceedings of the PTAB appears in the Order. In some districts the bar is found to extend to PTAB proceedings to the extent amendments are contemplated. Other courts take the stricter view that manipulation of the intrinsic record of a patent is an unfair advantage. These courts appreciate the value in allowing patentees to use confidential information of an accused infringer as a navigation aid to be used throughout a USPTO post grant patent proceeding. (especially where IPR, PGR and CBM are explicitly contemplated by the Order)
Courts have recently emphasized the new “ajudicative” nature of the post grant challenges of the America Invents Act to distinguish them from previous patent reexamination proceedings; especially where old boilerplate language is at issue in the Order. While it is true that the new PTAB proceedings do not have an examination phase, the intrinsic record is still susceptible to the very same alterations as made during any application/patent prosecution. That is to say, amendments and prosecution history estoppel are added to the intrinsic record just as they were before. The only difference is that patent examiners are no longer involved— a largely irrelevant detail.
Indeed, history has demonstrated that the stricter view of the courts is the most prudent.While there are no completed PTAB proceedings to serve as a guide, courts permitting participation in patent reexamination have greatly aided the patentee. University of Virginia Patent Foundation v. General Electric Company is a prime example.
In Virginia, the typical dispute played out with respect to the protective order. The Patentee argued that the prosecution bar was unnecessary since claims cannot be broadened. On the other hand, G.E. argued that the plaintiff’s attorneys had been exposed through discovery to the confidential operation of the “crown jewels” of G.E.’s products. G.E. argued that the litigators could effectively “gerrymander” the claims in the direction of infringement,while simultaneously avoiding the prior art, by “whispering in the ear” of the prosecutor; nevertheless, the judge allowed participation in the reexamination.
Not surprisingly, no amendments were made so as to avoid an intervening rights defense. More importantly, and completely within their rights, Virginia applied a considerable amount of finesse with respect to the characterization of claim terminology in the patent reexamination.
In a March 2010 filing, after the proceeding was favorably terminated, the Patentee submitted additional comments. The comments were directed to the examiner’s Statement for confirming the claims and terminating the proceeding.
The Patent Owner believes that claim 1 is patentable over Frahm I for at least the reasons given in the “Amendment Under 37 C.F.R. § 1.111 and § 1.550… ” filed November 30,2009, hereafter, “the previous response.” Those reasons did not require the claimed “magnetization recovery period” to be viewed in the manner described in the Statement. The Patent Owner believes that the scope of claim 1 of the ‘282 patent includes embodiments wherein the claimed “magnetization recovery period” allows either substantially complete or partial Tl and T2 relaxation to occur, depending upon the chosen duration of the “magnetization recovery period” and the Tl and T2 relaxation times of the tissue being imaged. (See, e.g., the embodiments in columns 17 and 18 where none of the “magnetization recovery periods” are long enough to allow substantially complete Tl and T2 relaxation to occur.) The Patent Owner further believes that this is clearly supported by the examples in the ‘282 patent, and the manner in which an artisan would interpret the glossary terms in the ‘282 patent related to this feature. Specifically, the use of preselected “magnetization recovery periods” in these examples that permit only partial Tl and T2 relaxation demonstrates how the recovery period can be manipulated to provide “an additional degree of freedom for controlling the image contrast ….” See, ‘282 patent, column 15, lines 10-14. . .
Although unlikely, it may be that the specific relaxation timing of G.E.’s devices is public knowledge. Still, it is apparent from this filing how fairly precise information can be infused to the prosecution history. This type of filing arguably demonstrates the very “gerrymandering” and self serving type of statement argued by GE to the judge (transcript 9/2/2009), to no avail.
At least for cases relating to complex technologies, prosecution bars that prevent direct participation in post grant patent proceedings would appear crucial to an accused infringer.