Confidential Information & Claim Drafting

As we discussed last March, the Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation. In our earlier post we explained that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee. In Delaware, the protective order issue has been viewed differently. Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination.  At issue in Xerox, was the confidential materials of Google, Yahoo and YouTube relating to advertising and search query processing. In deciding to allow Xerox’s counsel to participate in the ongoing patent reexamination (accepting the Xerox version of the protective order language, decision here) the court acknowledged that there was a risk that this confidential information might be inadvertently disclosed. Yet, the court dismissed the risk as not worth the unfairness of taking away the plaintiff’s choice in counsel, explaining: Unlike patent prosecution, reexamination is a limited proceeding assessing only the patentability of existing claims against specific prior art references. Defendants’ confidential information is “basically irrelevant” to that particular determination. Moreover, while claims may be broadened during prosecution to support new, tailor-made infringement allegations, amendments made during reexamination can only serve to narrow the original claims. Hence, no product that did not infringe a patent before reexamination could ever infringe that patent following reexamination. Furthermore, to the extent additional details are added to a claim in reexamination to distinguish it from the prior art, those details must already exist in the original patent’s specification. In any event, plaintiff will certainly seek to preserve the broadest possible reading of its claims on reexamination regardless of any insight gleaned from defendants’ confidential information. Comment: First, the statement that no product that did not infringe a patent before reexamination could ever infringe that patent following reexamination seems off the mark. One of the purposes of filing a patent reexamination is to force an amendment to an issued claim that will result in non-infringement. The court arguably puts too much weight in the fact that claims cannot be broadened in reexamination, the problem with this thinking is that the Patent Owner already has a case for infringement, hence the litigation. There is no need to broaden claims, regardless of whether such is permitted in patent reexamination. Whether or not a third party infringes amended/new claims is the real calculus. Further, the court notes that the goal in reexamination is to argue the broadest interpretation, regardless of confidential insight; I can’t agree with this statement either. In patent reexamination the USPTO takes the broadest reasonable interpretation of the claims, which, coincidentally captures the prior art at issue in the patent reexamination.The goal of the Patent Owner is to budge the Office off that position by argument, to amend the claims, or add new claims distinguishing from the art. In either case, the interpretation sought is a narrower interpretation that avoids the art yet still reads on the target products of the parallel litigation. Especially here, where the query processing is highly complex and VERY confidential, it is significant advantage to have such details on hand should the claims need to be amended, or a fine distinction distilled between the art of record and the claims at issue.

As always, these are just my opinions based upon a cursory review of the issues, thrown out for debate. None of my musings are representative of the positions of my firm, or anyone else for that matter.