Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology.  Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated.

The Southern District of Florida recently considered whether a prosecution bar should preclude litigation counsel from advising or participating in potential claim amendments before the PTAB.  In DeCurtis LLC v. Carnival Corp. (here), the parties agreed that a prosecution bar was appropriate, but the accused infringer wanted to include the following provision:

Barred Persons (including counsel for the receiver [of technical information] may not participate, directly or indirectly, in drafting or advising on any amendments or alterations to any patent claim(s) in a reissue protest, post-grant review, ex parte reexamination or inter partes review.

The defendant asked that the specific attorneys representing Carnival in district court be precluded from affecting the scope of any claims in a post-grant proceeding.  Such protection was necessary, in defendant’s view, because Carnival’s counsel could “use knowledge of [defendant’s] highly confidential information, gained through the litigation process, in order to inform the drafting of new patent rights claiming an earlier priority date.”

Carnival opposed including this provision.  Specifically, Carnival was “concerned that DeCurtis would use the protective order to attack Carnival’s patents in an adversarial process before the Patent Office and that defendant, unlike Carnival, could use any counsel that it desires.”  Carnival further argued that the agreed upon aspects of the prosecution bar already provided sufficient protection to defendants technical information.

The court agreed with defendant and granted its motion.  In doing so, the court recognized a distinction between older and newer lines of prosecution bar decisions:

Older cases have generally held that prosecution bars can be extended to include reissue proceedings, but should not encompass reexamination. . . . [¶] On the other hand, a newer line of cases recognizes that even in a reexamination proceeding, a patent owner can use confidential information to restructure or amend its claims so as to improve its litigation position against alleged infringers.  These decisions recognize that drafting, amending, restructuring, or otherwise participating in reexamination proceedings may constitute competitive decision-making, as the Federal Circuit contemplated in In re Deutche Bank.  Thus, more recent cases have prohibited litigation counsel who have access to the opposing party’s confidential information from participating in any way in post-grant proceedings regarding the same patents that were at issue in the litigation.

The court found the newer line of cases more compelling because “a prosecution bar should . . . cover the whole universe of confidential information disclosed, and prohibit the full category of patent activities in which that information might be inadvertently used.”  In reaching this conclusion, Judge Torres notably declined to follow his own decision from a 2012 case “because it never considered the possibility that a patentee could strategically narrow a claim in an IPR proceeding to read directly onto a competitor’s technology while avoiding prior art.”

As I pointed out in 2011, a stricter viewpoint is more prudent given the realities of post-grant claim changes. Moreover, many of the PTAB amendments I have seen are riddled with 112 issues introduced by patent owner attorneys that haven’t amended a claim in decades (if at all).  Assuming other district courts follow the Southern District of Florida’s reasoning, it is critical for patent owners to identify both district court and PTAB counsel before filing suit to prevent being caught flat-footed by a patent prosecution bar that may limit PTAB counsel options.