Attorney Work Product in Unsuccessful IPR Challenges
Inter Partes Review (IPR) includes a statutory estoppel provision designed to prevent harassment of a patentee. The statute provides that an IPR challenger that fails to secure cancellation of a challenged patent claim would not only be estopped from making their failed arguments in a later litigation proceeding, but also any arguments that “reasonably could have been raised” in the IPR. The legislative history of the America Invents Act (AIA) indicates that this “reasonably could have raised” standard was fashioned to impart some degree of practicality to the scope of potential estoppel.
Patentees that later face a failed IPR challenger in a litigation proceeding will invariably seek an expansive read of the “reasonably could have raised” aspect of the estoppel provision for patent/publication based grounds of invalidity. In doing so they will seek discovery of challenger search strategies, breadth of prior art knowledge, and the relative timing of such knowledge as compared to the petition filing. In such situations the applicability of work product immunity to such pre-filing materials will be considered.
Most courts adhere to the view that the work-product doctrine does not ordinarily apply to materials routinely created in the preparation of a patent application for prosecution due to the non-adversarial nature of patent prosecution. Yet, it is fairly well established that work product immunity is available for USPTO proceedings that are adversarial in nature. See McCook Metals, 192 F.R.D. at 260-262 (citing Oak Indus. v. Zenith Electronics Corp., 687 F.Supp. 369, 375 and Applied Telematics,Inc. v. Sprint Communications Co., 1996 WL 539595 at *4.); see also In re Natta, 410 F.2d 187, 192 (3d Cir.), cert. denied, 396 U.S. 836, 90 S.Ct. 95, 24 L.Ed.2d 87 (1969); Natta v. Zletz, 418 F.2d 633, 637–38, 163 U.S.P.Q. 675 (7th Cir. 1969).
In McCook, the court states as follows:
In these cases, the court reasoned that, regardless of whether the reexamination proceeding was initiated by a competitor or the patent holder, “the reexamination proceeding is an adversarial proceeding, similar to ‘litigation’, to which the work product doctrine applies.” Applied Telematics, Inc. at *4. Documents prepared for an interference proceeding were also held to be protected. Electronic Memories & Magnetics Corp. v. Control Data Corp., 188 U.S.P.Q. 449 (N.D.Ill.1975).
McCook Metals, 192 F.R.D. at 260.
In Zletz, the court held that notes and memoranda prepared by in-house counsel and outside counsel in connection with an interference proceeding and addressed to a file or limited intra-office circulation, which contained summaries of conferences between various counsel, legal research, and comments upon technical information, constituted attorney’s work product. Zletz, 418 F.2d at 637–638. Likewise, intra-office memoranda and correspondence prepared by in-house counsel relating to the drafting of motions or other papers to be filed in an interference proceeding were held to be work product and privileged. Id. at 638.
As the new AIA proceedings expand upon the patent reexamination model, and are in fact “contested proceedings” (unlike patent reexaminations), it would seem likely that the above logic would apply with even greater force to the new post grant proceedings of the PTAB.
Of course in circumstances where the pre-filing search and prior art assessment was not especially thorough, challengers may have a great incentive to waive any immunity for such materials. Furthermore, as the only potential source for such “reasonably could have raised” information, it would seem likely that at least some courts would find substantial cause to permit at least some limited discovery of this pre-filing work product.
There is likely to be a far stronger basis for work product immunity for post-petition filing documents. That said, there will also be little strategic value in such given the failed outcome of the IPR.