The court held a hearing on July 28, 2011 on two discovery disputes. Daniel Baxter and Anna Folgers appeared for plaintiff. Kenneth Maikish appeared for defendant. Upon review of the joint discovery statements, upon hearing the arguments of counsel and good cause appearing therefor, THE COURT FINDS AS FOLLOWS:
RELEVANT PROCEDURAL BACKGROUND
This patent infringement suit is proceeding on plaintiff's February 3, 2011 complaint and defendant's March 24, 2011 counterclaims. On June 4, 2011, the parties filed a joint discovery statement concerning the inclusion of a prosecution bar in a protective order. On July 21, 201, the parties filed a joint discovery statement concerning the number of interrogatories propounded by plaintiff.
The parties first dispute the inclusion of a prosecution bar in a protective order.
Defendant Google proposes adding the prosecution bar. Plaintiff Iconfind opposes its inclusion.
The prosecution bar, as initially proposed by Google, reads: Any person reviewing any of an opposing party's Confidential Materials, Confidential Outside Counsel Only Materials or Source Code (all of which shall also be automatically designated as "Prosecution Bar Materials") shall not, for a period commencing upon receipt of such information and ending one year following the conclusion of this case (including any appeals) engage in any Prosecution Activity (as defined below) on behalf of a party asserting a patent in this case. Furthermore, any person reviewing any of an opposing party's Prosecution Bar Materials shall not, for a period commencing upon receipt of such information and ending one year following last reviewing such Prosecution Bar Material engage in any Prosecution Activity involving claims on a method, apparatus, or system that involve coding, categorizing, and/or retrieving information from a computer network.
Prosecution Activity shall mean any activity related to the competitive business decisions involving the preparation or prosecution (for any person or entity) of patent applications relating to coding, categorizing, and/or retrieving information from a computer network or advising or counseling clients regarding the same, including but not limited to providing any advice, counseling or drafting of claims for any patent application, reexamination, or reissue application. Notwithstanding the above, with respect to any reexamination relating to the patent-in-suit in this matter, an attorney who reviews an opposing party's Prosecution Bar Materials may participate in such a reexamination to the extent limited to assisting reexamination counsel with respect to issues relating to the characterization of the prior art but, in no event, relating to amending or adding additional claims. Nothing in this paragraph shall prevent any attorney from sending non-confidential prior art to an attorney involved in patent prosecution for purposes of ensuring that such prior art is submitted to the U.S. Patent and Trademark Office (or any similar agency of a foreign government) to assist a patent applicant in complying with its duty of candor. Nothing in this provision shall prohibit any attorney of record in this litigation from discussing any aspect of this case that is reasonably necessary for the prosecution or defense of any claim or counterclaim in this litigation with his/her client. The parties expressly agree that the Prosecution Bar set forth herein shall be personal to any attorney who reviews Prosecution Bar Materials and shall not be imputed to any other persons or attorneys at the attorneys' law firm. It is expressly agreed that attorneys who work on this matter without reviewing Prosecution Bar Materials shall not be restricted from engaging in Prosecution Activity on matters that fall within the Prosecution Bar.
Joint Statement, Ex. A at 10-11.
1. Applicable Legal Standards
A party seeking a protective order has the burden of showing good cause for its issuance. Fed. R. Civ. P. 26(c). The same is true for a party seeking to include in a protective order a provision effecting a prosecution bar. In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010). Despite provisions in protective orders that specify that information designated as confidential may be used only for purposes of the current litigation, courts recognize that "there may be circumstances in which even the most rigorous efforts of the recipient of such [sensitive] information to preserve confidentiality in compliance ... with a protective order may not prevent inadvertent compromise." Deutsche Bank, 605 F.3d at 1378. Accordingly, courts authorize the inclusion of prosecution bars in protective orders as a less drastic alternative to the disqualification of counsel or experts. See, e.g., Cummins-Alison Corp. v. Glory Ltd., 2003 U.S. Dist. LEXIS 23653, at *29-30 (E.D. Ill. 2003). "The determination of whether a protective order should include a patent prosecution bar is a matter governed by Federal Circuit law," and a party seeking to include a prosecution bar in a protective order carries the burden of showing good cause for its inclusion. Deutsche Bank, 605 F.3d at 1378.
a. "Competitive Decisionmaking"
In order to prevail, Google must show that the prosecution bar is necessary in light of the risk presented by the disclosure of proprietary competitive information. To show this risk, Google must first present sufficient facts to demonstrate that counsel here are involved in "competitive decisionmaking" for Iconfind. The Federal Circuit defines "competitive decisionmaking" as "shorthand for a counsel's activities, association, and relationship with a client 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 corresponding information about a competitor." U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984). Deutsche Bank refined U.S. Steel by clarifying that not every patent prosecution attorney is necessarily involved in competitive decisionmaking. 605 F.3d 1379. In so finding, the court distinguished administrative and oversight duties from activities in which counsel play a "significant role in crafting the content of patent applications or advising clients on the direction to take their portfolios." Id. at 1379-80. The court explained that the latter group of activities -- including "strategically amending or ...