ORDER RE MOTION TO ENTER PROTECTIVE ORDER AND RESOLVE REMAINING DISPUTE
(Re: Docket No. 42)
PAUL S. GREWAL, Magistrate Judge.
Whatever its merits in a given case, it seems the modern patent suit invariably spawns further administrative proceedings before the Patent and Trademark Office. Whether in a "reexamination" proceeding in the days before the enactment of the America Invents Act, or "review" proceedings in the days since, the PTO is now commonly called upon to reconsider the validity of patents even as their merits lie at the heart of active litigation pending in the federal district courts. Well-known is the substantial case law considering motions to stay the district court litigation under these circumstances. Less well-known, perhaps, is the surprising amount of case law regarding a related question: what restrictions, if any, ought to be imposed on counsel with access to an adversary's proprietary information seeking to advise a patentee both in court and before the PTO?
As the undersigned himself turns to this subject for the third time in just over a year,  a few preliminary observations from this recent experience are offered. First, it is true that Fed.R.Civ.P. 26(c)(1) places the burden of seeking any protective order on the party from whom discovery is sought, a tenet the Ninth Circuit underscored when it held that "a party... from whom discovery is sought bears the burden, for each particular document it seeks to protect, of showing that specific prejudice or harm will result if no protective order is granted." Nevertheless, this district is authorized under Fed.R.Civ.P. 83 to establish a presumption of a so-called "prosecution bar" that extends to reexamination or review proceedings, an authority exercised by the combination of Section 6 of the district's Model Protective Order and Pat. L.R. 2-2. Under such circumstances, the burden is appropriately shifted to the patentee to establish that an exemption from the bar is appropriate. Second, especially in light of the Federal Circuit's teaching that a given prosecution bar must be evaluated on a case-by-case basis,  any prosecution bar should serve only to mitigate the risk of inadvertent use of proprietary information by a patentee, not to unduly burden a patentee with additional expense. Third, while other courts have rejected any expansion of the prosecution bar to reexamination or review proceedings because neither permits the broadening of patent claims,  the fact remains that claims may still be restructured in these proceedings in a way that would undoubtedly benefit from access to an alleged infringer's proprietary information.
With each of these considerations in mind, the court is persuaded here that a limited rather than complete bar on litigation counsel's reexamination and review activities of the type proposed by Grobler strikes the right balance in this case. Apple rightly points out that Grobler's litigation counsel has identified no past history of representing him before the PTO and that even under Grobler's proposal separate administrative counsel will need to be retained. But Apple does not show that, in defending the validity of the disputed patents, Grobler's litigation counsel would be engaged in the type of "competitive decisionmaking" that would unduly risk inappropriate use of Apple's proprietary information. Things might be different if counsel had free rein in the PTO proceedings. But under Grobler's proposal, litigation counsel is prohibited from assisting in any crafting or amendment of patent claims. This puts Grobler squarely in the camp of cases in this district permitting a limited role for litigation counsel in PTO reexam and review proceedings,  and outside of those prohibiting any such role. While one might rightly question how Apple is to police whether Grobler's litigation counsel has crossed the line from mere participation to crafting or amendment of claims, the risk of counsel ignoring its duties is inherent even under Apple's proposed total ban, and in any event counsel is presumed to follow its obligations to adhere to this court's orders.
Especially where, as here, reexamination or review proceedings are really nothing more than an extension of the litigation in the district court, there is even less of a reason to impose a total ban of the kind Apple seeks. It would be one thing if the two matters were truly independent of one another. But if the PTO and district court are just two fronts in the same battle, allowing a limited role for a patentee's litigation counsel while prohibiting counsel from crafting or amending claims is only reasonable.
Grobler's proposed language for Section 6(b) is adopted. Apple's proposed language for that same section is rejected. Grobler shall file a complete proposed protective ...