ORDER RE: JOINT LETTER BRIEF REGARDING PROTECTIVE ORDER DISPUTE
Re: ECF No. 429
JON S. TIGAR, District Judge.
Before the Court is the parties' Joint Letter Brief Regarding Protective Order Dispute, ECF No. 429. In it, the parties dispute whether the prosecution bar the Court previously approved with respect to Defendants in this case should apply to Plaintiffs' counsel who are admitted to practice before the U.S. Patent and Trademark Office ("USPTO").
To understand the present dispute, it is useful to examine the history of the prosecution bar contained in the existing order.
On September 27, 2013, the parties submitted competing letter briefs concerning their dispute over whether the protective order in this action should include a patent prosecution bar for persons who obtain access to Defendants' confidential technical data. ECF Nos. 376, 377. Plaintiffs opposed the inclusion of a bar on the grounds that (1) the Defendants' proposed bar was overly broad; (2) patent prosecution bars are not common in consumer class actions; (3) Defendants did not seek the inclusion of a bar in other related cases besides the Opperman action; and (4) the inclusion of the bar would "inequitably impede" their ability to retain experts and prosecute this action. ECF No. 376.
The Court granted Defendants' request to include a prosecution bar, but only as to the Defendants inter se. The Court rejected Defendants' request that the bar apply to Plaintiffs' counsel, finding that Defendants had not "met their burden to establish that an unacceptable risk of inadvertent disclosure exists with respect to Plaintiffs." ECF No. 390 at 4. The Court based this conclusion on two subsidiary conclusions. First, the Court stated, "it is clear from the parties' submissions that there is no danger that Plaintiffs' counsel will be involved in patent prosecution activities. Indeed, Defendants admit that [t]here is no indication that any of plaintiffs' counsel are members of the patent bar.'" ECF No. 390 at 4. Second, the Court concluded that Defendants had failed to explain why the objections procedure delineated in paragraph 7.4 of the stipulated protective order did not adequately mitigate the risk that inadvertent disclosures of the Defendants' confidential information would occur with respect to experts who were involved in competitive decision-making. Id.
As to the prosecution bar provision that would apply to Defendants, the Court held that the language of the proposed bar was not "sufficiently specific in describing the kind of information that will trigger the bar." Id. at 3. The Court ordered Defendants to submit a revised proposed prosecution bar for the Court's review. Defendants' revised proposed prosecution bar provides:
This provision applies only to Defendants and individuals retained by, employed by, or affiliated with a Defendant. Absent the written consent of the Designating Party, any individual who, pursuant to section 7.3 of this Order, receives access to "CONFIDENTIAL - OUTSIDE COUNSEL ONLY" technical information of the Designating Party shall not be involved, directly or indirectly, in any of the following activities: (i) advising on, consulting on, preparing, prosecuting, drafting, editing, and/or amending patent applications, specifications, claims, and/or responses to office actions, or otherwise affecting the scope of claims in patents or patent applications relating to the subject matter of the "CONFIDENTIAL - OUTSIDE COUNSEL ONLY" technical information he or she received before any foreign or domestic agency, including the United States Patent and Trademark Office; and (ii) the acquisition of patents (including patent applications), or the rights to any such patents or patent applications with the right to sublicense, relating to the subject matter of the "CONFIDENTIAL - OUTSIDE COUNSEL ONLY" technical information he or she received. These prohibitions are not intended to and shall not preclude counsel from participating in proceedings on behalf of a Party challenging the validity of any patent, but are intended, inter alia, to preclude counsel from participating directly or indirectly in reexamination, inter partes review, covered business method review, or reissue proceedings on behalf of a patentee. These prohibitions shall commence when "CONFIDENTIAL - OUTSIDE COUNSEL ONLY" technical information or items are first received by the affected individual, and shall end two (2) years after the final resolution of this action, including all appeals. For the avoidance of doubt, "technical information" for the purposes of this section ("PROSECUTION BAR") does not include information or items comprising marketing and sales data, commercially sensitive information, information relating to future business plans, future product development information, commercial agreements, or trade secrets, except to the extent that they contain technical data of potential consequence to the above-described activities.
ECF No. 405.
Following the Court's Order, the parties filed a joint case management statement alerting the Court that two of Plaintiffs' counsel - Carl Schwenker and Nick Carlin - are, in fact, admitted to practice before the USPTO. The instant joint letter brief was filed December 20, 2013. ECF No. 429. In it, Defendants request that the first sentence of the revised proposed prosecution bar be amended to read: "This provision applies only to: (i) Defendants and individuals retained by, employed by, or affiliated with a Defendant; and (ii) any Plaintiff's Counsel licensed to practice before the United States Patent and Trademark Office."
II. MOTION FOR RECONSIDERATION
Plaintiffs urge the Court to treat Defendants' request as a motion for reconsideration pursuant to Civil Local Rule 7-9, and argue that Defendants have failed to establish the discovery of new facts and the exercise of reasonable diligence required for the Court to grant reconsideration. In support of that argument, Plaintiffs argue that previous filings in this case alerted Defendants that two of Plaintiffs' counsel are members of the patent bar.
First, Plaintiffs point to the March 22, 2013 Declaration of Carl F. Schwenker in Support of Plaintiffs' Oppositions to Defendants' Administrative Motion and Motions for Severance, in paragraph two of which Mr. Schwenker stated: "I am a member in good standing in the State Bar of Texas.... I am also a member in good standing in the Bars for the United States Court of Appeals for the Ninth Circuit, the United States Court of Appeals for the Federal Circuit, the United States District Courts for the Northern District of Texas, the Southern District of Texas and the Western District of Texas, and the United States Patent & Trademark Office. " (emphasis added). Second, Plaintiffs point to their October 4, 2013 Submission Re Organization of Plaintiffs' Counsel, which Plaintiffs characterize as filed "well before" the Court's prosecution bar Order, issued eleven days later. The October 4, 2013 submission was filed after Defendants' letter brief concerning the prosecution bar. Finally, Plaintiffs argue that the roster of patent attorneys is publicly available online.
Plaintiffs' argument that Defendants have failed to establish the discovery of new facts is unpersuasive. Plaintiffs' "disclosures" were hardly designed to bring the issue to Defendants' attention. For example, the October 4, 2013 disclosure, which was filed after briefing was completed on the prosecution bar dispute, was buried on pages 14 and 26 of a 113-page document pertaining to the organization of Plaintiffs' counsel. ECF No. 382. It is not surprising that Defendants failed to read this document, which did not directly concern them, with an eye toward protecting their intellectual property rights. Nor should Defendants have been expected to acquire information from the USPTO's roster that was both readily available to Plaintiffs and plainly material to the discovery dispute the ...