Patentee litigants should be careful that they have appropriate remedies for complying with disclosure obligations to the USPTO for information obtained under protective orders in litigation. Specifically, patentees should make sure that protective orders contain appropriate provisions permitting required disclosures to the USTPO.
The EDNY recently denied a plaintiff-patentee's motion to modify a protective order to permit the patentee to submit confidential prior art disclosed by the defendant in the litigation to the USPTO as part of the patentee's disclosure obligations during an inter partes reexamination filed by third parties, in Leviton Mfg. Co. v. Pass & Seyour, Inc., No. 12-cv-2257 (E.D.N.Y. Mar. 5, 2013) (Cogan, J.).
The inter partes reexamination was requested on May 16, 2012, against one of the patents-in-suit. The parties stipulated to, and the Court so ordered, the protective order four months later on September 17, 2012. After entry of the protective order, defendant served its preliminary invalidity contentions, which included certain confidential information about defendant's products, which defendant argued it would not have produced but for the protective order.
The Court denied plaintiff's motion to modify the protective order to permit plaintiff to submit defendants preliminary invalidity contentions to the USPTO as part of an information disclosure statement for three reasons:
- Plaintiff failed to present any binding case law on the matter.
- Plaintiff could not demonstrate that the protective order was improvidently granted since it was agreed upon by the parties.
- Plaintiff's "conflicting obligations" were not extraordinary nor compelling since plaintiff was aware of the reexamination prior to negotiating and agreeing to the protective order and knew that defendant would rely on confidential documents in its defense.
In the event of a catch-22 situation such as in the present case, patentees will likely need to turn to alternative disclosures with the USPTO, such as submission of the physical article described by the confidential information or other non-confidential information concerning the article (or process) along with an affidavit explaining what information could not be submitted and why. If possible, the patentee should have the Examiner sign off on the "substitute" references submitted and acknowledge, perhaps in an interview, that the substitute information is adequate.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
