Prosecution Bars and IPR

Authored by Michelle Carniaux and Bryan Nese

A recent decision out of the Eastern District of Wisconsin addressed the question of whether a prosecution bar in a protective order prevents a patent owner’s litigation counsel from participating in an inter partes review (“IPR”) of the subject patent. See Prolitec Inc. v. ScentAir Techs., Inc., Case No. 12-C-483, slip op. at 9 (E.D. Wis. May 17, 2013). In Prolitic Inc. v. ScentAir, the relevant portions of the protective order stated as follows:

Material designated as CONFIDENTIAL or CONFIDENTIAL-ATTORNEYS’ EYES ONLY shall be used only in connection with this case, and for no other purpose.

* * *

Persons for a receiving party (including without limitation outside counsel and EXPERTS) who access “CONFIDENTIAL-ATTORNEYS’ EYES ONLY” materials of any producing party shall not, for the period of this action and extending two (2) years following final resolution of this action, draft, supervise, assist, or advise in drafting or amending patent claims or patent specifications, in the U.S., or abroad, related to scent diffusion products or other subject matter of the “CONFIDENTIAL-ATTORNEYS’ EYES ONLY” materials.

Id. at 3.

Soon after the Court entered the signed protective order, ScentAir filed a petition for inter partes review of the patents-in-suit. Prolitec (the patent owner) designated two of its litigation attorneys as counsel in the inter partes review. In response, ScentAir moved the court to enjoin Prolitec’s attorneys in the litigation from participating in the inter partes review, and (in the alternative) that they at least be prohibited from amending or adding claims. Prolitec also moved for clarification of the protective order to allow its litigation counsel to participate in the inter partes review.

In addressing the motions, the Court first concluded that the prosecution bar prevents Prolitec’s litigation attorneys from engaging in inter partes review, since “[i]t is undisputed that inter partes review may include amendment of patent claims.” Id. at 6. Next, the Court considered whether these attorneys should be exempt from the prosecution bar. In considering this issue, the Court considered In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373 (Fed. Cir. 2010). Though the case did not arise in the context of inter partes review, the Deutsche Bank court held that, once a moving party shows a need for a prosecution bar, the burden shifts to the party seeking relief from the bar to show:

(1) that the representation before the PTO does not and is not likely to implicate competitive decision making that would give rise to the improper use of confidential information gained in the course of the litigation; and

(2) that the potential injury to the party seeking relief from the bar outweighs the potential injury to the opposing party.

Prolitec, slip op. at 4-5 (citing Deutsche Bank, 605 F.3d at 1381).

Despite finding that Prolitec failed to meet factor (1), the court concluded that the potential harm to Prolitec would outweigh the potential harm to ScentAir if Prolitec’s litigation counsel could not participate in the inter partes review. Id. at 7-9. To address ScentAir’s concerns about violating the portion of the protective order expressly prohibiting “drafting or amending patent claims . . . related to scent diffusion products,” the court ruled that Prolitec’s litigation counsel could not add or amend claims in the inter partes review proceeding. Id. at 9.The Court also noted “[a]s a practical matter Prolitec may decide to substitute one of its prosecution attorneys for one of its litigation counsel in the PTO inter partes review, however, that is beyond the purview of this decision.” Id.