• ALJ Gildea Denies Motion for a Patent Prosecution Bar in Certain Equipment for Communications Networks (337-TA-778)
  • December 14, 2011 | Authors: Lisa M. Mandrusiak; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On December 9, 2011, ALJ E. James Gildea issued Order No. 14 denying Respondents’ motion to amend the Protective Order by adding a prosecution bar in Certain Equipment for Communications Networks, including Switches, Routers, Gateways, Bridges, Wireless Access Points, Cable Modems, IP Phones, and Products Containing Same (Inv. No. 337-TA-778).

    By way of background, the Complainant in this investigation is MOSAID Technologies Inc. and the Respondents are Cisco Systems, Inc., Cisco Consumer Products LLC, Cisco Systems International B.V., and Scientific Atlanta LLC.

    According to the Order, Respondents asserted that a two-year patent prosecution bar on Complainant’s outside counsel and experts who have access to Respondents’ confidential business information is necessary, relying on In re Deutsche Bank Trust Co Americas, 605 F.3d 1373 (Fed. Cir. 2010) (“Deutsche Bank”).  Complainant opposed the motion, arguing that the motion was untimely and that the Respondents failed to show the requisite good cause.

    ALJ Gildea provided a detailed discussion of Deutsche Bank, and determined that this case requires the following before a patent prosecution bar should be entered: (1) the information triggering the bar is confidential and relevant to patent prosecution (i.e., it is of a confidential technical nature, rather than confidential financial or public data); (2) a particular person having access to the information is involved in competitive decision making (i.e., requiring a case by case evaluation of counsel to determine their role in “crafting the content of patent applications or advising clients on the direction to take their portfolios”), and (3) the risk of inadvertent disclosure by that person outweighs the burden a prosecution bar would impose on that individual.

    ALJ Gildea disagreed with Respondents’ interpretation of Deutsche Bank.  Specifically, ALJ Gildea determined that Respondents’ argument that the “case by case evaluation of counsel only applies in the instance of whether an exemption to a prosecution bar should apply” disregards a key holding in Deutsche Bank and was unpersuasive.  As such, Respondents “failed to set forth the requisite case by case showing for those individuals they seek to have barred from engaging in patent prosecution” and ALJ Gildea denied Respondents’ request for a prosecution bar without prejudice.  Since the threshold showing was not met by Respondents, ALJ Gildea did not discuss the Complainant’s timeliness arguments, but urged Respondents to consider this issue when deciding whether to re-file their motion.