Intellectual Property > IP Newsflash > Prosecution Bar Imposed because the Risk of Inadvertent Disclosure was High, and Party Failed to Present Evidence that Bar Would Cause Harm
21 Apr '16

In granting defendant’s proposal regarding the scope of a prosecution bar, the court faulted plaintiff’s failure in developing a record to demonstrate the alleged harm it would suffer if it were denied counsel of its choice.

According to the Federal Circuit, a party seeking imposition of a patent prosecution bar must show that there is a risk that counsel involved in matters before the United States Patent and Trademark Office (PTO) may inadvertently use confidential information learned in litigation. The risk of inadvertent disclosure turns on the extent to which counsel is involved in “competitive decision-making” with its client. The court must then balance that risk against the potential harm that the party affected by the bar would face were it to be denied counsel of its choice.

In assessing the risk presented by inadvertent disclosure, the court found that the risk was high because the parties were major direct competitors, there was a history of plaintiff actively seeking claims directed to defendant’s newly launched products, and there were pending applications related to the asserted patents. Moreover, the court noted that plaintiff had identified its in-house counsel as an individual who may access defendant’s confidential information in the litigation and, according to his online profile, was involved in “patent portfolio management and strategic counseling . . . prosecution . . . and litigation,” and was “a member of [plaintiff’s] patent review, and management boards, and is responsible for developing and executing strategies to grow and enforce worldwide IP portfolios.”

In evaluating the potential for harm to plaintiff, the court stated that it would consider the extent and duration of counsel’s past history in representing the client before the PTO, the degree of the client’s reliance and dependence on that past history, and the potential difficulty the client might face if forced to rely on other counsel for the pending litigation or engage other counsel to represent it before the PTO. The court, however, noted that plaintiff’s initial submission consisted solely of bald assertions with no factual support, such as the identities of the in-house attorneys, their roles in the litigation and prosecution, and whether other in-house counsel could take any of these responsibilities to accommodate the bar. The court therefore concluded that, given the risk of inadvertent disclosure, the lack of a record as to specific harm to plaintiff necessitated a finding in favor of adopting defendant’s proposed prosecution bar.

Boston Scientific Corp. v. Cook Group Inc., 1-15-cv-00980 (D. Del. April 18, 2016, Order)(Burke, Mag.).