Lack of History of Representation Before the Patent Office Favors Patent Prosecution Bar

March 3, 2025

Reading Time : 2 min

A District of Delaware judge recently granted a defendant’s motion to include a patent prosecution bar in its proposed protective order after determining that litigation counsel’s ability to practice before the Patent Office—without ever having represented the plaintiffs at the Patent Office in the past—weighed heavily in favor of the bar.

Plaintiffs filed suit in the District of Delaware alleging that defendant infringed patents related to LED technology. Shortly thereafter the parties began negotiating a protective order. Defendant sought to include a patent prosecution bar provision. Plaintiffs, however, disagreed and argued that a patent prosecution bar was unnecessary. After reaching an impasse, the parties submitted a joint letter to the court asking it to resolve their dispute over the inclusion of a prosecution bar in the protective order.

In making its determination, the court applied Federal Circuit precedent, which required a balancing test between the risks of inadvertent use or disclosure of proprietary information obtained during litigation and the potential harm to the opposing party from restrictions on its right to counsel of its choice. After balancing these factors, the court found that defendant had met its burden to show good cause for the issuance of a patent prosecution bar. The court first held that the risk of inadvertent use weighed in defendant’s favor, as plaintiffs had ongoing patent prosecution related to the patents-in-suit, including continuation applications that were pending at the Patent Office. The court also noted there was additional risk because many of plaintiffs’ outside counsel were qualified to practice before the Office, increasing the likelihood that they might be substantially involved in competitive decisionmaking in future patent prosecution matters. Finally, the court was not convinced that because the parties are not direct competitors, a prosecution bar was unnecessary. In rejecting that contention, the court noted that plaintiffs requested information from defendant about its supplier’s competing LED products, and thus there was a risk of possible inadvertent use of proprietary information.

Next, the court evaluated the potential harm to plaintiffs if a prosecution bar was imposed, and held that this factor weighed against the plaintiffs. While many of plaintiffs’ outside counsel were qualified to practice before the Office, to date, none of them had represented plaintiffs before the Office, suggesting that plaintiffs would be able to use other attorneys for their prosecution needs.

Finally, the court evaluated the scope of defendant’s proposed prosecution bar and determined that a two-year bar was appropriate. The court, however, required two revisions to the protective order to strike the proper balance between the parties’ competing interests: (1) the prosecution bar would be limited to those who accessed technical information, as opposed to any proprietary financial data or business information, and (2) plaintiffs would be able to request exemptions from the bar on a counsel-by-counsel basis.

Practice Tip: When a dispute arises regarding the inclusion of a prosecution bar under a protective order, the requesting party bears the burden of showing good cause, and should consider facts that show a risk of inadvertent use or disclosure of confidential information. Relevant considerations include the existence of any pending continuation applications related to the patents-in-suit and litigation counsel’s ability to practice before the Office. The opposing party should make clear to the court the specific harms it would suffer due to restrictions on its right to use counsel of its choice, especially if its counsel has not previously represented it before the Office.

 


Seoul Semiconductor Co. v. Technical Consumer Products, Inc., 1-24-cv-00579 (D. Del. Jan. 24, 2025) (J. Ranjan)

Share This Insight

Previous Entries

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.