IP Newsflash

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.