In a recent Order, Judge Sue L. Robinson outlined the scope of a case’s prosecution bar. Versata Software, Inc, et al. v. Callidus Software, Inc., C.A. No. 12-931-SLR (D. Del. Mar. 12, 2014). The Court first pointed to the “growing proliferation of parallel proceedings” before federal courts and the PTO and the fact that “defendants can use any inconsistencies in position a plaintiff might take between the court and administrative proceedings,” but also to the fact that strategic amendment of claims or surrendering of claim scope can implicate competitive decision-making. Id. at 1-2.
The Court’s prosecution bar was “an effort to balance” these concerns, namely “a plaintiff’s need for coordination among its counsel” and “a defendant’s appropriate concern over the security of its proprietary information.” Id. at 2. The Court implemented a one-year bar forbidding any person (including attorneys, experts, consultants, and witnesses) who views the highly confidential source code of the defendant from participating in any patent application prosecution or post-grant review proceeding in the technology field of the patents-in-suit. Id. at 3. On the other hand, plaintiff was to designate one or more attorneys on its trial team to consult with counsel involved in administrative proceedings “in order to coordinate coherent and consistent positions in various proceedings.” Id. at 2. However, that person or persons would not review the highly confidential source code of defendant, take part in discussions regarding that source code, read any report regarding the source code, or attend/read depositions where the source code was mentioned. Id. at 2-3. Furthermore, the order obligated counsel of record to notify their firm colleagues and other related persons of the prosecution bar; once any of these people viewed the source code, the prosecution bar would apply to them as well. Id. at 3.
The Court also declined to extend this bar to include documents designated as “highly confidential – attorneys’ eyes only,” “given the liberal use of this designation in litigation.” Id. at 2 n.2. However, it noted that “if there are a small number of individual documents that defendant deems essential to its proprietary technology, the court will review them at defendant’s request.” Id.