Special Master Lukoff issues rulings related to protective order

In a series of related cases (e.g., Inventor Holdings, LLC v. Wal-Mart Stores, Inc., C.A. No. 13-096-GMS (D. Del. Aug. 27, 2014)), Special Master Paul M. Lukoff issued an opinion relating to a number of protective order disputes.  The parties had disagreements over: “the scope of the prosecution bar, the use of laptop computers by plaintiff’s attorneys and experts in the stand-alone computer access facility and the extent to which the plaintiff can obtain hard copies of source code pages.”  Id. at 2.

As to the (bilateral) prosecution bar, the plaintiff wanted its litigation counsel to be able to “consult with [prosecution counsel]” in re-examination, inter partes review and covered business method review, “explaining that coordination is necessary to avoid taking inconsistent positions.”  Id. at 3.  The Special Master, relying on recent case law regarding prosecution bars in this District (Versata Software, Inc. v. Callidus Software, Inc.), concluded that the risk of inadvertent disclosure merited a “limited prosecution bar exemption similar to the one noted above in Versata,” where litigation counsel would not be allowed to consult with prosecution counsel if they reviewed source code in the litigation.  Id. at 4.  The Special Master observed that, since plaintiff’s litigation team may soon grow from three to five attorneys, it appeared that plaintiff would be able to “implement a response to the potentially irreconcilable situation created by access to source code on one hand and possible proceedings at the PTO on the other.”  Id. at 5.  The Special Master further decided that 1) the duration of this bar would be two years and 2) the subject matter of the bar would be “the broad subject matter of the patent-in-suit,” as defendant requested, because “[e]specially as a non-practicing entity, the risk is that the ambitions of the plaintiff are quite broad in terms of the reach of the technology they own.”  Id.

Regarding the laptop computer issue, plaintiff requested laptop computers when accessing source code to facilitate note-taking.  The parties had already agreed that no mobile phones would be allowed and that the source code would only be available at a stand-alone computer.  The Special Master pointed out that “the plaintiff, having already agreed to create a fairly impervious environment . . . has already conceded that any device that could undermine that environment would jeopardize the integrity” of the confidential information.  Id. at 6Under these circumstances the Special Master explained that a laptop computer, even if lacking a camera or unable to transmit information from the stand-alone computer, would not qualify as acceptable.  Id.  Therefore, plaintiff’s notes would have to be hand-written.

Finally, regarding printing source code, plaintiff wanted to print 1,000 pages aggregate total, while defendants requested a limit of 250 pages aggregate total.  The Special Master observed that the parties had yet to make all exchanges contemplated by Paragraph 4 of the District’s Default Standard for Discovery, and in light of “this state of incomplete discovery, we are probably not at a point yet where we know enough to establish the appropriate boundaries for ‘excessive’ printing.”  Id. at 8.  Therefore, the Special Master deferred decision on this issue, directing the plaintiff to apply to the Special Master if necessary and to note page numbers that “had the present ‘excessive’ threshold not been extant, they would have requested to be printed, so that those pages . . . can indeed be printed in the event the Court permits such.”  Id. at 8.

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