Court declines to include reexamination bar provision in protective order
Xerox Corporation v. Google, Inc., et al., C. A. No.10-136-JJF-MPT, September 8, 2010.
Thynge, M. J. Plaintiff’s proposed language for inclusion in a protective order is adopted; defendant’s proposed reexamination bar provision is declined.
The parties dispute whether the protective order should bar plaintiff’s trial counsel with exposure to defendants’ confidential information from participation in amendment of plaintiff’s patents on reexamination. The court recognizes the competing interests but concludes that plaintiff should not be denied the advice of its trial counsel in amending claims on reexamination. The court notes that claims can not be broadened but only narrowed during reexam. The Court further notes that the parties have agreed that confidential information disclosed may only be used for the purpose of the litigation. The risk of inadvertent or competitive use of confidential information in evaluating potential amendments is outweighed by the potential harm in denying plaintiff the full benefit of its trial counsel’s advice.
