Judge Griesa finds a patent prosecution bar does not preclude litigation counsel from assisting in an IPR, and would have reached the same conclusion even if the protective order explicitly barred such assistance.

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al.

Case Number: 1:12-cv-08060

Patentee Endo asked the court to rule that the protective orders in the patent infringement cases it filed against various defendants do not preclude its litigation counsel from assisting its IPR counsel with a PTAB action instituted on the patent-in-suit. The protective orders bar litigation counsel from becoming “involved in patent prosecution of patent applications,” participating “in any drafting or amendment of claims or claim language in any patent office proceeding relating to oxymorphone,” and also limit the use of confidential information learned during litigation.  Defendants argued that the bar should apply to litigation counsel “so long as Endo has the right to amend or draft claims.”

The court decided that litigation counsel may participate in the IPR, subject to two restrictions:

  • Litigation counsel may not amend, draft, or consult with Endo or its IPR counsel regarding amendment of its patent claims
  • Litigation counsel may not share with the IPR counsel any information designated confidential under any of the protective orders in the related cases or any information about defendants’ Abbreviated New Drug Application products. 

In reaching that conclusion, the court found that IPRs are not patent prosecutions. In support, the court cited a PTAB decision for the proposition that an IPR proceeding is “neither a patent examination nor a patent reexamination. Rather, it is a trial, adjudicatory in nature and constitutes litigation.”  Google Inc. v. Jongerius Panoramic Techs., LLC, Case No. IPR2013-00191, Paper No. 50, at 4. (PTAB Feb. 13, 2014) (granting pro hac vice admission at the PTAB to litigation counsel, despite presence of a protective order in related litigation that barred counsel from “prosection activity.”).

[Link to Google v Jongerius IPR2013-00191 Paper 50.pdf]

The court went further, though, and said that “even if the protective orders did bar [litigation counsel] from participating in the inter partes review proceedings, the court would make an exception based on the facts of these cases.” (Emphasis added.) The court pointed to In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1381 (Fed Cir. 2010), which it said requires courts considering patent prosecution bars to weigh whether “competitive decisionmaking related to the subject matter of the litigation” would be implicated and to compare potential injury to the two sides.
With respect to competitive decisionmaking, the court said that litigation counsel’s role would be limited to questions of obviousness and prior art, which, it said, are not competitive decisionmaking. With respect to potential injury, the court concluded that the limits imposed on litigation counsel by the instant order and by the protective orders protected defendants adequately; further, the court said that the potential injury to Endo was high: “Forcing [IPR counsel] to prepare from scratch the defense that [litigation counsel] has already prepared would be a waste of time and resources.”

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