The Software IP Report

Patent Litigation Protective Orders: Patent Prosecution Bars, Source Code

In a lawsuit where the plaintiff, Unwired Planet, had asserted 10 patents against Apple, the parties disagreed about the appropriate scope of a protective order. Unwired Planet, LLC v. Apple. Inc., No. 3:12-CV-00505-RCJ (VPC) (D. Nev. April 11, 2013). One disagreement concerned whether a patent prosecution bar should prevent the plaintiff’s litigation counsel from participating in reexamination proceedings so long as the litigation counsel did not draft or amend claims. The parties also disagreed concerning Unwired Planet’s ability to print Apple’s source code, and the manner in which it could include source code in court filings.

Patent Prosecution Bar

Concerning the patent prosecution bar, the parties had agreed “to a provision barring litigation counsel for either party from participating in the prosecution of patent applications related to ‘the functionality, operation, and design of the mobile applications relating to the technology disclosed in any of the patents-in-suit.’” However, Apple further argued that counsel who had accessed its highly confidential information, including source code, should be barred from any participation in (1) re-examination proceedings or (2) patent acquisition related to the foregoing functionality.

The magistrate judge agreed with the plaintiff Unwired Planet that the patent prosecution bar need not be applied wholesale to the plaintiff’s litigation counsel concerning reexamination proceedings. The court stated that “because reexamination is directed to alleged prior art, Apple’s confidential information will play no role.” Thus, the court thought to that extending in the protective order to reexaminations was not necessary to achieve the goal of a protective order in litigation. The court was also swayed by the plaintiff’s agreement “that its litigation counsel will not participate in amending of claims in the reexamination proceeding.”

As an editorial comment, Apple was plainly concerned that, if a reexam was initiated, litigation counsel would use knowledge obtained during discovery to amend claims or draft new claims to target Apple’s products. And indeed, one wonders how counsel, in possession of highly confidential information obtained during discovery, can “participate” in a reexamination in any way without influencing the claim scope sought, whether by amendment or arguments made in Office Action responses.

Source Code

The court did side with Apple in holding “that good cause exists to include in the protective order the bar that Unwired’s outside counsel cannot use the confidential information [e.g., source code] obtained in this lawsuit for the purpose of giving advice on patent acquisitions.” The court thought that a good balance was struck by allowing counsel who had obtained confidential information to participate in settlement discussions, but not to participate in patent acquisition efforts.

The court also largely agreed with Apple’s concerns about protecting its source code. The court ordered that Unwired Planet would be limited to printing 250 pages, and 30 continuous pages, of source code. This was more than Apple had requested, but nonetheless a limit that could not be exceeded before Unwired Planet met a requirement to meet and confer with Apple, and if necessary get leave of the court.

Similarly, the court agreed that Unwired Planet should provide Apple with notice before including source code in court filings. Unwired Planet asserted that this requirement would delay its ability to seek relief from the court. However, the court thought that it was appropriate to have a mechanism to allow Apple to promote its interest in protecting its source code, while at the same time allowing the parties to reach an agreement before involving the court.