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Federal Circuit Cites Article by Fulwider Patton LLP Attorneys James Juo and David Pitman In Precedent-Setting Opinion

A law review article by Fulwider Patton LLP attorneys James Juo and David J. Pitman, has been cited by the Court of Appeals for the Federal Circuit in In re Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC, Misc. Dkt. No. 920, slip opn. (Fed. Cir. May 27, 2010). This precedent-setting decision addresses the standards for applying a patent prosecution bar as part of a protective order in patent litigation. Characterizing this question as "an important issue of first impression," the Federal Circuit addressed the divergent views that had developed in the district courts regarding whether and to what extent patent prosecution activities should be a basis for denying patent counsel access to an opposing party's confidential information during discovery. The Federal Circuit cited Juo & Pitman's "A Prosecution Bar in Patent Litigation Should be the Exception Rather Than the Rule," 15 Va. J.L. & Tech. 43 (2010), as "containing a comprehensive collection of the two lines of trial court decisions."

The Federal Circuit then rejected the line of trial court decisions which had suggested that patent prosecution was inherently a form competitive decisionmaking. Rather, the disclosing party seeking a patent prosecution bar must show that the information subject to the bar, the scope of activities to be prohibited by the bar, and the duration of the bar, reasonably reflects the risk presented by the inadvertent disclosure of proprietary competitive information learned during the litigation.

Even if the disclosing party is able to make this showing, the court must still balance the prejudice to the receiving party in restricting its choice of litigation and prosecution counsel against the potential injury to the disclosing from inadvertent use of confidential information. The Federal Circuit acknowledged that this is a difficult balancing act because "the factors that make an attorney so valuable to a party's prosecution interests are often the very factors that subject him to the risk of inadvertent use or disclosure of proprietary competitive information acquired during litigation." Furthermore, this balancing test is to be conducted on a counsel-by-counsel basis, which would include an analysis of the actual duties of patent prosecution counsel for the receiving party because generalized concerns about inadvertent disclosure and patent prosecution are insufficient to support a patent prosecution bar.

The case was remanded to the district court to further develop the evidentiary record regarding the nature and extent of the patent counsel's prosecution duties, in order to assess whether patent counsel's role in prosecution for the receiving party constituted competitive decisionmaking, and, if so, to then perform the requisite balancing analysis for a patent prosecution bar.

Mr. Juo is a former patent examiner whose practice focuses on litigation and prosecution of patent and trademark matters. Mr. Pitman is a professional engineer, now a partner at Fulwider Patton LLP. Both have litigated intellectual property cases in the district courts and in the Federal Circuit.

The law firm of Fulwider Patton LLP is widely recognized and respected for its focus on intellectual property law. The firm's attorneys are committed to the protection of their client's innovations involving patents, trademarks, copyrights, trade secrets and other forms of intellectual property. In addition to their legal credentials, many Fulwider Patton LLP attorneys have engineering and science backgrounds and a high level of scholarship and work experience in industry.