Xerox Corporation v. Google Inc. et al
Letter to The Honorable Mary Pat Thynge from Jeremy A. Tigan regarding proposed reexamination bar (responding to 74 Letter). (Tigan, Jeremy) Modified on 8/30/2010 (nms).
MORRIS. NICHOLS, ARSHT & TUNNELL LLP 1201 NORTH MARKET STREET P.O. Box 1347 WILMINGTON, DELAWARE 19899-1347 (302) 658-9200 (302) 658-3989 FAX JEREMY A. lICAN (302) 351-9106 (302) 425-3096 FAX firstname.lastname@example.org August 27,2010 The Honorable Mary Pat Thynge United States District Court 844 N. King Street Wilmington, Delaware 19801 Re: BY ELECTRONIC FILING Xerox Corp. v. Google. Inc .. et al., C.A. No. 10-136-LPS-MPT Dear Magistrate Judge Thynge: Defendants submit this letter in response to the letter submitted by Andrew C. Mayo on behalf of Plaintiff Xerox on August 24, 2010, D.l. 74, and pursuant to the Court's request for supplemental briefing concerning whether the "prosecution bar" to be imposed in this case should preclude Xerox counsel who have reviewed Defendants' confidential information from involvement in the amendment or drafting of claims in connection with reexamination proceedings concerning the patents-in-suit. The Court asked the parties to address in particular (1) the risks to Defendants to be addressed by Defendants' proposed prosecution bar, and (2) the harm that would flow to Xerox as a result of the provision's restrictions on activities of Xerox's counsel. As for risk to Defendants, Xerox acknowledges that it intends for its counsel who have reviewed Defendants' confidential information to consult with separate re-exam counsel regarding amendment of claims or drafting of new claims during reexamination of the patents-in-suit, and to use Defendants' confidential information in connection therewith. Xerox's assertion that this would be proper is a radical one that would astonish most patent litigators. It has no support whatsoever in any of Xerox's cited authority, and is in fact antithetical to the universally understood rule that confidential material produced under a protective order may be used only for the litigation in which it is produced. In contrast to the great risk of harm faced by Defendants, any "harm" to Xerox posed by Defendants' proposal is minimal. Unlike commonly advanced proposals that would preclude a patentee's trial counsel from any involvement in reexamination proceedings related to patents-insuit, Defendants' proposal is narrowly tailored (1) to target precisely the most significant risk of misuse of confidential information that is presented in a reexamination proceeding-i.e. that such information will be used by the patentee to prepare new or amended claims intended to cover confidential features of Defendants' accused products - and (2) to minimize any resultant prejudice to Xerox by allowing Xerox the full assistance of its trial counsel in pursuing its primary interest in the re-examination proceedings - i.e. the defense of the validity of Xerox's existing claims. The Honorable Mary Pat Thynge August 27,2010 Page 2 The risk of misuse of Defendants' confidential information created by Xerox's proposed consultation between trial and reexam counsel significantly outweighs any prejudice to Xerox that would flow from prohibiting such consultation,justifying adoption of Defendants' proposed form of prosecution bar. Xerox Admits It Intends To Use Defendants' Confidential Information For The Reexamination. Xerox conspicuously declines to promise that it will not "use" (as opposed to "disclose") Defendants' confidential information when its trial counsel consults with its reexamination counsel regarding claim amendment or drafting. Xerox's assertion is instead that Xerox's trial counsel should be permitted to use Defendants' confidential information in such consultations. See, e.g., D.L 70 at 1-2 ("If Defendants' information is used ... there is nothing wrong with that. ... It is not a misuse of a party's information.") (emphasis in original). No such proposition has been advanced or squarely considered in any of the decisions we have reviewed concerning application of prosecution bars to reexamination proceedings. l For example, Xerox's position certainly was not endorsed by the court in the Document Generation case, which expressly relied on the protections afforded by a conventional use restriction. See Document Generation Corp. v. Allscripts, LLC, 2009 U.S. Dist. LEXIS 52874, at *9-10 (E.D. Tex. June 23, 2009). And no such assertion was endorsed by Judge Robinson in her decision in Kenexa. Nor was any such assertion at issue before Judge Jordan in Amberwave, where the patentee's litigation counsel acknowledged up front that "[w]e obviously recognize that we're not going to participate in anything relating to the amendment of claims." D.I. 69, Ex. A at 5:5-7. Moreover, Xerox's assertion that its trial counsel should be free to use Defendants' confidential information when consulting with re-exam counsel concerning claim drafting renders meaningless any commitment not to "disclose" such information to re-exam counsel. It makes no difference whether the use of Defendants' confidential information to shape claims in ree x a m i n a t i o n is accomplished indirectly by Xerox's trial counsel through consultation with re-exam counsel, or directly by re-exam counsel to whom such information has actually been disclosed. In either case, Xerox will have exploited Defendants' confidential information, obtained by force of law in this litigation, to secure patent rights tailored for future use against Defendants outside of this litigation. Xerox Cannot Justify Using Defendants' Confidential Information in Reexamination. Xerox's unusual assertion that such use of Defendants' confidential information would not be improper rests on two false premises: (1) that Defendants' interest in preventing such use is Most of these cases address the concern that "[i]t is very difficult for the human mind to compartmentalize and selectively suppress information once learned, no matter how welli n t e n t i o n e d the effort may be to do so." In re Deutsche Bank Trust Companies, 605 F.3d 1373, 1378 (Fed. Cir. 2010) (quoting FTC v. Exxon Corp., 636 F.2d 1336, 1350 (D.C. Cir. 1980)). This is not at issue here as Xerox has made clear it will not even attempt to suppress the confidential information it has learned for purposes beyond the litigation. The Honorable Mary Pat Thynge August 27,2010 Page 3 either illegitimate or de minimis because claims in reexamination can only be narrowed and not broadened; and (2) that the general use restriction to which Xerox has agreed2 should not be deemed to prohibit such use because reexamination is merely a part of the litigation. We explain below why these premises are false. The risk of harm to Defendants from use of their confidential information in narrowing claims is just as pronounced as the risk from use in connection with broadening claims. That new or amended claims prepared in reexamination proceedings must be narrower than predecessor claims in no way diminishes Defendants' legitimate interest in ensuring that claim preparation is not informed by Defendants' confidential information. In Deutsche Bank, the Federal Circuit specifically noted that the interest in preventing misuse or disclosure of confidential information that underlies a prosecution bar has heightened relevance when the confidential information is possessed by attorneys involved in "strategically amending or surrendering claim scope during prosecution," such that attorneys involved in these activities "would not likely be properly exempted from a patent prosecution bar." 603 F.3d at 1380 (emphasis added). Use of Defendants' confidential information to prepare and obtain a new or amended patent claim that might be asserted by Xerox against confidential aspects of Defendants' products more effectively than an original claim, or a new claim prepared without knowledge of such confidential information, is simply the exploitation of Defendants' confidential information outside this litigation. This type of use to obtain a benefit for Xerox at Defendants' expense is precisely what a protective order is supposed to guard against. And despite Xerox's suggestion to the contrary (p. 2), this risk applies every bit as much to the confidential documents regarding Defendants' existing products that have been produ