Prism Technologies v. AT&T et al

Filing 304

ORDER granting 247 motion for protective order. Ordered by Senior Judge Lyle E. Strom. (JDR) Modified on 7/23/2014 (JDR) to reflect error in docketing entry.

IN THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES LLC,

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

This matter is before the Court on the motion of
defendant AT&T Mobility LLC (“AT&T”) for a protective order
pursuant to Federal Rule of Civil Procedure 26(c)(1)(G) (Filing
No. 247).

AT&T has filed a corresponding brief (Filing No. 248)

and index of evidence (Filing No. 249).

Plaintiff Prism

Technologies L.L.C. (“Prism”) has filed a brief (Filing No. 277)
in opposition to the motion.
Prism wishes to disclose to the Patent and Trademark
Office (“PTO”) commercial information that AT&T purportedly used
in its expert report.

Prism argues two points:

AT&T’s

information is not confidential and the law requires Prism to
disclose the information to the PTO.

AT&T maintains that public

disclosure of its trade secrets and business documents will cause
irreparable harm to its business.

I.

LAW
Rule 26 of the Federal Rules of Civil Procedure states:
A party . . . may move for a
protective order in the court where
the action is pending. . . . The
court may, for good cause, issue an
order to protect a party or person
from annoyance, embarrassment,
oppression, or undue burden or
expense, including . . . requiring
that a trade secret or other
confidential research, development,
or commercial information not be
revealed or be revealed only in a
specified way.

Fed. R. Civ. Pro. Rule 26.

AT&T bears the burden to demonstrate

good cause for issuance of the protective order.

See Vishay Dale

Electrs., Inc. v. Cyntec Co., Ltd., 8:07CV191, 2008 WL 4372765,
*3 (D. Neb. Sept. 22, 2008) (citing Miscellaneous Docket Matter
No. 1 v. Miscellaneous Docket Matter No. 2, 197 F.3d 922, 926
(8th Cir. 1999)).

A showing of good cause requires AT&T to make

“a particular and specific demonstration of fact, as
distinguished from stereotype and conclusory statements.”

Id.

(citing Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 n.16 (1981)).
For good cause to exist, “the parties seeking protection must
show that specific prejudice or harm will result if no protective
order is granted.”

Id. (citing Frideres v. Schiltz, 150 F.R.D.

153, 156 (S.D. Iowa 1993).

The Court must also consider the

relative hardship to Prism if the protective order is granted.
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Id. (citing Gen. Dynamics Corp. v. Selb Mfg. Co., 481 F.2d 1204,
1212 (8th Cir. 1973)).
Courts are guided by the “liberal federal principles
favoring disclosure, keeping in mind the need to safeguard
confidential information transmitted within the discovery process
from disclosures harmful to business interests.”

Id. (citing

BASF Corp. v. United States, 321 F. Supp. 2d 1373, 1378 (Ct.
Int'l Trade 2004).

“Courts dress technical information with a

heavy cloak of judicial protection because of the threat of
serious economic injury to the disclosure of scientific
information.”

Id. (citing Andrx Pharms., LLC v. GlaxoSmithKline,

PLC, 236 F.R.D. 583, 586 (S.D. Fla. 2006).

“The balance of

relative hardships includes an assessment of any substantial
detriment to a party caused by the inclusion or failure to
include the protection at issue.

Id. at *4 (citing U.S. Steel

Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984).
Section 1.56 of the Code of Federal Regulations (“CFR”)
places a duty on inventors, attorneys or agents, and those
substantially involved in the prosecution of an application to
deliver “all information known to that individual to be material
to patentability” to the PTO.

37 C.F.R. § 1.56(a), (c).

Section

1.56 also states that individuals other than the attorney, agent,

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or inventor “may comply with this section by disclosing
information to the attorney, agent, or inventor.”
§ 1.56(d).

Manual of Patent Examining Procedure (“MPEP”) Section

724 is largely based upon 37 C.F.R. § 1.56.
II.

37 C.F.R.

See MPEP § 724.

DISCUSSION
After reviewing the parties’ arguments and relevant

case law, the Court finds AT&T has met its burden for granting a
protective order.

In addition, the Court will address some of

Prism’s arguments.
Prism has a patent currently being considered at the
PTO; therefore Prism has a duty to disclose all known
information.

37 C.F.R. § 1.56(a), (c).

know AT&T’s trade secrets.

However, Prism does not

Filing No. 277 at 5.

Therefore,

Prism is not obligated to share AT&T’s confidential materials
because that information falls outside of Section 1.56.
Furthermore, Prism suffers no harm from the protective
order.

Inequitable conduct requires “[a] breach of the duty to

disclose [under 37 C.F.R. § 1.56] accompanied by an intent to
deceive. . . .”

Nisus Corp. v. Perma-Chink Sys., Inc., 421 F.

Supp. 2d 1084, 1102 (E.D. Tenn. 2006) (citing Li Second Family
Limited P'ship v. Toshiba Corp., 231 F.3d 1373, 1378 (Fed. Cir.
2000)).

Prism does not have a duty to disclose AT&T’s

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confidential information to the PTO and its opposition to this
motion evinces intent to disclose, not to deceive.

Accordingly,

IT IS ORDERED that the defendant’s motion (Filing No.
247) is granted.
DATED this 23rd day of July, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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