PPC Broadband, Inc. v. Times Fiber Communications, Inc.

Filing 34

DECISION & ORDER: Regarding the parties supplemental briefing (documents 28 through 32 ), it is ordered that the prosecution bar provision included in any protective order issued in this case will reflect PPC's proposal. Signed by Magistrate Judge David E. Peebles on 3/5/2014. (jmb)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF NEW YORK

PPC BROADBAND, INC., d/b/a PPC,
Plaintiff,

Civil Action No.
5:13-CV-0460 (GLS/DEP)

v.
TIMES FIBER COMMUNICATIONS,
INC.,
Defendant.

APPEARANCES:

OF COUNSEL:

FOR PLAINTIFF:
HISCOCK & BARCLAY, LLP
One Park Place
300 South State St.
Syracuse, NY 13202

DOUGLAS J. NASH, ESQ.
JOHN D. COOK, ESQ.
JASON C. HALPIN, ESQ.
MARK E. GALVEZ, ESQ.

FOR DEFENDANT:
BLANK ROME LLP
One Logan Square
Philadelphia, PA 19103

JOEL L. DION, ESQ.
CHARLES R. WOLFE, ESQ.

MENTER, RUDIN & TRIVILPIECE, P.C.
308 Maltbie St.
Suite 200
Syracuse, NY 13204

MITCHELL J. KATZ, ESQ.
TERESA M. BENNETT, ESQ.

DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE

DECISION AND ORDER
Currently pending before the court in this patent infringement action
is a dispute between the parties regarding a confidentiality order, and
specifically the scope of the prosecution bar to be included with the order.
Defendant Times Fiber Communications, Inc. ("Times Fiber"), seeks to
prohibit counsel for plaintiff PPC Broadband, Inc. ("PPC"), from
participating in any proceedings conducted before the Patent and
Trademark Office ("PTO") following the grant of a patent related to coaxial
cable connectors for the cable and telecommunications industries.
Plaintiff PPC argues that inclusion of such a provision is inappropriate and
prejudicial. For the reasons set forth below, I find that Times Fiber has
failed to satisfy its burden under Deutsche Bank Trust Co. Ams., 605 F.3d
1373 (Fed. Cir. 2010), and Rule 26(c) of the Federal Rules of Civil
Procedure to demonstrate entitlement to such a sweeping prosecution bar.
Accordingly, to the extent the parties include a prosecution bar in any
protective order in this case, that provision shall reflect PPC's proposal.
I.

RELEVANT BACKGROUND
This is a patent infringement suit between two competitors. In its

complaint, PPC accuses Times Fiber of infringing four patents relating to
the design of coaxial cable connectors. See generally Dkt. No. 1. Times
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Fiber has answered PPC's complaint, denying infringement and claiming
unenforceability of the patents in suit. See generally Dkt. No. 14. A
scheduling order has been issued requiring the submission of opening
claim construction briefs by March 11, 2014. Dkt. No. 25-1.
On January 16, 2014, the court held a telephone conference, at the
request of Times Fiber, to address the parties' disagreement concerning
the scope of the prosecution bar to be included in the protective order
governing this action. Text Minute Entry Dated Jan. 16, 2014. At the
court's direction, the parties submitted supplemental briefing regarding
their specific dispute. Dkt. Nos. 28-32.
PPC explains that, although it contends that a prosecution bar is not
necessary "since the nature of PPC's infringement claims concern existing
products that are publicly offered in the marketplace, . . . in an effort to
resolve the parties' dispute short of judicial intervention, [it] has worked
with Times Fiber to develop a prosecution bar that would be acceptable to
each party." Dkt. No. 28 at 1; see also Dkt. No. 31 at 1. With that in mind,
Times Fiber seeks to include the following provision in the protective
order:
Notwithstanding the foregoing, during the pendency
of this case, including any appeals, and for one year
after its conclusion, any Recipient who accesses
properly designated Highly Confidential –
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Prosecution Bar information shall not participate in,
aide in, advise, or counsel the drafting of claim
language in connection with preparation, filing
and/or prosecution of patent applications in any
country concerning the non-public, technical
features disclosed in the Highly Confidential –
Prosecution Bar information, including any
interference, reissue, reexamination or other
proceeding, related to coaxial cable connectors for
the cable and telecommunications industries. The
scope of this prosecution bar includes
continuations, continuations in part, divisionals,
reissues, or foreign counterparts of such patent
applications or patents that issue from such
applications.
Dkt. No. 28 at 2; Dkt. No. 29 at 2-3. PPC, on the other hand, has
countered with the following proposed language:
Notwithstanding the foregoing, during the pendency
of this case, including any appeals, and for one year
after its conclusion, any Recipient who accesses
properly designated Highly Confidential –
Prosecution Bar information shall not participate in,
aide in, advise, or counsel the drafting of claim
language in connection with the preparation, filing
and/or prosecution of patent applications in any
country concerning the non-public, technical product
features disclosed in the Highly Confidential –
Prosecution Bar information. The scope of this
prosecution bar includes continuations,
continuations in part, divisionals, reissues, or
interferences concerning such patent applications or
patents that issue from such applications, but does
not include ex parte reexaminations, post-grant
reviews, or inter partes reviews concerning patents
that issue from such applications.
Id.
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The only difference between the two proposals is the scope of the
participation of any recipient of information deemed "Highly Confidential –
Prosecution Bar" in certain post-grant proceedings before the PTO. Times
Fiber seeks to preclude any recipient of such information from participating
in ex parte reexaminations, post-grant reviews, or inter partes reviews,
while PPC seeks to exempt those proceedings from the prosecution bar.
The parties agree that "Highly Confidential – Prosecution Bar"
information will be defined as follows:
d)
'Highly Confidential – Prosecution Bar'
information is information that (i) concerns the
technical details of the design of future products
and/or modification of existing products (e.g.,
prototypes, descriptions, and/or drawings of such
products that, at the time of designation, have not
been offered for sale, sold, marketed or otherwise
made public); and (ii) cannot be determined based
on public information.
Dkt. No. 28-1 at 3.
II.

DISCUSSION
Both parties agree that, because In re Deutsche Bank Trust Co.

Ams., 605 F.3d 1373 (Fed. Cir. 2010), governs the inclusion and scope of
prosecution bars in protective orders, it also controls their current dispute. 1

1

As a general matter, the law of the relevant regional circuit normally applies to
matters involving interpretation and application of the Federal Rules of Civil Procedure.
Deutsche Bank, 605 F.3d at 1377. This specific issue, however, is controlled by

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Dkt. No. 28 at 3; Dkt. No. 29 at 2. As the party seeking the inclusion of "a
provision effecting a patent prosecution bar," Times Fiber "carries the
burden of showing good cause for its issuance." Deutsche Bank, 605 F.3d
at 1378.
Where litigation counsel in a patent action also participate in
proceedings before the PTO, the Federal Circuit has recognized the
difficulty of preserving confidentiality with "even the most rigorous efforts,"
as "it is very difficult for the human mind to compartmentalize and
selectively suppress information once learned." Deutsche Bank, 605 F.3d
at 1378 (quotation marks omitted). Because the risk of inadvertent
disclosure varies depending on an attorney's degree of involvement, a
court must examine all relevant facts on a "counsel-by-counsel" basis to
determine "the extent to which counsel is involved in 'competitive
decisionmaking' with its client." Id. The Federal Circuit has defined
competitive decisionmaking as
shorthand for a counsel's activities, association, and
relationship with a client that are such as to involve
counsel's advice and participation in any or all of the
client's decisions . . . made in light of similar or
corresponding information about a competitor.

Federal Circuit law in light of its implication upon patent law generally and the need to
provide uniformity in connection with the issue. Id. at 1378.

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Id. (quotation marks omitted). A determination of risk must then be
balanced against "the potential harm to the opposing party from
restrictions imposed on that party's right to have the benefit of counsel of
its choice." Id. at 1380.
Before issuing a prosecution bar, "a court must be satisfied that the
kind of information that will trigger the bar is relevant" to the proceedings
from which litigation counsel may be precluded. Deutsche Bank, 605 F.3d
at 1381. Relevant to this "threshold inquiry are factors such as the scope
of the activities prohibited by the bar, the duration of the bar, and the
definition of the subject matter covered by the bar." Id. The burden is on
the party seeking the imposition of a prosecution bar to show that the
terms of the bar "reasonably reflect the risk presented by the disclosure of
proprietary competitive information." Id.
In this case, as an initial matter, I find that the inclusion of a
prosecution bar is appropriate. Times Fiber, however, has not established
good cause to preclude PPC's counsel from participating both in litigation
and post-grant proceedings before the PTO. It is not enough to identify a
general risk that confidential information disclosed during litigation may
influence counsel's representation of a party before the PTO. See
Deutsche Bank, 605 F.3d at 1379 ("Indeed, denying access to a party's
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outside counsel on the ground that they also prosecute patents for that
party is the type of generalization [we have] counseled against . . . . The
facts, not the category[,] must inform the result."). Times Fiber merely
attempts to refute PPC's position that post-grant proceedings do not
generally enlarge the scope of patent claims by highlighting that "the
strategic surrendering of claim scope is also among the types of
competitive decision making that is properly protected by a prosecution
bar." Dkt. No. 29 at 3. Absent from Times Fiber's submission, however, is
a persuasive argument regarding how the Highly Confidential –
Prosecution Bar information in this particular case may affect or influence
counsel for PPC's representation in post-grant proceedings.
Even assuming, however, that Times Fiber could show a risk of
competitive use or inadvertent disclosure, that risk does not outweigh the
potential harm imposed to PPC by Times Fiber's proposed prosecution
bar. Counsel for PPC has represented to the court that it has a "long
standing relationship" with PPC. Dkt. No. 28 at 8. Moreover, the court is
aware that PPC's counsel represents PPC in several other actions
pending in this court and before the PTO. It would be unfairly prejudicial
to PPC to ask it to divide counsel into separate categories in light of the
scope of PPC's relationship with counsel.
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For all of these reasons, I find that PPC's proposed prosecution bar
provision is appropriate in this case.
III.

SUMMARY AND ORDER
The parties have sought court intervention with respect to the scope

of the prosecution bar provision to be included in the protective order
governing this case. Because I find that Times Fiber has not satisfied its
burden of demonstrating good cause for precluding PPC's litigation
counsel from reviewing Highly Confidential – Prosecution Bar information
and representing PPC before the PTO in post-grant proceedings, PPC's
proposed provision will be adopted and included in the protective order
that will govern this action. It is therefore hereby
ORDERED that the prosecution bar provision included in any
protective order issued in this case will reflect PPC's proposal.
Dated:

March 5, 2014
Syracuse, New York

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