Dummen NA, Inc. v. Proven Winners North America, LLC, et al

Filing 61

OPINION AND ORDER Denying 57 Emergency Motion for Leave to Permit Litigation Counsel to Participate in Reissue Proceedings. Signed by Magistrate Judge Elizabeth Preston Deavers on 11/21/2018. (sln)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

DUMMEN NA, INC.,
Plaintiff,
Civil Action 2:16-cv-00709
Judge Michael H. Watson
Magistrate Judge Elizabeth P. Deavers

v.

PROVEN WINNERS
NORTH AMERICA, LLC, et al.,
Defendants.

OPINION AND ORDER
This matter is before the Court on Defendants’ Proven Winners North America, LLC and
Plant 21, LLC (collectively, “Defendants”) Emergency Motion for Leave to Permit Litigation
Counsel to Participate in Reissue Proceedings (ECF No. 57), Plaintiff Dummen NA, Inc.’s
Response in Opposition (ECF No. 59), and Defendants’ Reply (ECF No. 60). For the following
reasons, Defendants’ Motion is DENIED.
I. BACKGROUND
Plaintiff filed this action on July 20, 2016 for declaratory judgment of invalidity and noninfringement of a United States patent pursuant to the Declaratory Judgment Act, 28 U.S.C. §§
2201-2202, and the United States Patent Law, 35 U.S.C. § 1 et seq. (Compl., ECF No. 1.)
Plaintiff seeks a declaration that U.S. Patent No. 9,313,959 (“‘959 Patent”) is invalid and not
infringed by certain flowering plants it sells. Plaintiff is a corporation organized under the laws
of the State of California and having its principal place of business in Ohio. (Id. at ¶ 2.)

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Defendant Plant21, LLC is a California limited liability company with its principal place of
business in California. (Id. at ¶ 4.) Defendant Proven Winners North America, LLC is also a
California limited liability company having its principal place of business in California. (Id. at ¶
6.) Defendant Plant 21, LLC is the owner of the ‘959 Patent. (Id. at ¶ 5.) Defendant Proven
Winners North America, LLC is a licensee of the ‘959 Patent. (ECF No. 17 at ¶ 7.)
The ‘959 patent is the subject of the instant action, as well as the subject of a reissue
proceeding at the United States Patent and Trademark Office (“PTO”). (Defendants’ Motion,
ECF No. 57, at p. 3.) Here, Defendants seek leave from the Default Protective Order in this case
to allow Defendants’ litigation counsel, Thompson Hine LLP, to participate in the concurrent
reissue proceeding before the PTO. Defendants seek to permit its litigation counsel to coordinate
with its patent prosecution counsel, Pilloff & Passino LLP. Defendants, therefore, move to set
aside the Default Protective Order that prohibits Thompson Hine from participating in the reissue
proceedings before the PTO. Defendants contend that participation of its litigation attorneys in
at the PTO is necessary to ensure that their prosecution counsel do not submit arguments or
evidence in the reissue proceeding that would undermine their litigation strategy or otherwise
prejudice them in this litigation. (Id.)
II. STANDARD
The Local Patent Rules for the United States District Court for the Southern District of
Ohio provide a Default Protective Order for patent infringement cases. Rule 102.2 provides that
“[t]he Default Protective Order . . . automatically governs the productions of any documents or
information in a Patent Case unless the Court enters an alternative Protective Order.” S.D. Ohio
Pat. R. 102.2. Paragraph 2.2(a) of the Default Protective Order provides, in pertinent part, that
information designated “Highly Confidential Attorney Eyes Only” (“AEO”) may be disclosed

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only to “outside attorneys of record . . . provided that such does not include any persons
participating in the prosecution of any present or future patent application (including the
reexamination or reissue of any present or future patent) that is a counterpart to or related to the
patents-in-suit. . . .”1
Rule 1.2(b) explains more fully:
A party may designate as “HIGHLY CONFIDENTIAL – ATTORNEY EYES
ONLY” such materials as the party reasonably and in good faith believes to contain
particularly sensitive technical information relating to research for and production
of current products; technical, business, and research information regarding future
products; non-public and highly sensitive financial information; marketing and
sales information, such as marketing plans and forecasts, customer lists, pricing
data, cost data, customer orders, and customer quotations; any pending or
abandoned patent applications, foreign or domestic; and such other documents,
information, or materials that relate to other proprietary information that the
designating party reasonably believes is of such nature and character that disclosure
of such information would be harmful to the designating party.
Rule 1.3 lists types of information that should not be designated or protected under the Default
Protective Order.
District courts have the power to modify protective orders. In re Upjohn Co. Antibiotic
Cleocin Products Liab. Litig., 664 F.2d 114, 118 (6th Cir. 1981) (“Clearly, the power of a district
judge includes the power to modify a protective order.” (citations omitted)). Here, Defendants
seek modification of the Default Protective Order. Under these circumstances, the party seeking
the modification must show good cause for the modifications sought. See, e.g., Info-Hold, Inc. v.
Muzak Hldgs LLC, No. 1:11-cv-283, 2012 WL 3061024, at *3 (S.D. Ohio July 26, 2012)
(citations omitted); (“The party who seeks to modify [the] protective order has the burden of

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This type of patent protective order provision is commonly referred to as a “patent
prosecution bar.” See Am. Jur. 2d Patents § 768 (“A patent prosecution bar precludes all persons
who had access to the opponent’s confidential information produced for trial from working on
the patent prosecution on that subject matter.”).
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establishing good cause for the modification.”); cf. In re Southeastern Milk Antitrust Litig., 666
F.Supp.2d 908, 914 (E.D. Tenn. 2009) (“The party seeking modification of the protective order
has the burden of establishing cause for the modification.”); Hochstein v. Microsoft Corp., No.
04-73071, 2008 WL 4387594, at *2 (E.D. Mich. Sept. 24, 2008) (“It is also within the district
court’s authority to modify the protective order upon a showing of good cause.”).
III. ANALYSIS
Defendants contend their request will not harm Plaintiff in any way because (1)
confidential information disclosed by Plaintiff to Defendants’ litigation counsel in discovery is
not relevant to the issues in the reissue proceeding; (2) litigation counsel will not use or reveal
any of Plaintiff’s confidential information in the reissue proceeding; (3) the claims of the reissue
application have not been and cannot be broadened to target Plaintiff; and (4) litigation counsel
has promised in writing that if any new claims are added to the reissue application, those claims
will never be asserted against Plaintiff. (Def’s Motion, ECF No. 57, at p. 3-4.)
Defendants aver that in this litigation, Plaintiff has served contentions that include
substantially the same arguments raised by the PTO in the reissue proceeding. (Declaration of
Jeff Metzcar at ¶ 10 [“Metzcar Decl.”].) As such, Defendants suggest that their litigation counsel
will be responding to the same invalidity arguments that their prosecution counsel is expected to
address first on December 10, 2018 in the reissue proceeding.2 Litigation counsel for Defendants
acknowledge that they have been exposed to confidential information that Plaintiff produced
during this litigation. (Id. at ¶.) At this juncture, however, Defendants represent that no AEO
information has been shared with their prosecution counsel. (Id. at ¶ 12.)

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This impending deadline is the reason Defendants filed their Motion as an “Emergency
Motion” and requested expedited briefing. (Defendants’ Motion, ECF No. 57, at p. 1-2.)
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Plaintiff asserts that permitting Defendants’ litigation counsel to work with their
prosecution counsel presents problems despite Defendants’ promises. Plaintiff posits that
Defendants’ litigation counsel could “inadvertently” or “even subconsciously” reveal Plaintiff’s
confidential information, which would unmistakably prejudice it. (Plaintiff’s Response, ECF
No. 59, at p. 5-6.) Defendants counter, however, that Plaintiff will not be prejudiced because
they cannot broaden their claims before the PTO by using any confidential information, or
otherwise. Defendants note that even if they wanted to broaden the claims they would be
prohibited by 35 U.S.C. § 251(d). Under this statute, the window of opportunity to request a
broadening reissue is two years, and two years has already passed since the grant of the ‘959
patent. (Metzcar Decl. at ¶ 6.)
Defendants chiefly contend that they are prejudiced by having to have two sets of counsel
where there is no reasonable risk that AEO information will be used to prepare new claims. In
particular, Defendant maintain that since “[t]he claims in the reissue proceeding are currently
identical to the claims of the asserted ‘959 patent and, by rule, cannot be broadened because the
two-year window of opportunity to request a broadening reissue has passed[,]” the reissue
proceeding at hand is “materially the same as a reexamination proceeding” because “in both
proceedings the claims can be amended to overcome objections but cannot be broadened.”3
(Def’s Motion, ECF No. 57, at p. 6.) Based on this analogy, Defendants cite to a handful of
cases for the proposition that because claims in a reexamination proceeding cannot be broadened,
the harm of requiring a patent holder to retain separate litigation and reexamination counsel

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In their Motion, the Defendants cite 35 U.S.C. § 305, which provides that “[n]o
proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in
a reexamination proceeding.” (Defendants’ Motion, ECF No. 57, at p. 6.)
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outweighs the risk of allowing litigation counsel who have had access to confidential AEO
materials, to participate in the reexamination. (Id. at 6-7.)
A closer review of the cases cited by Defendants reveal that none supports their position
that litigation counsel should be permitted to participate in a reissue proceeding to prevent
prosecution counsel from making arguments that are harmful to an underlying infringement
action. All of the cited cases deal with an essentially different procedure, namely reexamination
proceedings.
Defendants first cite to Xerox Corp. v. Google, Inc., 270 F.R.D. 182 (D. Del. 2010). In
Xerox, which involved a reexamination proceeding, the court denied the defendants’ motion to
include patent prosecution bar in an existing protective order. The court held that the plaintiff
should not be denied the advice of its trial counsel in amending claims on reexamination. Id. at
183. Defendants use this case to support the proposition that “because the claims in a
reexamination proceeding cannot be broadened, the harm of requiring a patent holder to retain
separate litigation and reexamination counsel outweighs the risk of allowing litigation counsel to
participate in the reexamination.” (Def’s Motion, ECF No. 57, at p. 8.)
Xerox, however, is distinguishable. In permitting the plaintiff to use its trial counsel, the
court found that the “potential harm in denying plaintiff reexamination counsel of its choice”
who had expertise about the patents-at-issue and “[f]orcing plaintiff to rely on less
knowledgeable counsel during reexamination would thus increase costs and duplicate effort.”
Xerox, 270 F.R.D. at 185. Here, Defendants never claim that their litigation counsel is
particularly knowledge about the patents-in-suit. Rather, Defendants assert that their litigation
counsel simply is most knowledgeable about this specific litigation and need to coordinate at the
PTO so that the “prosecution counsel does not submit arguments or evidence in the reissue

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proceeding” that could undermine its ability to prove infringement or argue for the validity of the
‘959 patent in this litigation. (Def’s Motion, ECF No. 57, at p. 3.)
Defendants’ reliance on Sanders v. Mosaic Co., No. 09-00016-CV-W-JTM, 2012 WL
640159 (W.D. Mo. Feb. 27, 2012) is similarly misplaced. There, the court found against
imposing a prosecution bar to cover reexamination proceedings noting that access to other
party’s confidential information is not valuable in reexamination proceedings because of the
limited nature of reexamination versus initial patent application proceedings. Id. at *3-*4. But,
Sanders too concerned a reexamination proceeding brought by the defenants rather than a reissue
proceeding. Id. at *1.
Hochstein v. Microsoft Corp., No. 04-73071, 2008 WL 4387594 (E.D. Mich. Sept. 24,
2008) lends no support to Defendants’ cause. Again, this case involves a reexamination
proceeding. It came before the Michigan court on an Emergency Motion for leave to permit a
party’s litigation counsel to participate in reexamination proceedings. Id. at *2. In Hochstein,
however, litigation counsel had years of experience with the case and the prior art “and it would
be impossible for another attorney to rise to their level of expertise without assistance.” Id. at *2.
The court also based its decision on the fact that allowing litigation counsel to participate in the
reexamination proceedings would significantly lessen the financial burden on the client. In this
case, Defendants have made no claim that their litigation counsel are especially well-suited to
handle the reissue proceeding or can convey special knowledge to prosecution counsel.
Moreover, Defendants have not asserted that permitting litigation counsel to participate in the
reissue proceedings would reduce its legal fees. Instead, Defendants’ legal fees would increase
significantly.

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Defendants cite to another reexamination proceeding in support of the same proposition,
NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F. Supp. 2d 1040 (D. Ariz. 2011). The
court in NeXedge declined to impose a patent prosecution bar because the prior art had been
identified publicly thereby ameliorating concerns about exchanging confidential information.
Further, the parties were not business competitors. Id. at 1044. Here, by contrast, Plaintiff and
Defendants are business competitors and Plaintiff has a significant interest in protecting its
confidential information.
The final reexamination proceeding case that Defendants cite to support the proposition is
Edisync Sys., LLC v. Adobe Sys. Inc., No. 12-CV-02231-MSK-MEH, 2013 WL 561474 (D.
Colo. Feb. 13, 2013). In that case, the court found that the prosecution bar should not extend to
the reexamination because the defendant only put forward “general possibilities” and did not
identify “any specific way in which these possibilities will materialize into prejudice in this
case.” Id. at *2. In this case, Plaintiff puts forth specific concerns that Defendants could use its
confidential information to prejudice Plaintiff by attempting “to tailor existing claims to
overcome rejections, avoid art, and ensnare [Plaintiff’s] varieties, without any broadening
amendments to the claims.” (Pl’s Response, ECF No. 59, at p. 6.) Defendants in turn provided a
very generalized response: “How? In what way?” (Def’s Reply, at 6-7.) Defendants then chide
Plaintiff for failing to provide an explanation for how they could use Plaintiffs “breeding
histories to ‘ensnare’ [Plaintiff’s] accused varieties without broadening the claims.” (Id. at 7.)
However, Plaintiff “is not required to suggest amendments that would capture its own
products[.]” Edisync, 2013 WL 561474 at *2 (citations omitted).
The Court concludes that a reexamination proceeding and a reissue proceeding are not
analogous enough in this instance to permit Defendants litigation counsel and prosecution

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counsel to collaborate in the reissue proceeding. 35 U.S.C. § 305, regarding reexaminations
provides in pertinent part:
In any reexamination proceeding under this chapter, the patent owner will be
permitted to propose any amendment to his patent and a new claim or claims
thereto, in order to distinguish the invention as claimed from the prior art cited
under the provisions of section 301, or in response to a decision adverse to the
patentability of a claim of a patent.
By contrast, 35 U.S.C. § 251(a), regarding reissues provides in pertinent part:
Whenever any patent is, through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reason of the
patentee claiming more or less than he had a right to claim in the patent, the Director
shall, on the surrender of such patent and the payment of the fee required by law,
reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of the term
of the original patent.
As noted earlier, reissue allows for the broadening of claims, but only within two years of
when the original patent was granted. 35 U.S.C. § 251(d). Defendants insist that because two
years have already passed since the ‘959 patent was issued, the reissue proceeding is essentially a
reexamination proceeding. Yet, Defendants concede that they fail to cite to cases involving nonbroadening reissue proceedings because such cases “could not be located.” (Def’s Reply, ECF
No. 60, at p. 4.)4 The absence of any authority on the subject makes the Court question the
propriety of granting Defendants’ request.
In all the cases cited by Defendants, a patent was undergoing reexamination request by an
adverse party accused of infringement, where a prosecution bar was not already in place, and the

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In fact, Defendants go so far as to scold Plaintiff for its lack of cited legal authority,
claiming Plaintiff has failed to cite “any cases involving a non-broadening reissue proceeding in
which the court imposed a prosecution bar, or any cases in which the court explained that a nonbroadening reissue is different from a reexamination in any way that is relevant to the imposition
of a prosecution bar.” (Defendants’ Reply, ECF No. 60, at p. 4.) The lack of cited authority in
Plaintiff’s Response though should not have surprised Defendants, as they admit that “cases
involving non-broadening reissue proceedings could not be located.” (Id.)
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reason the courts declined to enter the prosecution bar was based on efficiency and cost control.
This is not an instance in which an opposing party, over whom Defendants have no control, has
instituted an adverse reexamination proceeding against them. Instead, Defendants themselves
placed their own patent into reissue proceedings. Unlike reexamination instituted by an adverse
party, reissue is not an “increasingly important venue for challenging a patent’s validity.” Xerox,
270 F.R.D. at 185. Moving to allow litigation counsel to participate years after they initiated the
reissue proceeding and after Plaintiff has produced its confidential AEO information, is indeed
the reason prosecution bars are put into effect. See In re Deutsche Bank Trust Co. Americas, 605
F.3d 1373, 1380 (Fed. Cir. 2010) (noting a significant risk of inadvertent disclosure of
confidential information).
Even if the reissue proceeding the ‘959 patent was “materially the same” as a
reexamination because Defendants have no intention to broaden the claims, Plaintiff could still
be prejudiced. As Plaintiff points out, Defendants “litigation counsel has already viewed
confidential breeding information including, inter alia, breeding histories of various Dümmen
varieties of Calibrachoa. Defendants could use this information – even subconsciously – to
attempt to tailor existing claims to overcome rejections, avoid art, and ensnare Dümmen
varieties, without any broadening amendments to the claims.” The Court agrees. The
prosecution bar is meant to protect against exactly this scenario. See In re Deutsche Bank Tr. Co.
Americas, 605 F.3d at 1380 (explaining that “[t]he risk of inadvertent disclosure of competitive
information learned during litigation” is great for litigation counsel, and such attorneys “would
not likely be properly exempted from a patent prosecution bar”)5; see also FTC v. Exxon Corp.,

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In re Deutsche Bank Trust Co. Americas is considered “the Federal Circuit’s
foundational opinion on patent prosecution bars.” Front Row Techs., LLC v. NBA Media
Ventures, LLC, 125 F. Supp. 3d 1260, 1276 (D.N.M. 2015).
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636 F.2d 1336, 1350 (D.C. Cir. 1980) (“[I]t is very difficult for the human mind to
compartmentalize and selectively suppress information once learned, no matter how wellintentioned the effort may be to do so.”).
The risk that litigation counsel would, even inadvertently, use Plaintiff’s confidential
information during the reissue proceedings outweighs the benefit of litigation counsel’s
participation to ensure that their prosecution counsel do not submit arguments or evidence that
undermines their litigation strategy in this case. In sum, Defendants have failed to demonstrate
that this Court should deviate from the Default Protective Order.
One final note. Although Plaintiff discusses staying the litigation in its Response to
Defendants’ Emergency Motion (ECF No. 59) and Defendants respond in their Reply (ECF No.
60), the Court notes that neither party has formally moved to stay this pending litigation. The
Court, therefore, will not address those arguments at this time. If any party intends to raise this
issue before the Court, it may file a separate motion properly supported by legal authority.
IV. CONCLUSION
For the foregoing reasons, Defendants have failed to demonstrate good cause to modify
the Default Protective Order. Defendants’ Motion (ECF No. 57) is accordingly DENIED.
IT IS SO ORDERED.

Date: November 21, 2018

/s/ Elizabeth A. Preston Deavers
.
ELIZABETH A. PRESTON DEAVERS
UNITED STATES MAGISTRATE JUDGE

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