MAXIM INTEGRATED PRODUCTS, INC., PATENT LITIGATION

Filing 207

MEMORANDUM ORDER indicating that upon consideration of the parties' Joint Report on Protective Order, Protective Order and Supplemental Protective Order 115 , and having heard oral argument from counsel at a Case Management Conference conducted on 10/2/12 (Docket No. 141 /Docket No. 203 ), it is hereby ordered that Opposing Parties' Request for Patent Prosecution Bar as contained in the Proposed Supplemental Protective Order ( 115 Ex. 1 at 20) is denied, without prejudice. Signed by Judge Nora Barry Fischer on 11/2/12. (jg)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
IN RE: MAXIM INTEGRATED
PRODUCTS, INC. MDL no. 2354

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This Document Relates to:
All Actions

Master Docket
Misc. No. 12-244
MDL No. 2354
FISCHER, District Judge

MEMORANDUM ORDER
AND NOW, this 2nd day of November 2012, upon consideration of the parties’ Joint
Report on Protective Order, Protective Order and Supplemental Protective Order (Docket No.
[115]), and having heard oral argument from counsel at a Case Management Conference
conducted on October 2, 2012 (Docket No. [141]/Docket No. [203]), IT IS HEREBY
ORDERED that Opposing Parties’1 Request for Patent Prosecution Bar as contained in the
Proposed Supplemental Protective Order ([115] Ex. 1 at ¶ 20) is DENIED, without prejudice.
I.

Background
The Maxim patent infringement Multidistrict litigation, currently involves 26 parties. (12-

244). All of these cases address the same patents, i.e., U.S. Patent Nos. 5,940,510; 5,949,880;
6,105,013; and 6,237,095. Additionally, U.S. Patent No. 5,805,702 is at issue in the cases

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The Opposing Parties at the time of the filing of the Joint Report on Protective Order on August 13, 2012 and the
Case Management Conference on October 2, 2012 were Bank of the West; Branch Banking and Trust Co.; Capital
One Financial Corp.; Chipotle Mexican Grill, Inc.; Comerica, Inc.; Expedia, Inc. (WA); Expedia, Inc. (DE); Fidelity
Brokerage Services LLC; First United Bank & Trust Co.; Groupon, Inc.; Hotels.com LP; Hotels.com GP, LLC;
Hotwire, Inc.; Jack Henry & Associates, Inc.; KeyCorp; KeyBank, N.A.; Mobiata LLC; The PNC Financial Services
Group, Inc.; PNC Bank, N.A.; QVC, Inc.; Southwest Airlines Co.; Starbucks Corp.; Union Bank, N.A.;
UnionBanCal Corp.; and The Vanguard Group, Inc. On October 12, 2012, seven Maxim related cases were
transferred to the Western District of Pennsylvania to be included in the 12-244 MDL, these additional “opposing
parties” are Bank of America Corp.; BMO Harris Bank N.A.; CitiGroup, Inc.; JPMorgan Chase & Co.; Target
Corp.; U.S. Bancorp; Wal-Mart Stores, Inc.; and Wells Fargo & Co.

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involving Starbucks (12-877) and Groupon (12-881). The allegedly infringing technologies
relate to cell phone apps involved with transferring money or “valuable information.” (Docket
No. 46)2. The charges by Maxim include allegations of direct and indirect infringement, and all
of the other parties raise challenges to validity and assert non-infringement. (Id.) The alleged
infringers include a wide array of banking and non-banking entities. (Id.)

Maxim asserts

infringement for apps used on iPhone, Android and Blackberry devices. (Id.) Opposing Parties
have denied these allegations or they have sought Declaratory Judgment for noninfringement/invalidity.
This Court utilizes the Western District of Pennsylvania’s Local Patent Rules, which
include a Protective Order that is automatically entered upon the filing or transfer of any civil
case to which these Local Patent Rules apply, unless otherwise modified by the agreement of the
parties or Order of the Court. See LPR 1.3; LPR 2.2; Appendix LPR 2.2. This default protective
order does not contain a “prosecution bar,” a provision that prohibits attorneys who receive a
disclosing party’s confidential information from prosecuting patent applications on behalf of the
receiving party. (Id.)
The Court ordered the parties to provide a Joint Report regarding the terms and use of a
Protective Order at its Initial Status Conference on July 17, 2012 (Docket No. 79), which they, in
turn, filed on August 13, 2012. (Docket No. 115). As part of the Joint Report on the Protective
Order, the Opposing parties requested a Supplemental Protective Order. (Id. at Ex. A). The Court
then heard oral argument directed at various provisions of the Supplemental Protective Order at
the Case Management Conference on October 2, 2012. (Docket No. 141) One of the matters in
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Docket No. 46 at MC 12-244, is the Answer to Complaint for Declaratory Judgment and Counterclaims against
Branch Banking and Trust Company, by Maxim Integrated Products. This is only 1 of the 26 suits, but is
representative of the claims and counterclaims in all the cases.

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dispute is the patent prosecution ban, requested by the Opposing Parties, against those acting on
behalf of the Plaintiff, Maxim, for a two year period. (Docket No. 115 Ex. A). This proposed
provision reads:
Any person who, acting on behalf of Plaintiff, including outside counsel and
consulting and testifying experts for Plaintiff, receives, sees, reviews, or
otherwise has access to another party’s information that has been designated
by any Defendant in this action as “Confidential Attorney Eyes Only
Information – Source Code” shall not (i) prepare or participate in the
prosecution of any patent application for Plaintiff; (ii) prepare or participate
in the prosecution of any patent application in subject areas related to that of
any patent-in-suit on behalf of any entity whether or not a party; or (iii)
prosecute any patent application related in any way to any patent-in-suit,
such as, but not limited to, any continuation, continuation-in-part, or
divisional relationship, including any parent or child relationship, and
including any application or patent subject to a reissue, ex parte or inter
parties re-examination, interference , supplemental examination, inter
parties review, or post-grant review proceeding, including any appeals from
the foregoing. The prohibition set forth in the preceding sentence shall be in
effect from the time such person receives, sees, reviews, or otherwise has
access to such Confidential Attorney Eyes Only Information – Source Code
through and including two (2) years following the termination of the Action,
including any appeals thereof.
(Docket No. 115 Ex. A ¶20).
Maxim opposes a blanket prosecution ban and more specifically opposes an order that
would make Mr. Michael North, Esq. subject to such a ban. (Docket No. 115). Mr. North is a
partner at North Weber & Baugh LLP in Palo Alto California, and appears before this Court on
behalf of Maxim. (Docket No. 175). Maxim argues that Mr. North is an integral part of their
team and has been “deeply involved in the infringement analysis” (Docket No. 203 at 36, ln 24).
In fact, Mr. North sent cease and desist letters regarding the patents in suit, on behalf of Maxim
Integrated Products, to at least two of the Opposing Parties. (Docket No. 97 Ex. 1/Docket No. 14
Ex. A-1 at CA 12-863). Maxim also argues that if such a ban is put in place then and in that
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event, it should apply to opposing party counsel as well. (Docket No. 115 at 20).
This Court takes judicial notice of Patent & Trademark Office filings. Old Reliable
Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 549, 97 USPQ2d 1993 (Fed. Cir. 2011); Erbe v.
Billeter, CIV.A. 06-113, 2006 WL 3227765 (W.D. Pa. Nov. 3, 2006) (Court took notice of a
service mark registered with the USPTO); Cf: Fed. R. Evid. 201(b)(2)3. Based on a review of
these filings, Maxim Integrated Products is the assignee to 439 patents since 1976 and has 136
patent applications currently pending (for the time period of 2001 to the present).4 Additionally,
the Court notes that since 1976, North Weber and Baugh is the listed patent attorney on 96 total
patents, of which 53 (most filed from 2005 to 2010) are assigned to Maxim Integrated Products.
No further evidence regarding Mr. North or North Weber & Baugh and their practice has been
offered to the Court.
II. Legal Standard
The determination of whether a protective order should include a patent prosecution bar
is a matter governed by Federal Circuit law. In re Deutsche Bank Trust Co. Americas, 605 F.3d
1373 (Fed. Cir. 2010) (due to the “unique relationship of this issue to patent law, and the
importance of establishing a uniform standard”).
The party seeking a protective order and a patent prosecution bar provision bears the
burden of showing good cause for such orders and provisions. (Id. at 1378).

Despite

confidentiality designations, “there may be circumstances in which even the most rigorous

3 See further Total Petroleum Puerto Rico Corp. v. Torres-Caraballo 672 F. Supp. 2d 252, 256 (D.P.R. 2009)
(citing Lussier v. Runyon, 50 F.3d 1103, 1114 (1st Cir 1995), Vitek Sys., Inc. v. Abbott Labs., 675 F.2d 190, 192 n. 4
(8th Cir.1982), Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1096 n. 2 (8th Cir.1996) Island Software
& Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir.2005));
4 As of a search conducted on October 22, 2012.

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efforts of the recipient of such information to preserve confidentiality in compliance with the
provisions of such a protective order may not prevent inadvertent compromise”. (Id. at
1378)(citing U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed.Cir.1984)).

The risk of

inadvertent disclosure is determined by the facts on a “counsel-by-counsel” basis that turns on
the extent that counsel is involved in “competitive decision-making.” The Federal Circuit has
recognized that competitive decision-making does not necessarily apply to a patent prosecution
attorney, stating that “denying access to [a party's] outside counsel on the ground that they also
prosecute patents for [that party] is the type of generalization counseled against in U.S. Steel.”
(Id. at 1378). Whether a patent attorney’s involvement with a party is limited to filing patent
paperwork and providing broad oversight of patent prosecution, or to obtaining disclosure
materials for new inventions or making strategic decisions on patent prosecutions and portfolios,
are facts that determine an attorney’s decision-making role. (Id. at 1380).
Even if it is satisfied that such a risk exists, this Court is granted broad discretion to
decide what degree of protection is required, and “must balance this risk 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.) The court should consider ”the extent and duration of counsel's past
history in representing the client before the PTO, the degree of the client's reliance and
dependence on that past history, and the potential difficulty the client might face if forced to rely
on other counsel for the pending litigation or engage other counsel to represent it before the
PTO.” (Id. at 1381). As set forth in Medimmune, Inc. v. Centocor, Inc. and affirmed by
Deutsche Bank, other factors the Court shall consider include the scope of the activities
prohibited by the bar, the duration of the bar, and the definition of the subject matter covered by
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the bar. Medimmune, Inc. v. Centocor, Inc., 271 F. Supp. 2d 762 (D. Md. 2003).
Once a the moving party establishes the need for a prosecution bar, and that the proposed
bar is reasonable, the burden shifts to the party seeking an exemption from a patent prosecution
bar, who must show on a counsel-by-counsel basis:
(1) that counsel's representation of the client in matters before the PTO does not
and is not likely to implicate competitive decisionmaking related to the subject
matter of the litigation so as to give rise to a risk of inadvertent use of
confidential information learned in litigation, and
(2) that the potential injury to the moving party from restrictions imposed on its
choice of litigation and prosecution counsel outweighs the potential injury to the
opposing party caused by such inadvertent use.
605 F.3d at 1381. For this last step of analysis it is “important for a court, in assessing the
propriety of an exemption from a patent prosecution bar, to examine all relevant facts
surrounding counsel's actual preparation and prosecution activities, on a counsel-by-counsel
basis”. Id.at 1380.
In Deutsche Bank, the district court had refused to adopt a patent prosecution bar, but the
Federal Circuit found that the district court made this decision without a full evidentiary record
of the attorney’s role. Id. at 1382. To that end, the Federal Circuit remanded the determination
back to the district court for a new balancing analysis based on a full evidentiary record and
application of the standards set forth by the Federal Circuit. Id. Given that analysis of the
disclosure risk, balancing of risks, and the assessment of the propriety of any exemption must be
based on “all relevant facts” by a “counsel-by-counsel basis,” the Court finds that the present
record lacks sufficient evidence to impose a prosecution ban on any counsel at this time.
III. Conclusion
Based on the forgoing, the Opposing Parties’ motion is denied without prejudice, in light
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of Deutsche Bank, supra, as the Opposing Parties have not met their burden to show good cause
for a patent prosecution ban. (Id. at 1378). Indeed, no party has provided enough evidence for
this Court to order such a ban on Mr. North (or any other counsel involved in the case or
exceptions to such a ban.) Thus, the parties are granted leave to file a properly supported motion
seeking a prosecution bar by November 15, 2012 at 5:00 p.m. Any responses to said motion
shall be filed no later than November 29, 2012 at 5:00 p.m. A hearing shall be set at the
discretion of the Court.
s/Nora Barry Fischer
Nora Barry Fischer
UNITED STATES DISTRICT JUDGE

cc/ecf: All counsel of record

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