Patent Law Practice Center

Delaware District Court Protective Order Practice

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

The Federal District Court of Delaware seems to have a different idea when it comes to patent reexamination concurrent with litigation.   In my article, Protective Orders: Patent Reexamination & Concurrent Litigation in Delaware, I explain that protective order issues can be quite contentious in litigation between direct competitors. In many district courts, the simple solution to this issue is to forbid trial counsel from participating in an ongoing patent reexamination. The concept is simple, since claims are being amended or added in reexamination, confidential product data of competitors can unfairly steer the claim drafting process, providing significant leverage to the Patentee.

In Delaware, the protective order issue has been viewed differently.

Last week, this trend continued in the case of Xerox Corp. v. Google, Inc. et al. In Xerox, the court once again cited the same familiar local decisions on the issue, all of which appear grounded on arguably flawed perceptions of patent reexamination. (more…)