Tuesday, May 21, 2013

Prosecution Bar does not Extend to Inter Partes Review Except as to Amendment of Claims

The court granted in part plaintiff's motion to allow two of its litigation attorneys to participate in the inter partes review of the patents-in-suit. "[Plaintiff] asserts that the inter partes proceeding will not implicate competitive decisionmaking . . . and asserting there is only a 'minor opportunity to amend' the claims. . . . The inter partes proceeding affords opportunities to amend the claims that are more flexible than implied by [plaintiff]. [Plaintiff] has not established that [the two attorneys] will not be involved in competitive decisionmaking. . . . However, the purpose of this particular AIA reform was to 'convert[ ] inter partes reexamination from an examinational to an adjudicative proceeding.'. . . Depriving [plaintiff] of the specialized representation of [the attorneys] in the inter partes review would force them to rely on counsel in that process who lack litigation skills. While [plaintiff] has not shown that counsels' participation would not potentially implicate competitive decisionmaking, [defendant's] concern regarding inadvertent use of confidential information is insufficient to overcome the potential harm to [plaintiff]." Prolitec, Inc. v. ScentAir Technologies, Inc., 2-12-cv-00483 (WIED May 17, 2013, Order) (Randa, J.).

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