Prosecution/Reexam Bar Denied Due to Delay

The court denied defendants' motion to modify the default protective order to preclude plaintiff's counsel from participating in patent prosecutions and reexaminations involving defendants' technologies after defendant delayed two years from its first request for a patent prosecution bar. "While the Court does not find that Defendants waived the argument . . . the delay does raise some question as to the propriety of entering a prosecution bar this late in the litigation when Defendants initially raised the issue with [plaintiff's] counsel almost two years ago but did nothing to follow through when [plaintiff] objected. The playing field would have been more level had Defendants sought relief from the Court on this issue prior to the production of Defendants’ documents. If the Court had modified the default protective order to include a prosecution bar at that time, [plaintiff's] counsel could have made a more informed decision about which of [plaintiff's] counsel should be reviewing Defendants’ documents so as to shield some of [plaintiff's] attorneys from any prosecution bar that may have been entered at the time. Defendants did not front the issue at the outset, however, and now [plaintiff] would suffer even more prejudice by not having its chosen counsel so late in the litigation both in this Court and in the patent examinations before the PTO."

Helferich Patent Licensing, LLC. v. New York Times Co., 1-10-cv-04387 (ILND June 21, 2013, Order) (Gilbert, M.J.).