Catch a Wave Technologies, Inc. v. Sirius XM Radio Inc., 3-12-cv-05791 (CAND August 6, 2013, Order) (Alsup, J.).
Thursday, August 8, 2013
Patent Acquisition Bar Imposed on Counsel Accessing Defendant’s Confidential Technical Information
The court granted defendant's motion for a two-year patent acquisition bar against plaintiff's counsel who obtain defendant's confidential technical information. "Defendant . . . argues that [plaintiff's attorneys] who gain access to [defendant's] confidential technical information should be barred from advising any clients in the ‘acquisition of patents involving satellite radio signal processing for the purpose of asserting them against’ [defendant] for two years after the conclusion of the litigation, including any appeals . . . In modern litigation, the disclosure of confidential, 'crown jewel' technology to opposing counsel is a burden to which parties must submit. It is not, however, without consequences. . . . The patent acquisition bar requested by [defendant] adds an additional layer of protection by prohibiting not just disclosure and use, but also advising. It thus prevents attorneys from — inadvertently or otherwise — relying on the confidential information when they advise other parties anticipating litigation against [defendant]. . . . [S]uch a quid pro quo is reasonable. . . . The two-year patent acquisition bar allows time for the limitations of human memory to run their course or for the information to become largely stale."