Versata Software Inc., et. al. v. Callidus Software Inc., 1-12-cv-00931 (DED June 19, 2014, Order) (Robinson, J.)
Monday, June 23, 2014
Judge Robinson Adopts “Limited Prosecution Bar Regarding All Reexaminations, Inter Partes Reviews, And Any Other Post-Grant Review Proceedings”
The court sua sponte imposed a "a limited prosecution bar regarding all reexaminations, inter partes reviews, and any other post-grant review proceedings" to address the "growing proliferation of parallel proceedings between federal trial courts and the Patent and Trademark Office . . . [and] the Federal Circuit['s] [recognition] that 'strategically amending or surrendering claim scope during prosecution' can implicate competitive decision-making . . . thus giving rise to a risk of inadvertent use of confidential information learned in litigation." "[I]n an effort to balance a plaintiff's need for coordination among its counsel with a defendant's appropriate concern over the security of its proprietary information in the context of a protective order . . . the parties shall operate under a limited prosecution bar regarding all reexaminations, inter partes reviews, and any other post-grant review proceedings. . . . Plaintiffs shall designate one or more attorneys on their trial team who will be responsible for consulting with counsel handling any administrative review process, in order to coordinate coherent and consistent positions in various proceedings. . . . [O]nce any such person has viewed defendant's highly confidential source code, the prosecution bar set out in this order shall apply to such persons. . . . This order shall remain in effect until one year after final termination of this litigation."