Prosecution Bar Extended to CBM Proceeding to Avoid Misuse of Defendant’s Confidential Information

The court adopted defendant's proposal for a protective order that included a prosecution bar that extended to CBM review. "If Defendant's petition for CBM review is granted, there is a significant risk that Plaintiff will make a motion to PTAB to amend the claims of its Patent 'to distinguish them from the prior art in a manner that is informed by its knowledge of [Defendant's] highly confidential information and source code gleaned in this litigation.'. . . [T]he potential misuse is obvious where Plaintiff has access to valuable and confidential source code, and could use such information to create a tactical advantage in this case. Plaintiff's possible injuries are minimal in comparison to the risk to Defendant. The injuries are minimized because Defendant's Bar applies only to Plaintiff's counsel that have seen Defendant's confidential material and source code. . . . Defendant's Bar allows Plaintiff's litigation counsel - who have not and agree not to review Defendant's confidential information or source code - to fully participate in the CBM review proceeding, including motions for claim amendments."

buySAFE Inc. v. Google Inc., 3-13-cv-00781 (VAED June 2, 2014, Order) (Hudson, J.)