Blackbird Tech LLC d/b/a Blackbird Technologies v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000Bulbs.com et al, 1-15-cv-00053 (DED May 18, 2016, Order) (Andrews, J.)
Monday, May 23, 2016
NPE Plaintiff Utilizing In-House Litigation Counsel Must Agree to Prosecution Bar and Covenant Not to Sue on After-Acquired Patents
In response to the parties' dispute concerning the scope of a protective order governing confidential information, the court ordered the parties to submit a revised order imposing a prosecution bar on plaintiff's in-house litigation attorneys and granting defendants a covenant not to sue on plaintiff's after-acquired patents in the lighting industry. "[Plaintiff] describes its business as 'a new model for individual inventors and small companies to monetize their intellectual property.' . . . '[Plaintiff] achieves this goal by acquiring patents and litigating on behalf of itself, using experienced patent litigators that are directly employed by [plaintiff] instead of outside counsel, at a great cost savings.' . . . '[Plaintiff's] argument that its principals are not competitive decisionmakers because it is not a direct competitor of any Defendants rings hollow. . . . Given these three . . . lawyers' roles as competitive decisionmakers, I think there is a concrete, particularized risk of inadvertent disclosure and misuse here. . . . I think that a prosecution bar and covenant not to sue these Defendants on after-acquired patents in the lighting industry would adequately protect Defendants' interests while allowing [Plaintiff] to prosecute these actions with its in-house lawyers. . . . Because [plaintiff] purposefully diversifies its patent portfolio and does not target any particular industry or technology by design, temporary limitations on its patent assertion activities against these Defendants should not be unnecessarily harmful to its business."