On January 7, 2013, ALJ James E. Gildea issued Order No. 28 denying an unopposed motion to amend the protective order in Certain Consumer Electronics, Including Mobile Phones and Tablets (Inv. No. 337-TA-839).
According to the Order, Respondents ASUSTek Computer, Inc., ASUS Computer International, Inc., HTC Corporation, HTC America, Inc., Pantech Co., Ltd., Pantech Wireless, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, L.L.C. (collectively, the “Respondents”) filed an unopposed motion seeking to add a patent prosecution bar to the Amended Protective Order. Respondents asserted that the patent prosecution bar is necessary to protect Respondents’ highly confidential, trade secret information. Respondents argued that the Federal Circuit opinion, In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373 (Fed. Cir. 20120) (“Deutsche Bank”), as well as decisions from the ITC, support their arguments. Specifically, Respondents asserted that Deutsche Bank requires a case-by-case evaluation of counsel only when determining whether an exemption to a prosecution bar should apply.
As an initial matter, ALJ Gildea conducted a review of the Federal Circuit’s Deutsche Bank decision. In particular, ALJ Gildea summarized Deutsche Bank’s prosecution bar requirements as threefold: (1) the information triggering the bar is confidential, relevant to patent prosecution, and is of the kind that may pose a heightened risk of inadvertent disclosure; (2) a particular patent prosecution attorney having access to the information is involved in competitive decision making; and (3) the risk of inadvertent disclosure by that person outweighs the burden a prosecution bar would impose on that individual. ALJ Gildea noted that many courts have adopted a more liberal interpretation of the Federal Circuit’s Deutsche Bank decision. However, ALJ Gildea rejected a liberal interpretation because “[s]uch an interpretation disregards the Federal Circuit’s discussion of the U.S. Steel opinion and renders it meaningless.”
Turning to Respondents’ motion, ALJ Gildea held that Respondents’ failed to set forth the evidence required by Deutsche Bank to show the need for a prosecution bar. Specifically, ALJ Gildea determined that Respondents failed to provide any particularized facts directed to why their “highly confidential or trade secret information” requires protecting. Further, Respondents failed to provide any particularized facts directed to whether the Complainant’s litigation attorneys represent Complainant in patent prosecution. In conclusion, ALJ Gildea reminded all parties that any person who reviews confidential information under a protective order may not use that information for purposes outside of the current investigation. Accordingly, ALJ Gildea denied Respondents’ motion.