morning everyone please be seated for a den of education purposes this panel is sitting in its capacity years the motion please the court this case is about patent prosecution while the district court held that past prosecution is appropriate in this case recognizing that lawyers at respondents law for access to petitioners highly confidential and competitively sensitive information should be screened via a chinese wall for prosecution the problem is the court didn't apply that bar to one person respondents lead counsel mr charles macedo and the counsel and it is the core of your case that the legal is your honor from the petitioner standpoint this is a question of applying the law correctly the district court looked at this court's nine hundred eighty four u s steel decision as its legal framework for answering the question but it applied the case wrongly in what respect well citing to u s steel it held that the petitioners had quote not established that miss a don't participate in the under us steel for when a patent prosecution bars approach to be applied to an attorney with access to the police and courts competitively sensitive information first we ask the court to hold that an attorney irrespective of his or her title who was in a position to influence the drafting amending or scope of his client's patent application claims has first the role of a competitive decision maker as outlined by u s steel second well let me ask you a question about the first one and that is that it seems to me that you know there are up there are different activities that pattern prosecutors normally in gaijin the prosecutors to sort of take limited instructions from their clients here's a disclosure here's the closest prior art i'm aware of please go write a patent application and and and  prosecuted and pursue the claims then there are the prosecutors that directly engage with their clients and have discussions about you know here's what we're trying to protect here's the here's the competitive environment in which some relevance to this subject well you're either in there maybe different roles that different prosecution castle may and be involved with with respect to the level of involvement but i would submit to you that the duty of any other patent prosecutor or one involved with shaping the scope of claims is to it pro the client to understand the technology and the area of of the conduit for information in other words receiving information from outside cat and counsel and passing it on to his or her client without having an input into the scope of the entity use the word in will and things and those words are so vague as to be meaningless because i mean a secretary if somebody has an editor that reviews all the material obviously there they implement the drafting well but they have no relationship to either to the decision making or the substance of what's going on so i guess is do you think the task that you've articulated and i know we cut you off that part one so i know there are two parts remaining but is that different than competitive merely a first threshold question to resolve and that is before you get to the next steps which will determine whether a prosecution bars and the appropriate with this step alone that's not sufficient for for determining that set up or would be appropriate what is the thank you for that the second part of the test is to determine on a case by case basis whether the competitive decision making attorney in an acceptable position to inadvertently disclose or misuse a competitor's proprietary information in a way that irreparably harms the disclosing part so consistent with u s steel we propose that an attorney is a headed decision maker faced with an unacceptable opportunity for inadvertent disclosure of the party's competitively sensitive information if the subject of the patent applications the attorney is involved with is the same or similar to the subject matter of the patents and suit as that subject matter is defined by the district court as a numerous  recognized it's unrealistic to expect a person to wholly compartmentalize the knowledge of defendant secret information in his head and not let it influence its current ongoing pattern prosecution activities so  our view is that if this attorney's prosecution activities do cover the same subject matter as the patents and suit these pending and future applications could include claims that directly cover the patent which your claim could against challenge the ruling up subsequent date and i'm not sure i thought any one discussed whether or not the high premium not clear on the details of the litigation would there be another opportunity  interim protective order in place while the district court was determining the objections that we filed up to from the magistrate judge and the rulings of the interim protective order was confidential information that cat's out of the bag the it's too late the information that we're teaming to be heightened sensitive but not too late if if one puts up the costly impose the prosecution b so the question is if you're the only opportunity in which your client can do that i believe perhaps after the case is over on appeal there that might be an opportunity but again in our that our position is that that would be too late because this pending applications are being prosecuted at the patent office now in these months this information could immediately be used because there are continuation applications pending in the very same subject matter related to the patents and s do to it and the third part of the test is that finally under the federal rules of civil procedure twenty six see that district court must still use its discretion to balance  normally unacceptable risk to the disclosing party from endeavor disclosure against any hardship prejudice or inconvenience that would result to the party whose counsel is being bar for a limited time from involvement in the patent prosecution perhaps situation where the technology at issue is extremely arcane very complex and this lawyer was the only lawyer who was prosecuting the patents for the petition for for the party at stake perhaps in that narrow case the balance of harms may come out in favor of not imposing a prosecution bar but that course not of course you argue in the petition that have numerous other factors which we laid out in our briefing which shows what role he plays it when you go you make you make a big point out of the fact that he attended one thousand or two examiner interview kind of exercises that magistrate judge back in the district judge didn't go right out of balancing and we understand you don't agree with how they came out on the ballot just but you can't say that they didn't make a good faith attempt to balance conflicting factors arguing that ari well i am arguing that district court made it clear legal and that legal error is the failure to consider patent prosecution activities and affecting the scope of claims as a competitive decision making exercise that is legal error that i think this court could and should particularly but there  and i see some some general references throughout the record about this but nothing that tells me what that means is there anything in the record that sheds any light whatsoever on what what that means what he did as a supervisor did he say to mr ellis you can file three applications this month and next month you can file or or did he do more than that well i think he did more than that i think i don't know because of some will with respect to the nature of the information that had to enter will be disclosed it really helped us at least it was very hard for me to figure out in the initial discovery disclosures that something like i get one hundred fifty four documents a large portion of which were marked prosecution bar and potential level documents but we didn't get any feel for what those documents were whether they were properly labeled as as the prosecution bar documents or not we have no idea what the future discovery scope and content may consist of we don't have that i could quickly find at least that discovery order it so i'm getting a little bit of anxious feeling here that i might not know enough to make a sensible patent prosecution bar documents with dawkins would be appropriate for such a patent prosecution are indeed as i mentioned in the record there is an interim protective order which includes this patent prosecution bar  appropriateness of the petitioner such as ignition of some of these documents some of them even agreed that would not be prosecution barred but other die we don't have any understanding of the content of a single document even the ones that are not contested as to the appropriateness of the labeling we have no idea what they are or they trade secrets are they did the technological stuff blas about future products are they about how the current product works we don't have any clue  other than i think that they deal with software other than that they have no feel for what the documents are your honor these documents are documents that relate to the technology of how the petitioners products operate and manuals were split spec to how to implement the products now the patents and suits are very high level business method patents so that the information that we have designated  passed prosecution bar correspondent which are sensitive and secret information of the petitioners correspond to the to the patent claims the scope of patent claims that are at issue in the case and at issue well i guess the bottom line question is it your position that we have well a specific factual information in the record here at this court that we need to decide this petition and that a room in for pro development  say laid out in the first part of this test that could influence the scope of the patent claim is fair game is a part of it is competitive decision making as laid out in u s steel  though the only the only if the only other aspect of your proposed test is that the applications that are being prosecuted all related to the patent suit that we are submitting is the minimum condition yes your honor and then after that the district court would still weigh the competing interests of the parties to make the final rule twenty six decision so you are the century advocating a per school of claims it's competitive decision making but that's not enough so the court must first determine whether that person does that is those activities whether they are involved with over influencing the scope of claims that's one factual very well one example would be your honor if mr macedo for example was prosecuting patents for other clients relating to other technologies like automobile technology  patent application the person prosecuting applications is prosecuting patents influencing the claim scope in the same field related to the technology at suit then yes i think well the court did that in this case the court adequately we believe it defines the school related technology and saying that it is financial services involving sweet pro at most it seems to me that maybe you're asking us to send it back into the district court if we tease out a competitor decision making what aspects of patent prosecution we think should be covered and not and then sending it back to the district court for him to apply are morally speaking under it to the facts in this case isn't that the most you could hope for here no your honor our position is that the not relying on as as far as the legal test you're not relying on something more than the normal patent prosecution activities provided it's related to the subject matter of the litigation it seems to me that and i realize there's the hardship issue but in terms of what you characterize as the first two prongs it seems to me that you're you're saying that the legal test is are you involved in doing patent prosecution and related applications if so that's enough you don't need to show something more in order to implicate competitive decision  no no information from the client as to what the competitive environment by being your what what any decisions the companies making about where the direction of products are etc it's just your two disclosure transmitting the information to the client i will agree that the prop that prosecutor who was prosecuting these related patents would be considered a competitor decision maker undoubtedly i want you to use one piece on a very short clients and he's got to go back to his client a for any decision making that you have no real independent decision making authority if you have no independent decision making authority does that mean you don't classify the  entire function is to be a mere conduit with no input no influence no legal skills no judgment no proposals they shouldn't be charging rates or charge mean it's hard to think of anybody that you could be clearly labeled with a patent prosecutor who doesn't at least at by quiet on the optimal scope of claims both in the initial application and in amendment in the people the examiner don't have for example a substantial legal department that mr macedo could in fact in theory take such a role of receiving information and passing it on to its in house counsel i'm sorry to to either or to his clients that's a possible there are feasible role that would not implicate the past prosecution now just one more question about the content of the documents that have been produced so far  point of contention as to whether we need to produce that information however there's titian all information for example it remains which show how the product works manuals internal documents of to testify because you know we're not the district court determining factors ruin a mandamus contact on a fixed record the you have to be very careful to give us argument only but not that they thought the record inadequately established facts would be do you think that's the case i think that the record is devoid of some very important facts i think the most important fact it's devoid of is actual harm petitioners i think the record is devoid aso of facts which establish well in the court order he says the designation of confidential may be applied to a party to closing party do you have any problem with that standard well you know application yes there's been a problem with that standard there have been hundreds of documents that have been designated by the petitioners as prosecution or are we  documents that deserve a patent prosecution bar then it doesn't matter what we do here in terms of your situation because you're going to be able to participate it's a burden shifting here it's a burden shifting in the sense that the district against them in three weeks from now it turns out yes indeed you're asking for documents that everybody wouldn't you know we believe you know have these trade secrets and somebody have to come back why why if they make a give you several ok what if they have a document which they think we don't need to say and they want to withhold we were asked for documents are sufficient to prove our case we're not asking for every doctor to sign you're not asking for future developers they're going to be a thousand application first of all approach my colleague mr charkha and mr will cicero like we've done in the past and say listen we have these documents we think that these are prosecution work documents we don't think they're necessary you're calling for them we'd like for them not to be  federal circuit they've denied to regret this is just going over old ground not that that the fact that the remedy may be a denial doesn't mean that the room isn't the bill there is a procedure available people can move to to modify  protective orders there's a high standard in meeting that and they have to meet that high standard they have to show good cause and they have to and there's a very high standard i wouldn't argue with that with that procedures available but if that actually if defacto reconsideration i mean if you're modifying the protective order that you already are going to say about concerning the same issue which is whether or not prosecutors ought to be i mean don't you think it's really a reconsideration it may be whether it's called a motion for amendments and so why do you think there's any basis is there any circumstance in which we would apply the bar to that person and we've applied to reply to the park and then see if our yes you know there are circumstances in which a bar is appropriate can you just kind of outline for me what those circumstances are what makes one prosecutor what that prosecutor subject to a bar and another well i think that this comes down to the same test that was set forth in the u s steel as well as in the just the case and in the end it's going to come down to a balancing with respect to my colleagues here the reason why the prosecution bar is not objectionable and i reword it like that because we didn't object to it is because counsel suddenly becomes additional prosecuting counsel or prosecution counsel suddenly becomes additional litigation the counsel for the sole purpose of stealing the defendant's information to put into the prosecution that share what we're talking about here is a very different circumstance and for example in the trade in technology cases which is one of the cases that isn't really there they recognize the fact that the lead but yet it is certain disclosure by itself was not sufficient hard to justify the per se rule is advocated by the i t c in that but the will that they came up with was competitive decision making right my job is to supervise according to their fully water has one water there who i've been working with since two thousand and three point to the record the client does not have someone that is a patent prosecutor that's been role it seems to me is because of some input you're providing to mr ellis about the direction of prosecution or something of that sort that that's to me  starts to sound like it has some competitive overtones what i would say is that i don't know what supervision means if it doesn't mean some influence on what kind of protection the client this appeal however even to sue me that you were to say that the district court recognised that patent prosecution bars are appropriate in some circumstances but not requir petition to a district court reviewing a magistrate judge's decision on the highly discretionary issue of whether or not to enter into a protective order on reconsideration there was a hearing how here the judge reached a decision no appeal was taken from that instead a motion for reconsideration and file a motion for reconsideration the magistrate judge to hear the decision on appeal from the magistrate judge to the court the court said there was no clear makers so even if in this case the client or some officer of the client company is going to make the final decision on claims isn't it clear from the record that you at least at the at least advised on what claim scope should be so maker much less a decision maker on competitive matters but person could also include somebody who had viable competitive decision makers potentially system of discovery it's extremely broader than explaining the deep and all sorts of extraordinarily sensitive information including overt trade secrets and other things that are subject to discovery of the of the extent to which parties in similarly ition united states are wired under pain of contempt to produce documents that were nearly they would never let out the door so this seems to me creates a need for some for some balancing your argument is strong in a vacuum that we're shouldn't be restricted from helping their clients wearing any half they are able to wear i think that's a fair point but the trouble do a declaration not because they can't i would argue that's because they couldn't put forth that and when they've been challenged on what they put forth they either withdrew voluntarily or they were by the court saying that's not good enough so i don't think that they haven't even met the fairness to the regime that was issued two to the court below you are imported from litigation where prosecution you are only required to make a choice between one and the other i think that your honor call that hopson choice and want to no overlooked facts there's no controlling precedent this is it was you who the decision which was highly discretionary and by the way it's not the protective order didn't carefully craft you considered concerns there was a very serious allegations that have been made here there are plenty with that isn't too concerned the pattens ensued as well as the hunt going prosecution they have argued for infectious  that you didn't already covered that was raised for the first time by mr macedo is certainly fair game is great i challenge that on the record we believe that the harm is if anything it's in mere inconvenience for respondents to have to temporarily and narrowly defined pirro states at the last paragraph of peachtree first the federal circuit has also filed that per se bar is based on an attorney's general area of practice are not appropriate participates in the activities pricing product design etc of a competitive decision maker we submit that the statement that pricing product design etc in the footnote of s steel they were mere examples of what would qualify for competitive decisionmaking that's not an inclusive list of activities and what we're asking this court to do today here is to declare that the activity of influencing patent prosecution claim scope is indeed no less competitive that then either pricing or product design in so application claim again in the abstract yes that is the first step that we've been we urge the court to adopt that patent prosecution claim scope is always a competitive decision making activity and state by agreeing with the lower court to narrowly adopting the this statement in this case what do you think do you do know that what he meant by that was that the only two categories of activity that can fall under competitive get into making are pricing in product design is that the way my eyes would read is that he comes very close to that he doesn't explicitly state that but he comes close to that position a bit but i'm measure character that's a very different thing i'd agree with it because the fruit is no different to require if we think he misunderstood and were misstated the law he gets no difference but in the application of the law to the facts of record he gets a lot of deference he gets almost that perhaps because he gets mandamus level of deference plus abuse of discretion that he is perceived limiting themselves to that however i do think that it's clear from the record that the judge didn't believe that patent prosecution activity and as effective the claim school is not competitive decision unquote patent prosecution portfolio they knew or should have known that there was a risk that the course would see the stool roll as too big of a risk for the defendants they sued what about the circumstance maybe  case and that same guy who is also the only guy who understand the technology well enough to be able to italy prosecute the case if you have somebody with that thirty uniqueness i take it that he gets out client could have confidence in both on the litigation side and the prosecution side you say no and i say well we're the proof he doesn't and i'm king stubborn so right right i mean you know your honor i would s that that would be the burden on the respondent to show that he indeed is that person who has that unique role i would submit to you that this case and the facts of this case that the patents at issue are not