IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

HELFERICH PATENT LICENSING, L.L.C.

an Illinois Limited Liability Company,

Plaintiff,

v.

THE NEW YORK TIMES COMPANY,

a New York Corporation,

Defendant.

Case No. 10 C 4387

John W. Darrah, District Judge

Jeffrey T. Gilbert, Magistrate Jude

HELFERICH PATENT LICENSING, L.L.C.

an Illinois Limited Liability Company,

Plaintiff,

v.

G4 MEDIA, LLC, 

a Delaware Limited Liability Company,

Defendant.

Case No. 11 C 7395

John W. Darrah, District Judge

Jeffrey T. Gilbert, Magistrate Jude

HELFERICH PATENT LICENSING, L.L.C.

an Illinois Limited Liability Company,

Plaintiff,

v.

CBS CORPORATION,

a Delaware Corporation,

Defendant.

Case No. 11 C 7607

John W. Darrah, District Judge

Jeffrey T. Gilbert, Magistrate Jude

Case: 1:11-cv-09143 Document #: 134 Filed: 06/21/13 Page 1 of 10 PageID #:3753
HELFERICH PATENT LICENSING, L.L.C.

an Illinois Limited Liability Company,

Plaintiff,

v.

BRAVO MEDIA, LLC,

a New York Limited Liability Company,

Defendant.

Case No. 11 C 7647

John W. Darrah, District Judge

Jeffrey T. Gilbert, Magistrate Jude

HELFERICH PATENT LICENSING, L.L.C.

an Illinois Limited Liability Company,

Plaintiff,

v.

J.C. PENNEY CORPORATION, INC.,

a Delaware Corporation,

Defendant.

Case No. 11 C 9143

John W. Darrah, District Judge

Jeffrey T. Gilbert, Magistrate Jude

MEMORANDUM OPINION AND ORDER

This matter is before the Court on a Motion to Modify the Default Protective Order filed

by Defendants The New York Times Company, G4 Media, LLC, CBS Corporation, Bravo

Media, and J.C. Penney Corporation, Inc. (collectively “Defendants”). Defendants argue that 1

they face potential serious injury from the continued participation of Plaintiff Helferich Patent

Licensing LLC’s (“HPL”) counsel in patent prosecutions and reexaminations of the patents that

cover Defendants’ technologies at issue in this case, after HPL’s counsel has examined the

 Each of Defendants filed the same Motion to Modify the Default Protective Order 1

entered in their respective cases. For Defendant New York Times, the docket entry for the

Motion is [221], for G4 Media, LLC [82], CBS Corporation [76], Bravo Media [79], and J.C.

Penney Corporation, Inc. [91].

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Defendants’ confidential information produced during discovery in this case. Defendants have

filed the instant Motion to Modify the Default Protective Order entered under Local Patent Rule

(“LPR”) 1.4 and LPR Appendix B to add a prosecution bar that will prevent any HPL attorney

who has reviewed Defendants’ confidential information from prosecuting patents with claims

written to cover Defendants’ technologies.

HPL has filed five lawsuits alleging patent infringement by Defendants, which have been

coordinated before this Court. Pursuant to LPR 1.4, the default protective order found in LPR

Appendix B took effect when each Defendant filed its initial disclosures. See LPR 1.4. The

default protective order prohibits disclosure of information designated Confidential or Highly

Confidential absent written permission from the producer or the court. The default protective

order, however, does not include a prosecution bar preventing opposing counsel from

participating in any patent prosecutions or reexaminations before the United States Patent and

Trademark Office (“PTO”) on subjects related to the litigation. 

It is not disputed that Defendants raised the issue of a prosecution bar early in the

litigation in early 2011 and that HPL objected, arguing that a prosecution bar is unwarranted.

Defendants, however, did not seek a modification to the default protective order for at least two

years after they first raised the issue and more than one year after the stay in this litigation was

lifted and extensive discovery began to proceed, including Defendants’ production of nearly two

hundred thousand pages of documents most of which were designated “Confidential” or “Highly

Confidential.” Defendants also during the same time filed multiple patent reexamination

proceedings in the PTO. HPL’s counsel, particularly Steven Lisa and Jon Kappes who are

specifically identified in Defendants’ motion, have continued to participate extensively in this

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litigation and the patent prosecutions and reexaminations on HPL’s behalf, including the

prosecution of patents closely related to the matters at issue in this lawsuit. All of the

proceedings – before this Court and the PTO – are advanced and nearing important stages for

Markman or prior art decisions. 

Defendants’ counsel six months ago sought a prosecution bar in related litigation pending

in the District Court of Arizona. See Helferich Patant Licensing, LLC v. Suns Legacy Partners,

LLC, No.2:11-cv-02304 (D.Ariz.). After the parties’ briefed the issue, Judge Neil Wake denied

Defendants’ motion seeking to impose a prosecution bar against HPL’s counsel. Instead, Judge

Wake modified the protective order to require that “[HPL] not rely on highly confidential

information disclosed by defendants in this litigation in any proceeding before the PTO.” See

Helferich Patant Licensing, LLC v. Suns Legacy Partners, LLC, 12/5/12 Order, at * 7 (“Judge

Wake 12/5/12 Order”).

Defendants now seek to modify the default protective order in this case to add a

prosecution bar that Defendants argue will protect them from any inadvertent misuse of their

confidential information. Specifically, Defendants request the amendment of the default

protective order to add a prosecution bar that would prevent HPL’s counsel from participating in

the prosecution of patents whose claims cover technologies disclosed in the course of this

lawsuit, for a period of two years from the conclusion of this lawsuit. HPL opposes the

imposition of any modification to the default protective order to add a prosecution bar.

Because the question of a prosecution bar “is an issue unique to patent law,” the question

is governed by Federal Circuit law. In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1377

(Fed. Cir. 2010). The Federal Circuit explained in Deutsche Bank that the burden is on the

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moving party to show good cause for modification of the protective order. Id. at 1378. The

question of what constitutes “good cause” generally requires a movant to show “a sound basis or

legitimate need to take judicial action.” Trading Techs. Int’l Inc. v. GL Consultants, Inc., 2011

WL 148252, at *2 (N.D. Ill. Jan. 18, 2011) (quoting Wiggins v. Burge, 173 F.R.D. 226, 229

(N.D. Ill. 1997)). Courts have recognized that a narrowly tailored patent prosecution bar may be

necessary when there is risk of disclosure and does not require that a disclosure actually has

occurred. As the Federal Circuit explained in Deutsche Bank:

There may be circumstances in which even the most rigorous efforts of the recipient

of such information to preserve confidentiality in compliance with the provisions of

such a protective order may not prevent inadvertent compromise. As aptly stated by

the District of Columbia Circuit: “[I]t is very difficult for the human mind to

compartmentalize and selectively suppress information once learned, no matter how

well-intentioned the effort may be to do so.

Deutsche Bank, 605 F.3d at 1378 (quoting FTC v. Exxon Corp., 636 F.2d 1336, 1350 (D.C. Cir.

1980)). 

The party seeking a patent prosecution bar bears the burden to first show that there is an

“unacceptable” risk of inadvertent disclosure of confidential information. U.S. Steel Corp. v.

United States, 730 F.2d 1465 (Fed. Cir. 1984). To determine whether there is such an

unacceptable risk, a court should examine the extent to which counsel is involved in

“competitive decisionmaking” with its client. Id. The Federal Circuit has defined competitive

decisionmaking as “a counsel’s activities, association, and relationship with a client that are such

as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing,

product design, etc.) made in light of similar or corresponding information about a competitor.”

Id. at 1468, n.3. 

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It is clear that HPL’s counsel is involved in competitive decisionmaking and participates

extensively in prosecuting new patent claims and defending patent reexaminations, crafting

patent applications, negotiating licenses for the patents, and litigating HPL’s patent rights in

federal court. HPL does not argue otherwise in its opposition to Defendants’ motion. Because of

HPL’s counsel’s extensive responsibilities and the scope of their roles in this litigation and the

reexamination proceedings before the PTO, the Court agrees with Judge Wake, for the purpose

of this motion, that under the Deutsche Bank standard there is an unacceptable risk of inadvertent

disclosure in this litigation. See Judge Wake 12/5/12 Order, at *5.

A finding that there is an unacceptable risk of disclosure, however, does not end the

inquiry and is not enough to justify the issuance of a patent prosecution bar. See Deutsche Bank,

605 F.3d at 1380. In Deutsche Bank, the Federal Circuit held that, even if the Court finds that the

risk of misuse is unacceptably high, the Court still must weigh that risk against the harm that may

occur from imposition of a prosecution bar, especially the prejudice from denying the patentee

access to the counsel of its choice. 605 F.3d at 1380-81. In balancing these conflicting interests, a

district court has broad discretion to decide what degree of protection is required. Id. at 1380

(citing Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984); Brown Bag Software v. Symantec

Corp., 960 F.2d 1465, 1470 (9th Cir. 1992)).

HPL argues that the prejudice of the proposed prosecution bar to HPL would be

enormous. According to HPL, Defendants belatedly seek to modify the protective order to add a

prosecution bar at the most critical stage of these proceedings and when a modification to the

protective order currently in place would create an unfair tactical advantage for Defendants and

be severely prejudicial to HPL, particularly in its ability to defend the reexamination and

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post-grant review PTO proceedings initiated by Defendants. Defendants disagree and argue that

HPL and its counsel will not suffer any injury or prejudice as a result of the proposed prosecution

bar because, as Defendants assert, the bar sought is narrow and thus will negate any resultant

harm. Specifically, Defendants seek a bar that would prevent HPL’s counsel from prosecuting

patent claims that cover the technologies described in the Defendants’ confidential technologies

and that counsel would only be prevented from participating in the drafting of claims that would

cover the confidential information that they reviewed.

The Court recognizes that Defendants raise a legitimate concern that their confidential

information could be competitively misused and that such use would be improper. The risk of

competitive misuse of Defendants’ confidential information, however, is outweighed by the

significant harm HPL would suffer if HPL were denied the counsel of its choice in both its patent

prosecution and the reexaminations. HPL’s counsel has been representing HPL in litigation in

this Court and before the PTO for years, including the multiple rounds of reexaminations filed by

Defendants in this case. Defendants raised the issue of a prosecution bar almost two years ago

but did not seek relief from this Court until now. 

While the Court does not find that Defendants waived the argument as counsel for HPL

argues, the delay does raise some question as to the propriety of entering a prosecution bar this

late in the litigation when Defendants initially raised the issue with HPL’s counsel almost two

years ago but did nothing to follow through when HPL objected. The playing field would have

been more level had Defendants sought relief from the Court on this issue prior to the production

of Defendants’s documents. If the Court had modified the default protective order to include a

prosecution bar at that time, HPL’s counsel could have made a more informed decision about

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which of HPL’s counsel should be reviewing Defendants’ documents so as to shield some of 

HPL’s attorneys from any prosecution bar that may have been entered at the time. 

Defendants did not front the issue at the outset, however, and now HPL would suffer even

more prejudice by not having its chosen counsel so late in the litigation both in this Court and in

the patent examinations before the PTO. As the district court in Xerox Corp. v. Google, 270

F.R.D. 182 (D. Del. 2010) recognized:

[P]laintiff’s trial counsel have acquired expertise in the patents-in-suit as well as the

relationship between plaintiff’s claim language and the prior art. Forcing plaintiff to

rely on less knowledgeable counsel during reexamination would thus increase costs

and duplicate effort. Plaintiff also has a legitimate interest in formulating a coherent

and consistent litigation strategy. While a parallel reexamination proceedingmaynot

formally be part of this litigation, choices made before the PTO nonetheless have

consequences in this court. The validity of reexamined and amended claims, for

example, will ultimately have to be explained and defended before a jury in this

litigation. Trial counsel are better suited to assess claim language to this end than

reexamination counsel, who practice before the PTO and do not try cases to a jury. 

Additionally, because reexamination (especially inter partes reexamination) is an

increasingly important venue for challenging a patent’s validity, preventing trial

counsel exposed to defendants’ confidential information from fully participating in

reexamination proceedings would force plaintiff to split its resources between two

fronts of the same war.

270 F.R.D. at 185 (internal citations and footnotes omitted). Similarly, this Court is not

convinced that the risk of disclosure, even though it may be high, outweighs the prejudice from

denying HPL access to its chosen counsel. The District Court in Arizona also found in favor of

HPL on this very point:

Counsel for [HPL], including Mr. Kappes and Mr. Lisa, have represented [HPL] both

in litigation and before the PTO for many years and are deeply familiar with the

patents at issue here. Depriving [HPL] of the specialized representation that its

counsel can provide in this case would force them to rely on less knowledgeable

counsel, either in this litigation or before the PTO, and “thus increase costs and

duplicate effort.” Xerox, 270 F.R.D. at 185. Because that harm outweighs the

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speculative risk of inadvertent disclosure, Defendants have not met their burden of

establishing good cause for a patent prosecution bar.

Judge Wake 12/5/12 Order, at *3.

In conclusion, Defendants have failed to show good cause to modify the default

protective order to add a prosecution bar. The Court concludes that the risk of inadvertent or

competitive use of Defendants’ confidential information by HPL’s counsel is outweighed by the

significant harm that HPL would suffer if it were denied the full benefit of its chosen counsel,

particularly at this stage in the litigation in this case and given the status of the reexaminations

before the PTO. The Court, however, recognizes, as did the District Court in Arizona, that “[t]he

risk that any confidential information could be used in future patent claims or reexamination can

be mitigated without the harm of a prosecution bar by adding specific protection against such use

in the protection bar in this case.” Judge Wake 12/5/12 Order, at *4. To that end, this Court

adopts the same requirement used by the District Court in Arizona to modify the default

protective order and require that HPL not rely on highly confidential information disclosed by

Defendants in this case in any proceeding before the PTO. The Court notes that such a restriction

may be implicit in the default confidentiality order, but it does not hurt to make it explicit.

Accordingly, the Motion to Modify the Default Protective Order is denied. The parties,

however, shall submit a revised protective order that is consistent with the modified protective

order entered in the related Arizona case. The modified protective order should be submitted

electronically to Magistrate Judge Gilbert’s Proposed_Order_Gilbert@ilnd.uscourts.gov for the

Court’s review and so that it can be entered electronically. 

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It is so ordered.

Dated: June 21, 2013

_____________________________

Jeffrey T. Gilbert

United States Magistrate Judge

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