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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

METHODE ELECTRONICS, INC.,

Plaintiff/Counter-Defendant, Civil Action No. 09-CV-13078

District Judge Paul D. Borman

Magistrate Judge Virginia M. Morgan

v.

DPH-DAS LLC, f/k/a DELPHI 

AUTOMOTIVE SYSTEMS LLC,

Defendant/Counter-Plaintiff,

and

MARIAN, INC., 

Defendant 

__________________________________/

DPH-DAS LLC, f/k/a DELPHI 

AUTOMOTIVE SYSTEMS LLC,

Plaintiff, Civil Action No. 09-14303

v.

METHODE ELECTRONICS, INC.,

Defendant. 

__________________________________/

OPINION AND ORDER 

(1) AFFIRMING AND MODIFYING THE MAGISTRATE JUDGE’S NOVEMBER 17, 2009

OPINION AND ORDER GRANTING IN PART DELPHI’S MOTION FOR PROTECTIVE

ORDER AND DENYING METHODE’S MOTION FOR PROTECTIVE 

ORDER (DKT. NO. 42) AND

(2) DENYING METHODE’S OBJECTIONS TO THE MAGISTRATE JUDGE’S NOVEMBER

17, 2009 OPINION AND ORDER(DKT. NO. 44)

Before the Court are Plaintiff Methode Electronics, Inc.’s (“Methode”) Objections to the

Magistrate Judge’s November 17, 2009 Opinion and Order Granting in Part and Denying in Part

Case 2:09-cv-13078-PDB-VMM Document 62 Filed 01/19/10 Page 1 of 15
1 As a result of a clerical error, this Court entered a Protective Order submitted by Defendant DPHDAS LLC (“DPH”) on December 1, 2009 (Dkt. No. 47), which incorporated terms as ordered in

the Magistrate Judge’s November 17, 2009 Opinion and Order. When this Court entered its

December 1, 2009 Order, it was under the mistaken belief that no timely objections to the Magistrate

Judge’s Opinion and Order had been filed. On January 4, 2010, the Court entered an Order setting

aside its December 1, 2009 Protective Order and setting a hearing for January 8, 2010 on Methode’s

timely-filed objections to the Magistrate Judge’s November 17, 2009 Opinion and Order, which the

Court now addresses in this Opinion and Order. 

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Delphi’s Motion for Protective Order and Denying Methode’s Motion for Protective Order.1

 (Dkt.

No. 44.) This Court held a hearing on January 8, 2010. For the reasons stated herein, the Court

affirms and modifies the Magistrate Judge’s November 17, 2009 Opinion and Order and denies

Methode’s objections to that Order.

I. BACKGROUND

In this patent action, Defendant DPH-DAS LLC f.k.a. Delphi Automotive Systems LLC

(“DPH”) and Plaintiff Methode both hold patents related to technology involving bladders in

automobile car seats that detect the weight of a passenger. Methode claims that DPH is infringing

its patent and DPH respondsthat it is not guilty of infringement and that Methode’s patent isinvalid.

The parties agree that a protective order is necessary to protect the parties’ confidential commercial

information and intellectual property but disagree on the terms of such an order. Specifically, the

parties cannot agree on the appropriate terms of the provision of the protective order which restricts

access to Attorneys Eye Only (“AEO”) information by litigation counsel who are also patent

prosecution counsel.

The essence of the dispute is whether Mr. Wolfe, who serves as both litigation and patent

prosecution counsel for Methode, or someone acting in his same capacity, should be considered a

“competitive decisionmaker” and therefore should be barred from prosecuting patents and at the

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2 At the January 8, 2010 hearing, which Mr. Wolfe attended, counsel for Delphi and Methode

confirmed that Mr. Wolfe is the sole attorney whose access to AEO materials is currently at issue.

(Transcript of Oral Argument, January 8, 2010, Methode Elec., Inc. v. Delphi and Marian, No. 09-

13078 consolidated with Delphi Automotive Sys. LLC. V. Methode Elec., Inc., No. 09-14303, 17:9-

14. Hereinafter cited as “Tr. --.”

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same time participating in litigation involving the same or similar patents and/or technology.2 The

principal paragraph at issue, as proposed by DPH, provides: 

5. Access to Confidential-Attorneys Only Information. Access to

information designated as ‘ATTORNEYS EYES ONLY’ shall be

limited to, and only to, those persons listed in paragraphs 4(a)

through 4(c) and 4(e) through 4(g), except that no person for the

defendant, including attorneys, who participates in, aides in, advises

or counsels concerning the preparation, filing and/or prosecution of

patent applications in any country, including any interference,

reissue, reexamination or other proceeding, relating to occupant

sensing technologies and/or the subject matter of U.S. Patent Nos. 5,

975, 568, 7, 237, 443, Des 409, 935 and/or related patents and patent

applications shall be permitted access to documents marked

“ATTORNEYS EYES ONLY.” Further, persons described in

paragraph 4(d) shall not be given access to documents marked

“ATTORNEYS EYES ONLY. (Emphasis added).

On November 17, 2009, the Magistrate Judge entered an Opinion and Order which adopted

this language, deleting the italicized words “the defendant” and substituting the words “any party,”

thereby making the provisions of this paragraph applicable to both Methode and DPH. (Dkt. No.

42.) 

Methode objects to the Magistrate Judge’s November 17, 2009 Opinion and Order arguing

that the Opinion and Order is clearly erroneous and contrary to applicable law because: (1) “it fails

to apply the ‘competitive business decisionmaker test’ to all parties equally and because the patent

prosecution bar adopted by the Court does not comport with the ‘competitive business

decisionmaker’ test established by the Federal Circuit for use in patent cases”; and (2) “it failed to

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3 The parties agreed, at the January 8, 2010 hearing, to engage in further efforts to resolve among

themselves the issues surrounding the second objection relating to experts. (Tr. 40:2-9.) This

Opinion, therefore, addresses only the first of Methode’s objections. 

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adopt a protective order that implemented reciprocal restrictions on the parties’ selection of

consultants and experts underthe FederalCircuit’s competitive decisionmaking test.” (Methode Br.

Support Obj., Dkt. No. 45, p. iii.)3

II. ANALYSIS 

The Court finds that the Magistrate Judge’s November 17, 2009 Opinion and Order was not

clearly erroneous or contrary to applicable law and that the Magistrate Judge correctly applied the

“competitive business decisionmaker test” to the facts of this case, in adopting in part DPH’s

proposed protective order and denying Methode’s motion for a protective order. The Court,

however, modifies the Magistrate Judge’s November 17, 2009 Opinion and Order to clarify the

parameters of that Opinion and Order relating to paragraph 5 of DPH’s proposed protective order,

and provides the necessary discussion of the “harm” factor insofar as it applied to Methode under

this Order.

1. The Competitive Decisionmaker Test 

The competitive decisionmaker test was first articulated by the Federal Circuit in Untied

States Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984). Discussing the “problem and

importance of avoiding inadvertent disclosure” of a party’s highly confidential material in the course

of litigation, the court refused to draw a bright line distinction between in-house and retained

counsel, and cautioned that determining whether there was an “unacceptable opportunity for

inadvertent disclosure” was a case-by-case, fact-specific task. (Id. at 1468). The court then

acknowledged that the “competitive decisionmaking” inquiry could be a meaningful basis for

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determining whether or not access to highly confidential material should be granted:

The parties have referred to involvement in “competitive decisionmaking” as a basis

for denial of access. The phrase would appear serviceable as shorthand for 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.

730 F.2d at 1468 n.3. This test has been employed, with widely varying results, in the context of

patent litigation, to determine whether or not a court should adopt a protective order that restricts

an accused infringer’s litigation counsel access to certain confidential information, i.e. a “patent

prosecution bar.” 

Methode argues that the unpublished decision of the Federal Circuit in In Re Sibia

Neurosciences, Inc., 1997 U.S. App. LEXIS 31828 (Fed. Cir. Oct. 22, 2997), is “controlling

authority,” and that the Magistrate Judge failed to follow this decision in her Opinion and Order.

The court in In Re Sibia cautioned that denying access to a party’s outside counsel solely on the

ground that such counsel also prosecute patents is “the type of generalization counseled against in

U.S. Steel. The facts, not the category, must inform the result.” Id. at * 6. The court refused to issue

a writ of mandamus directing the district court to vacate its order which allowed access to all of

defendant’s outside counsel. Id. at * 4. The court found it “significant” that the attorney to whom

access was denied, who admitted that he was involved in prosecuting patents for defendant in the

area involved in the underlying action, “stated that he was not involved in ‘competitive

decisionmaking.’” Although no findings had been made in the district court as to the attorney’s

involvement in pricing or product design, the court relied on the district court’s holding that “none

of the indicia of ‘competitive decisionmaking’ [were] present [there].” Id. at * 7-8. 

Other courts have relied on In Re Sibia,some requiring evidence ofinvolvementspecifically

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with “pricing or product design,”in refusing to find that patent prosecution counsel are competitive

decisionmakers. Cf. Avocent Redmond Corp. v. United States, 85 Fed. Cl. 640, 645 (Fed. Cl. 2009)

(holding that patent prosecution attorneys currently working on reexamination proceedings

concerning three of the four patents at issue were not competitive decisionmakers); Greenstreak

Grp., Inc. v. P.N.A. Construction Technologies, Inc., 251 F.R.D. 390 (E.D. Mo. 2008) (finding the

absence of evidence as to outside counsel’s involvement in pricing and product design persuasive

on the absence of competitive decisionmaking); Pergo, Inc. v. Faus Grp., Inc., No. 5:05-CV-FL(1),

2005 U.S. Dist. LEXIS 40601 (E.D.N.C. September 20, 2005) (where counsel in question was not

involved with patents relevant to the subject matter of the case and never advised on matters of

product pricing, design, invention, research or development or product marketing and/or sales,

counsel was not a competitive decisionmaker); Island Intellectual Prop. LLC v. Promontory

Interfinancial Network., LLC, No. 09-cv-2675, 2009 WL 3026831 (S.D.N.Y. Nov. 18, 2009)

(cautioning against a prohibitive per se ban on the use of litigation counsel who also prosecute

patents).

However, as DPH argues and as the Magistrate Judge concluded, there are numerous cases

which rejectsuch a strict reading of the In Re Sibia decision. These cases hold, often relying on the

reasoning of the court in Motorola v. Interdigital Technology Corp., No. 93-488-LON, 1994 WL

16189689 (D. Del. Dec. 19, 1994), that in certain circumstances, patent prosecution can rise to the

level of “competitive decisionmaking.” In Motorola, the court upheld a protective order provision

that prevented attorneys who received confidential information from prosecuting patents on behalf

of the defendant during the pendency of the case and for one year after the conclusion of the

litigation, including appeals. Id. at * 3. Noting that the attorneys in question were “prosecuting

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patents that are directly at issue in the present litigation,” the court found that the threat of

inadvertent disclosure was humanly insurmountable: 

DS&M is currently prosecuting applications relating to the very patents at issue in

this litigation. Attorneys who were to view Motorola’s voluminous confidential

information and then later prosecute the patents would have to constantly challenge

the origin of every idea, every spark of genius. This would be a sisyphean task, for

as soon as one idea would be stamped “untainted”, another would come to mind.

The level of introspection that would be required is simply too much to expect, no

matter how intelligent, dedicated, or ethical the DS&M attorneys may be. 

Id. at * 5. The court was persuaded by Motorola’s argument that patent prosecution presented the

opportunity for opposing counsel to “make the claims read on new products and new directions

where [the competitor] project[s]sales to be most critical. And [to] forget about the ones that relate

to products that are going to die.” Id. at * 4. The court concluded: “Accepting that [plaintiff’s

president] is a man of great moral fiber, we nonetheless question his human ability during future

years of research to separate the application he extrapolated from [defendant’s] documents from

those he develops from his own ideas.” Id. (Internal quotation marks and citations omitted). 

Many courts have relied on the Motorola reasoning to uphold prosecution bars, or

alternatively, as the Magistrate Judge’s order does here, to deny counsel prosecuting patents access

to confidential information produced in litigation. Cf. Presidio Components, Inc. v. Amer.

Technical Ceramics Corp., 546 F. Supp. 2d 951, 958 (S.D. Cal. 2008) (recognizing both the In Re

Sibia and Motorola lines of cases and denying Presidio’s patent prosecution counsel accessto AEO

information where counsel would be making “decisions involving scope and emphasis, such as

drafting claims to read on new products and new directions ‘where [a party] projects sales to be

more critical’”, and distinguishing Sibia as having been decided before the significant post-Motorola

line of cases); Phoenix Solutions Inc. v. Wells Fargo Bank, N.A. et al., 254 F.R.D. 568, 580 n. 3

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(N.D. Cal. 2008) (denying patent counsel involved in prosecuting “patents-in-suit” accessto highly

confidential material, refusing to consider the unpublished decision in In Re Sibia and finding

counsel’s contention that In Re Sibia was controlling to be improper); Northbrook Digital, LLC v.

Vendio Services, Inc., 625 F. Supp. 2d 728, 759-760 (D. Minn. 2008) (noting that competitive

decisionmaking is much more likely to be implicated “where there is a relationship between the

prosecution and the patents-in-suit”);Commissariat A L’Energie Atomique v. DellComputerCorp.,

No. 03-484-KAJ, 2004 WL 1196965 at * 3 (D. Del. May 25, 2004) (holding that where CEA’s

patent attorneys were prosecuting patents in the field of technology involved in the litigation, they

must be barred from having access to Dell’s highly confidential information or be prohibited from

prosecuting patents in that field of technology for one year following conclusion of the litigation);

In Re Papst Licensing, No. MDL 1278, 2000 WL 554219 at * 3 (E.D. La. 2000) (recognizing that

“[s]everal district courts have determined that competitive decisionmaking also includes advice and

participation in prosecuting patent applications related to the patents in suit” and ordering a

restriction on counsel who access confidential information from prosecuting patents related to the

subject matter of the patents at issue in the litigation during the pendency of the case and for one

year after conclusion of the litigation); Mikohn Gaming Corp. v. Acres Gaming Inc., No. CV-S-97-

1383, 50 U.S.P.Q.2d 1783, 1785 (D. Nev. April 15, 1998) (finding Motorola persuasive where the

challenged law firm was prosecuting patents related to the very patents in suit). 

2. The Magistrate Judge’s Application of the Competitive Decisionmaker Test

In its brief in response to Methode’s motion for a protective order, DPH set forth the facts

that it contends bring Methode’s outside counsel, Charles Wolfe, within the definition of a

competitive decisionmaker in this case: “[I]t is not merely the fact that Methode’s chosen litigation

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counsel prosecutes patents generally that makes them ‘competitive decisionmakers,’ but rather, it

is their active role and long tenure in specifically shaping Methode’s bladder-based occupant

detection technology patents, and the fact that such shaping can be applied to currently pending

patent applications, that bringsthemwithin the scope of a ‘competitive decision maker’ in this case.”

(DPH Br. Resp. Mot. Protec. Order, Dkt. No. 33 p. 7.) Mr. Wolfe confirmed, at this Court’s

January 8, 2010 hearing, that he is currently involved (although he has temporarily recused himself

pending this Court’s decision on the challenged protective order) in an ongoing patent continuation

proceeding involving the very patents, the very technology, at issue in this case. (Tr. 39:12-22.)

 At the January 8, 2010 hearing, counsel for DPH elaborated further on why Mr. Wolfe’s

patent prosecution activities bring him within the definition of a competitive decisionmaker for

Methode:

THE COURT: So what does Mr. Wolfe do, do you believe, puts him into the

competitive decisionmaking box?

* * *

MR. SHIFLEY: He does not have an in-house counsel or an in-house patent counsel

to whom he relates. He is patent counsel especially in this matter of a continuation

application that now protects a non – or a defunct business. So it’s not really

protecting anything for Methode, but is there – it must be there for a purpose. Its

purpose at this point can only be to wait for a look at what Delphi is about to do.

And he is then the patent counsel. And it is a fact that the things we patent lawyers

do are so different thatsometimes we don’t speak the same language. He speaks the

language of patent claims. He will recommend them to the client who, in all

likelihood, will expressif it’sright with you, it’sright with me because I don’tspeak

your language. It is the relationship of patent lawyers to their clients where they

don’t have in-house patent counsel to relate to this, and this Methode does not. So

he istruly foursquare right there in the drafting of claims, making the decision about

what the claims will be because the review that will occur is so limited. And that is

how he’sthe competitive decisionmaker. It will be something as to his advice in the

participation in that client’s decisions made in light of similar or corresponding

information about a competitor.

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* * *

THE COURT: What is your fear? Tell me what your fear is. I mean I think I

understand. He’s going to get the information, use it on his other side of the street

matter.

MR. SHIFLEY: Yes. That’s exactly it, that he will write patent application claims

that he wouldn’t otherwise write and get patent rights for this company that isin this

high stakes dispute with Delphi and DPH and Marian and he will get property rights

in the Patent Office that he wouldn’t have otherwise gotten and that will cause

complications, potentially another lawsuit in the future and further infringement, that

wouldn’t have otherwise existed. To some extent, there’s almost no reason for this

continuation to exist. You know again, they’re not in the business, so why they’re

pursuing this, I can only believe, is because we exist and have stopped their supply.

But, otherwise, we already have a patent. So what they’re about is clearly getting a

different patent, different claims, something of another scope. And they can do that

because this is not like a re-examination. They can pursue different claims, claims

of a kind they didn’t pursue the first time around. In fact, my understanding is that

that’s what the claims are that are being sought right now. They are different claims.

They have a different scope. They go in a different direction. And the one

application is not the only possible application because continuations can be filed on

continuations. So we could shortly see a flurry of applications, all of which would

be directed to some other facet of this situation, and we’d have not this patent that

we are Defendant to but we’d have a future in which we could potentially be the

Defendant to many different patents, creating a thickening problem for us. We

shouldn’t have that.

(Tr. 24:18-25:17; 28:20-29:24.)

In the November 17, 2009 Opinion and Order, the Magistrate Judge acknowledged the nature

ofMr.Wolfe’s patent prosecution activities asthey relate to the patents-in-suit, and the potential that

his position creates for competitive harm to DPH:

The reply brief of Delphi is helpful in explaining the issues and focuses on how

disclosure ofthe technology to attorneys who are not only litigating this case but also

prosecuting similar patents would make them ‘competitive decision makers’ in this

case. Currently, Charles Wolfe of the law firm Blank Rome is both litigation

attorney and patent prosecution counsel. He is long tenured with Methode in this

arena. The attorney’s history and ability to shape the context of patent applications

and to amend claims, including the ones at issue here, makes him especially

susceptible to using, even without awareness, information provided in the litigation.

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His activities constitute ‘competitive decision making’ and inadvertent disclosure or

use is a substantial issue. 

(Opinion and Order, Dkt. No. 42 p. 7.) The Magistrate Judge acknowledged and followed the

mandate of US Steel, supra and was on solid ground in considering the reasoning of the courts in

Motorola, Presidio, Phoenix, Northbrook Digital, Commissariat, In Re Papst and Mikohn, supra

in concluding that Mr. Wolfe is a competitive business decisionmaker under the facts of this case.

Mr. Wolfe confirmed to this Court at the January 8, 2010, that he currently is involved in a patent

continuation proceeding relating to the very patents at issue in this lawsuit. Mr. Wolfe’s ability to

apply DPH’s AEO information that he may learn through his participation in this lawsuit to shape

the claims in those continuation proceedings, and to make the claims “read on” new products, brings

him squarely within the concept of a “competitive business decisionmaker” as that term was defined

by the court in US Steel. This Court agrees with the discussion in Mikohn, supra:

As applied to the present case, the court finds Motorola persuasive. [Defense

counsel] is prosecuting patent applications that are not merely related to the patents

in suit, they are part of the very core of this suit. . . . Hence, in light of the claims

made in this lawsuit, the advice rendered by [defense counsel] is intensely

competitive.

50 U.S.P.Q.2d at 1785. See also In re Papst, supra, 2000 WL 554219 at * 4 (“[I]t is clear that the

advice and participation of the Papst parties’ counsel in the preparation and prosecution of patent

applications related to the patents in suit is an intensely competitive decisionmaking activity and

would be informed by access to non-Papst parties’ confidential information. Counsel’s ability to

file new claims in existing and pending patents based on the confidential information discovered

during the course of the litigation poses an unacceptable opportunity for inadvertent disclosure and

misuse.”). 

At the January 8, 2010 hearing on Methode’s objections, counsel for Methode sought to

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convince the Court that Mr. Wolfe would be able to “compartmentalize” such information and abide

by his ethical duty not to utilize such information in his patent prosecution activities. Counsel’s

argument, however, ignores the very essence of the court’s holding in US Steel, i.e. the risk of

inadvertent disclosure, despite counsel’s best ethical intentions: “Inadvertence, like the thief-in-thenight, is no respecter of its victims. Inadvertent or accidental disclosure may or may not be

predictable. To the extent that it may be predicted, and cannot be adequately forestalled in the

design of a protective order, it may be a factor in the access decision.” US Steel, supra at 1468. US

Steel instructs that inadvertent disclosure of sensitive information is a palpable risk and this Court

concludes that the Magistrate Judge correctly decided that the opportunity for such disclosure by

Mr. Wolfe in this case justifies denying him access to DPH’s AEO information.

Methode also objects that the restriction on access to AEO information adopted by the

Magistrate Judge in paragraph 5 of DPH’s proposed protective order erroneously fails to include a

limitation on the length of time for which Mr. Wolfe might be prohibited from returning to his patent

prosecution activities in the event that he does gain access to DPH’s AEO information. The Court

agrees that paragraph 5 is unclear on what options Mr. Wolfe might have in the event that he opts

to cease his patent prosecution activities and participate as litigation counsel with full access to

DPH’s AEO information. Accordingly, the Court adopts DPH’s proposed order, as modified by the

Magistrate in the November 17, 2009 Opinion and Order, and adds the following language to clarify

the intent of paragraph 5:

During the pendency of this litigation, and for one year after the full

and final conclusion of this litigation, including all appeals, attorneys

who are provided access to ATTORNEYS EYES ONLY Information

shall not draft, file or prosecute, or advise or counsel or assist in any

way in the preparation, drafting, filing or prosecuting, of any patent

applications, including amendments thereto, including but not limited

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to new, continuation, divisional or continuation-in-part applications,

before any United States or foreign agency, for any products related

to the subject matter described by or claimed in U.S. Patent Nos.

5,975, 568, 7,237, 443 Des 409,935 and/or related patents and patent

applications.

The Court concludes that this language gives Methode the choice of denying Mr. Wolfe

access to AEO information, which would allow him to continue his patent prosecution activities, or

alternatively allowing Mr. Wolfe access to AEO information, and restrict his future patent

prosecution activities accordingly. See Commissiariat, supra at * 3 (adopting a similar provision

which “strikes the proper balance between ‘the goals of full disclosure of relevant information and

reasonable protection against economic injury’ that are implicated in patent infringement cases

generally, and certainly in this case.”) (citations omitted). The Court notes, further, that the district

judge in Motorola also adopted a one-year ban on patent prosecution. “This remedy is broad enough

to protect Motorola’s confidential information yet seeks to minimize the hardship to both ITC and

DS&M.” 1994 WL 16189689 at 6. See also In re Papst, supra at * 4 (adopting a one year patent

prosecution ban). This Court follows that course and that reasoning. 

Methode also argues that the Magistrate Judge erroneously failed to consider the hardship

to Methode if Mr. Wolfe is barred from accessing AEO information and simultaneously continuing

to prosecute the patents in suit. This Court finds that while the Magistrate Judge alluded to the

mandate of US Steel that hardship to the party denied access must be considered, her opinion failed

to articulate findings on the issue of hardship. Accordingly, this Court invited counsel for both

parties to fully discuss the hardship issue at the January 8, 2010 hearing, heard their arguments, and

will proceed to discuss and decide this issue, rather than remand this issue to the Magistrate Judge

for further proceedings.

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This Court concludes that any hardship to Methode that may flow from restricting Mr.

Wolfe’s access to the AEO material or alternatively, at Methode’s option, from restricting his ability

to participate in patent prosecution activities during this litigation and for one year beyond its

conclusion if he chooses to access AEO information, does not outweigh the potential for competitive

harm to DPH if Mr. Wolfe were permitted to access DPH’s AEO Information while continuing to

prosecute patents related to the very patents at issue in this lawsuit. Counsel for DPH represented

to the Court at the January 8, 2010 hearing, and counsel for Methode did not disagree, that Mr.

Wolfe is not the only patent lawyer familiar with the patents at issue in this lawsuit and that in fact

Mr. Wolfe did not originally gain the patents in suit on behalf of Methode and his history does not

date back to the origins of the patents in suit:

MR. SHIFLEY: Again, [Mr. Wolfe is] not the only patent lawyer that Methode has.

True he says these are other technologies where other firms are involved. He’s not

the only patent lawyer Methode has ever involved in this technology because he

didn’t get the patent in suit. He’s not the only lawyer involved because he hasn’t

signed for everything and done everything. He has, in fact, had another lawyer of

his firm sign and acting. So in his specific situation the hardship is not very much.

It’s one application. It’s one lawyer who doesn’t have a history back to the origins

of this matter.

(Tr. 35:2-11.)

Thus, while it appears that Mr.Wolfe is currently, and has been for some time, Methode’s

main prosecution counsel on the technology at issue in this case, it does not appear that he is

singularly informed on the patents at issue. Moreover, it appears that the current continuation

proceeding related to the patents in suit in which Mr. Wolfe seeks continued involvement are in a

very inactive stage and relate to patents on products that Methode does not currently manufacture.

Conversely, it seems apparent that if Mr. Wolfe were to obtain DPH’s AEO information relating to

the patents in suit, he could do great competitive harm to DPH if he were given the opportunity to

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apply this knowledge, even inadvertently, to the claims currently under prosecution. 

III. CONCLUSION

Accordingly, this Court (1) affirms and modifies the Magistrate Judge’s November 17, 2009

Opinion and Order Granting in Part Delphi’s Motion for Protective Order and Denying Methode’s

Motion for Protective Order and (2) denies Methode’s Objections to the Magistrate Judge’s

November 17, 2009 Order. That Protective Order will apply with respect to Charles Wolfe, Esq.,

during and for 1 year after the final conclusion of the instant lawsuit, including all appeals.

IT IS SO ORDERED.

s/Paul D. Borman 

PAUL D. BORMAN

UNITED STATES DISTRICT JUDGE

Dated: January 19, 2010

CERTIFICATE OF SERVICE

Copies of this Order were served on the attorneys of record by electronic means or U.S. Mail on

January 19, 2010.

s/Denise Goodine 

Case Manager

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