In adjudicating disputes over what kind of prosecution bar should be entered, a court must first consider whether there is an “unacceptable risk of inadvertent disclosure or competitive use of confidential information, determined by the extent to which affected counsel is involved in “competitive decisionmaking” with its client.
In evaluating the potential for harm that is key to the second prong of the analysis, a court should consider factors such as “the extent and duration ofcounsel’s past history in representing the client before the [United States Patent and Trademark Office, or ‘PTO’], the degree of the client’s reliance and dependence on that past history, and the potential difficulty the client might face if forced to rely on other counsel for the pending litigation or engage other counsel to represent it before the PTO.” Id. at 1381.‘ In Deutsche Bank Trust Co.
Nov. 17, 2015) (explaining that the “[d]efendants bear the burden to show good cause for the protective [order] provisions, for which they advocate” including the “post-grant proceedings bar” that they sought); Inventor Holdings, LLC v. Wal-Mart Stores Inc., Civil Action No. 1:13-cv-00096 (GMS), 2014 WL 4370320, at *2 (D. Del.
Aug. 27, 2014) (Lukoff, Special Master) (“[D]eterrnining the existence and extent of an exemption shifts the burden to the party seeking to have its counsel participate in post-grant proceedings at the PTO.”); EPL Holdings, LLC v. Apple Inc. , No. C-12-043 06 JST (JSC), 2013 WL 2181584, at *2 (ND.
54 at 4) As a result, were LG’s proposal adopted, and if TSST-K wished to have its lead technical counsel be fully apprised of all relevant documents in this case (including those designated as “Protected Information” by the Protective Order), it would be required to jettison in the IPR proceedings the very lawyers who have already shepherded it through a substantial portion of that matter.