276 F.R.D. 237
N.D. Ill.2011Background
- The court had stayed the patent infringement case on June 8, 2011 pending USPTO reexamination of the '923 patent.
- Technology Research Group (TRG) moved to amend the Protective Order to allow counsel with CME confidential material to participate in the '923 reexamination and to unseal filings related to CME's summary judgment of invalidity.
- The Protective Order (Oct. 6, 2009) bars prosecution or preparation of patents relating to the technology in dispute, including reexamination proceedings, by any recipient of Confidential or Highly Confidential material.
- TRG argued the modification was needed to ensure the USPTO could consider all relevant facts for the reexamination.
- The court applied a four-factor test for protective order modification and held the factors weighed against modification, concluding no good cause existed and there was risk of inadvertent disclosure.
- The court granted TRG’s request to unseal CME’s filings related to CME’s summary judgment of invalidity, finding CME failed to show good cause for ongoing secrecy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| May the Protective Order be modified to allow TRG's counsel to participate in the reexamination? | TRG: modification needed to inform the USPTO; counsel have accessed CME confidential info. | CME/TRG: modification risks inadvertent disclosure and undercuts negotiated terms; foreseeability and reliance weigh against modification. | Modification denied; TRG’s counsel cannot participate in reexamination. |
| Should CME's filings related to its summary judgment of invalidity be unsealed? | TRG: unsealing provides the USPTO with relevant documents. | CME: strong good cause exists to maintain secrecy due to competitive harm. | Unsealing granted; CME failed to prove good cause for continued secrecy. |
| Whether the stay of the case should be lifted pending reexamination? | TRG suggested lifting stay to expedite reexamination and litigation. | CME opposed lifting stay; not addressed in the holdings beyond assessment of protective-order modifications. | Stay not lifted. |
Key Cases Cited
- Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., 234 F.R.D. 175 (N.D. Ill. 2006) (four-factor test for protective-order modification)
- Cnty. Materials Corp. v. Allan Block Corp., 502 F.3d 730 (7th Cir. 2007) (judicial discretion in protecting discovery needs)
- Barzingus v. Wilheim, 306 F.3d 17 (10th Cir. 2010) (protective-order modification in patent context)
- In re Bank One Sec. Litig., 222 F.R.D. 582 (N.D. Ill. 2004) (good-cause standard for confidentiality and continued secrecy)
- Rivera v. NIBCO, Inc., 384 F.3d 822 (9th Cir. 2004) (specificity required to establish good cause for secrecy)
- Matter of Krynicki, 983 F.2d 74 (7th Cir. 1992) (protective-order rulings and public-process access)
- Kronos, Inc. v. E.E.O.C., 620 F.3d 287 (3d Cir. 2010) (heavy burden to show good cause for confidentiality)