On Junе 8, 2011, the Court stayed this patent infringement ease pending the outcome of the USPTO’s reexamination of U.S. Patent No. 5,963,923 (the “'923 patent”). (R. 289, Order.) On July 8, 2011, Technology Research Group (“TRG”) filed a motion to amend a prоtective order that was entered in this case and to unseal certain documents. (R. 294, TRG Mot.) Specifically, TRG asks the Court to “(1) amend the Protective Order entered on October 6, 2009, to expressly allow TRG’s counsel that has had access to confidential material to participate in the reexamination proceeding; and (2) unseal all filings associated with the CME’s Motion for Summary Judgment of Invalidity.” (Id. at 3.) Acсording to TRG, “[granting these requests will ensure that the [USPTO] can make an informed decision based upon all relevant facts and will expedite the reexamination proceeding.” (Id.) Alternatively, TRG asks the Court to lift the stay. (Id. at 12-13.) For the reasons statеd below, the motion is granted in part and denied in part.
DISCUSSION
I. Amending the Protective Order
Under Rule 26(c) of the Federal Rules of Civil Procedure, a court may enter a protective order for good cause to protect a party from “annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R.Civ.P. 26(c). On October 6, 2009, the Court entered a protective order in this case which reads, in relevant part, as fоllows:
b. Any person who receives any document designated as Confidential or Highly Confidential shall not prosecute or prepare any patent or patent application relating to (i) the technology disclosed or claimed in any patents or patent applications produced during this case or (ii) trading, trade execution, clearing or processing of commodities, futures, derivatives or securities. The obligations of the paragraph extends to any and all proceedings, including but not limited to reissue or reexamination proceedings, before the United States Patent and Trademark Office or any other patent office worldwide.
(R. 74, Protective Order ¶ 4(b).) As a threshold matter, the Court notes that Paragraph 4(b) applies to the reexamination proceedings relatеd to the '923 patent that were initiated by CME. According to TRG, Paragraph 4(b)’s prosecution bar does not apply because it does not explicitly refer to a reexamination of the '923 patent. (R. 299, TRG Rеply at 4.) This argument, the Court concludes, is unpersuasive given the unambiguous language of the Protective Order. By its terms, it applies to “any and all proceedings,” then goes on to specifically mention “rеexamination proceedings” as a type of proceeding that falls within its coverage. TRG’s attempts to place the '923 patent’s reexamination proceedings outside of the Protective Order’s scope fall flat. Given this conclusion, the Court must determine whether the protective order must be modified to allow TRG’s litigation counsel and designated representatives that have had access to CME’s confidential information to participate in the '923 patent reexamination proceeding.
The party requesting the modification of a protective order has the burden of proving good cause for its proposed modification. Murata Mfg. Co., Ltd. v. Bel Fuse, Inc.,
These factors weigh against modifying the Protective Order. First, the Court notes that the prosecution bar in Paragraph 4(b) was specificаlly negotiated by the parties. Because it was specifically negotiated by the parties, a modification at this juncture should be viewed with a critical eye. Cf. Kyles v. J.K Guardian Sec. Sews.,
Second, the modification that TRG seeks was foreseeable at the time the Protective Order was entered. In its reply, TRG suggests that CME’s decision to file this aсtion in federal court made it unforeseeable that CME would subsequently initiate reexamination proceedings. (R. 299, TRG Reply at 4 n. 1.) This, in turn, would have also made a modification allowing TRG’s litigation counsel to pаrticipate in the reexamination proceedings unforeseeable. Given the “increased use of reexamination as an alternate or additional venue to challenge patent vаlidity where district court litigation has been initiated,” Robert Greene Stern et al., Reexamination Practice with Concurrent District Court Litigation or Section 337 USITC Investigations, 1031 PLI/Pat 165 (Practicing Law Institute 2011), any assertion that it was unforeseeable that CME would file a reexamination request is difficult to accept. While perhaps unexpected, the reexamination certainly cannot be deemed to have been unforeseeable. The foreseeability of a reexamination of the '923 patent thus undermines TRG’s assertion that the modification they are seeking was unforeseeable at the time the Protective Order wаs entered. This factor therefore also weighs against the modification of the Protective Order.
Third, the Court concludes that CME and third parties have relied upon the Protective Order in conducting discоvery. This consideration thus also weighs against the modification of the Protective Order.
Fourth, TRG has failed to carry its burden of showing good cause for the modification of the Protective Order. In its motion, TRG seems to suggest that good cause exists in this case because, absent the modification of the Protective Order, it will be faced with hiring another set of lawyers to represent it before the USPTO. Nowhere in their submissiоns to the Court, however, does TRG provide a persuasive basis for the Court to conclude that this burden constitutes good cause for the modification of the Protective Order. Again, this factor does nоt help TRG in its quest to amend the Protective Order.
Similarly, TRG has failed to carry its burden of establishing that there is not an unacceptable risk of or opportunity for the inadvertent disclosure of confidential infоrmation. Nothing TRG has presented to the Court establishes that this risk does not exist. Given these conclusions, the Court determines that a modification of the Protective Order which would allow TRG’s litigation counsel and dеsignated representatives that have had access to CME’s confidential information to participate in the '923 patent reexamination proceeding is not warranted. TRG’s motion is therefore denied to the extent it seeks this form of relief.
II. Unsealing certain filings
Next, TRG asks the Court to unseal all filings and documents associated with CME’s motion for summary judgment of invalidity. (R. 294, TRG Mot. at 7.) According to TRG, “[ujnsealing these filings is appropriate beсause it will allow TRG to provide the [USPTO] with the documents that the parties — TRG and the CME — have deemed the most relevant to the question of whether the '923 patent is valid.” (Id. at 7-8.)
“Any step that withdraws an element of the judicial рrocess from public view ... requires rigorous justification.” Matter of Krynicki,
Once a protective order is entered, a party must continue to show good cause for confidentiality when challenged. In re Bank One Sec. Litig.,
In this case, CME has failed to satisfy its heavy burden of establishing that it would suffer a “clearly defined and sеrious injury” if the filings and documents associated with its motion for summary judgment of invalidity are unsealed. In its response to TRG’s motion, the only injury that is presented to the Court is the following: “it is readily apparent that CME operаtes in a highly competitive field and public dissemination of information about CME’s business operations and technical information would subject CME to an undue risk of commercial or competitive harm. Good cause therefore exists for maintaining all of these [documents] under seal.” (R. 297, CME Mem. at 12.) Such a generalized claim of injury is insufficient to establish good cause under Rule 26. See, e.g., In re Bank One Sec. Litig.,
CONCLUSION
For the reasons stated above, TRG’s motion to amend the Protective Order and to unseal certain documents (R. 294) is GRANTED in part - and DENIED in part. The Court DENIES TRG’s request to lift the stay in this case.