A Blog About Intellectual Property Litigation and the District of Delaware


Shield of Sir John Smythe (1534–1607)
Shield of Sir John Smythe (1534–1607), The Met

This week judges in the District of Delaware issued two orders regarding discovery disputes seeking relief from protective orders in patent actions. One granted relief, and one denied it. The contrast between the two is a great illustration of how you should and shouldn't argue for relief from a protective order.

How Not to Do It

In the first action, plaintiff Wildcat sought permission to disclose defendant's materials from the district court in a co-pending IPR to support its secondary considerations of non-obviousness. The protective order specifically allowed this:

All Protected Material shall be used solely for the above-captioned cases or any related appellate proceeding and/or proceedings before the United States Patent and Trademark Office (the “USPTO”).

As defendants pointed out, however, use in the IPR could involve disclosure of confidential material to other defendants, which was prohibited by the protective order:

Plaintiff shall not disclose one Defendant’s Protected Material to any other Defendant or Defendants

Plaintiff sought to modify the protective order to allow it to produce the information in the co-pending IPR, but did not forth any legal standard for modification and did not cite any caselaw.

As a result, the court easily rejected its request, despite the otherwise clear intent in the protective order to permit cross-use in an IPR:

ORAL ORDER: Having reviewed and considered the Motion for Teleconference to Resolve Discovery Dispute . . . Plaintiff's alternative request to modify the Protective Order is DENIED. Plaintiff's submission does not even mention the good cause standard, much less demonstrate it. If the PTAB grants Plaintiff's pending motion for discovery, Plaintiff can obtain the permitted discovery subject to the PTAB's ruling, rules, and procedures. . . . ORDERED by Judge Jennifer L. Hall on 2/4/2021.

The full order and cite is below.

The Better Way

In contrast, in the second action, defendant Intel Corporation moved for relief from the protective order so that it could use the information to support an amended complaint in a separate anti-trust litigation against plaintiff in the Northern District of California.

Unlike the plaintiff in the first action, Intel cited the Third Circuit standards for relief from a protective order, and walked through each element of the relevant tests, providing reasons why each elements is met. The whole letter was 3 pages. Simple, right?

Judge Burke granted the protective order modification within a week, in order to accommodate defendants' deadline to file their amended complaint in N.D. Cal. He granted it even after noting the difficulty of showing good cause here:

ORAL ORDER: . . . The Court is mindful that there is good reason why parties would generally not want confidential information provided pursuant to a protective order in one litigation to be used to trigger additional lawsuits in other courts. And it would not expect to see such requests very often or to grant them very often. But here, the Court views Intel's request as both narrow and legitimate, in light of the fact that: (a) the information at issue is particularly cabined in nature; (b) the antitrust case implicates the very patents−in−suit that are at issue in this case; and (c) the District Judge in the antitrust case has noted the potential relevance of the information at issue to a forthcoming motion. . . . The Court thus finds, after weighing the above [Pansy factors, omitted here], that Intel has done enough to show good cause to modify the protective order.

This shows how parties can help themselves by putting in the time to cite and apply the case law in a well-written brief. People may balk at spending hours on researching and drafting something that is "just" a discovery dispute letter, but it may well pay off.

(I don't mean to knock plaintiff's brief in the second action; it's under seal, and I haven't seen it.)

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