As Nate noted a couple of weeks ago, "we've milked at an astonishing 8 posts out of the saga of Rein Tech, Inc. v. Mueller Systems, LLC." I think the actual count is now 11, but I truly expect that this will be the very last one.
No promises, of course.
Yesterday, the Court issued its opinion on the defendant's sanctions motion, filed after repeated violations of the protective order. As we've discussed, this time the inventor, who is also an attorney, continued to prosecute a patent in the same field despite having seen the defendant's Attorneys' Eyes Only production, and despite the protective order's prosecution bar.
The inventor had argued that he had little involvement in the PTO filing other that signing it. The Court had no trouble holding that that was enough:
The act of signing and submitting a document to a federal agency carries legal weight, and [the inventor] – who signed the PTO Response in his capacity as a lawyer – cannot lawfully feign ignorance of the contents of his submission. See 37 CFR § 11.18(b) (signing or filing any paper for presentation to the USPTO is a certification that “all statements made therein on information and belief are believed to be true” and that the signatory is aware of the criminal penalties for fraudulent statements). By signing the Response, [the inventor] rendered himself responsible for its contents, which included pages of amendments to claims. Moreover, even if [the inventor]’s role was as stated, any participation in Prosecution is still a violation of the terms of the Protective Order. See D.I. 32 ¶ 11 (providing that those who have viewed AEO material must be walled-off from those who prosecute or “assist” or “supervise” patent prosecution).
Rein Tech, Inc. v. Mueller Systems, LLC, C.A. No. 18-1863-MN, D.I. 237 at 7-8 (D. Del. Feb. 12, 2026).
So, what was the sanction? The Court first noted that it had previously issued a lesser sanction for the violation of a protective order, but that it was not enough—and that a large sanction was also needed to show how important protective orders are:
The repeated nature of this misconduct warrants serious sanctions, particularly because violations of the Protective Order continued after this Court held a hearing on similar violations, ordered such behavior to cease, and issued other (lesser) sanctions. Clearly those sanctions were insufficient. Further, protective orders provide litigants with critical assurance that their sensitive information will not be used or disclosed improperly, and “if the Court were not to sanction – and sanction severely – the repeated violation of provisions meant to protect the most sensitive of information, protective orders would be rendered worthless.” TRUSTID, Inc. v. Next Caller Inc., No. CV 18-172 (MN), 2021 WL 11960341, at *2 (D. Del. July 12, 2021). Here, there is the additional concern that future litigation or patent prosecution involving [the inventor], [his wife, who works with him], or the research attorney will be tainted by the information these individuals improperly gleaned from Defendant’s confidential documents.
Id. at 10.
The Court banned the inventor and his associates from further prosecuting his existing patents and patent applications in the same field of invention:
First, this Court will permanently preclude [the inventor], [his wife], and any other individuals who had access to Defendant’s AEO Material (including the research attorney referenced herein) from participating in any way (directly or indirectly) in the Prosecution (as defined by the Protective Order in this case) of any existing patents or currently-pending patent applications in the same Field of Invention as the ’837 Patent and any continuations, continuations-in-part or divisionals of those patents or applications. To clarify, this restriction is permanent; the one-year expiration date in the Protective Order does not apply. This restriction, however, applies only to the patent families of currently existing patents and pending patent applications in the Field of Invention. Provisional or original patent applications (not claiming priority to an existing patent or pending application) in the Field of Invention that are filed after the date of this opinion may be prosecuted after the one-year time period in the Protective Order expires.
Id. at 10-11.
Further, the Court permanently barred plaintiff and its successor or assignees from asserting patents in the same field of invention against the defendant, and the Court will also report the inventor's conduct to the USPTO.
There is a lot more to the decision, and it's well worth reading. But the core takeaway is still "don't mess around when it comes to protective orders!"
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