Litigators Corner:
A Defense Tactic - The Prosecution Bar

By Joseph N. Hosteny of Niro, Scavone, Haller & Niro

What makes a reasonable protective order? As I wrote in my July 2009 column, The New Tactics of Patent Defendants: They All Attended the Same Seminar, protective orders have more goals than merely to protect confidential information. They are offensive weapons—that is, devices many defendants use to exclude the plaintiffs from knowledge of crucial facts in the litigation, to prolong discovery and to inflict even more expense on plaintiffs. Of course, all of these tactics inflict expense on defendants, too, but they do not seem to notice that their attorneys' fees have gone up. If they do notice, they do not seem to care.

One of the tactics defendants like to use involves the so-called prosecution bar. With it, the defendants propose that no one working on patent prosecution activities should be permitted to see any of the defendant's confidential information while engaged in patent prosecution for the plaintiff. The theory is that somehow the information would leak into patent applications being written by the plaintiff's prosecuting attorney. This would happen, defendants postulate, because the prosecuting attorney would not be able to segregate in his mind—or wall off—the defendants' confidential information from the information he possessed that came from his client. Once the two categories of information became mixed, defendants surmise that it would be inevitable that the defen...