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Should Patent Prosecution Bars Apply To Interference Counsel?1



By Charles L. Gholz2 and Parag Shekher3

Introduction

The Federal Circuit stated that it granted a rare petition for a writ of mandamus in In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 95 USPQ2d 1399 (Fed. Cir. 2010)(opinion by Circuit Judge Linn for a panel that also consisted of Chief Circuit Judge Michel and Circuit Judge Prost) (hereinafter referred to as “Deutsche Bank”), because the “petition present[ed] an important issue of first impression [at the appellate level] in which [district] courts have disagreed....”4 However, in point of actual fact, the court took the opportunity to decide several different, but related, important issues of first impression at the appellate level on which the district courts had disagreed. All of those issues related generally to the issuance by district courts of what are known as “patent prosecution bars,” which are protective orders prohibiting attorneys appearing before those district courts in patent infringement litigation from concurrently representing the same client in related patent prosecution and/or, if allowed to represent the client at all in concurrent, related patent prosecution, from being made aware of the results of at least certain discovery in the infringement litigation.5

The narrow question examined in...

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