By Memorandum Order entered by The Honorable Mary Pat Thynge in Xerox Corporation v. Google, Inc., et al., C.A. No. 10-136-JJF-MPT (D.Del., September 8, 2010), the Court concluded that defendants failed to show good cause to preclude plaintiff’s trial counsel in the patent infringement action that were exposed to defendants’ confidential information from participating in amendment of plaintiff’s patents during reexamination proceedings before the Patent and Trademark Office (“PTO”).

A complete copy of the Memorandum Order is attached.

In its reasoning, the Court noted that, although the Federal Circuit’s decision in In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010) dealt only with provisions limiting participation in patent prosecution, its logic was applicable in the context of patent reexamination as well. In other words, “just as in patent prosecution, the primary factor affecting the risk of inadvertent disclosure during reexamination is the extent to which counsel are involved in competitive decision making with the client." Id. at 3. The Court cautioned, however, that even where risk of inadvertent disclosure or competitive use exists, the Court must balance that risk against the potential harm to the opposing party in denying it its counsel of choice. Id.

After balancing the risks, the Court found that the risk of inadvertent disclosure or competitive use of defendants’ confidential information by plaintiff’s trial counsel in evaluating potential claim amendments during the reexamination proceedings was outweighed by the potential harm to plaintiff if it was prevented from the full participation of its trial counsel during the reexamination proceedings. Id. at 7. The Court noted, among other things, that, “because reexamination (especially inter partes reexamination) is an increasingly important venue for challenging a patent’s validity, preventing trial counsel exposed to defendants’ confidential information from fully participating in reexamination proceedings would force plaintiff to split its resources between two fronts of the same war.” Id. at 6.