Dummen Na, Inc. v. Proven Winners N. Am., LLC, Civil Action 2:16-cv-00709

DUMMEN NA, INC., Plaintiff, v. PROVEN WINNERS NORTH AMERICA, LLC, et al., Defendants.

Civil Action 2:16-cv-00709

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO EASTERN DIVISION

November 21, 2018

Judge Michael H. Watson

Magistrate Judge Elizabeth P. Deavers

OPINION AND ORDER

This matter is before the Court on Defendants' Proven Winners North America, LLC and Plant 21, LLC (collectively, "Defendants") Emergency Motion for Leave to Permit Litigation Counsel to Participate in Reissue Proceedings (ECF No. 57), Plaintiff Dummen NA, Inc.'s Response in Opposition (ECF No. 59), and Defendants' Reply (ECF No. 60). For the following reasons, Defendants' Motion is DENIED.

I. BACKGROUND

Plaintiff filed this action on July 20, 2016 for declaratory judgment of invalidity and non-infringement of a United States patent pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and the United States Patent Law, 35 U.S.C. § 1 et seq. (Compl., ECF No. 1.) Plaintiff seeks a declaration that U.S. Patent No. 9,313,959 ("'959 Patent") is invalid and not infringed by certain flowering plants it sells. Plaintiff is a corporation organized under the laws of the State of California and having its principal place of business in Ohio. (Id. at ¶ 2.) Defendant Plant21, LLC is a California limited liability company with its principal place of business in California. (Id. at ¶ 4.) Defendant Proven Winners North America, LLC is also a California limited liability company having its principal place of business in California. (Id. at ¶ 6.) Defendant Plant 21, LLC is the owner of the '959 Patent. (Id. at ¶ 5.) Defendant Proven Winners North America, LLC is a licensee of the '959 Patent. (ECF No. 17 at ¶ 7.)

The '959 patent is the subject of the instant action, as well as the subject of a reissue proceeding at the United States Patent and Trademark Office ("PTO"). (Defendants' Motion, ECF No. 57, at p. 3.) Here, Defendants seek leave from the Default Protective Order in this case to allow Defendants' litigation counsel, Thompson Hine LLP, to participate in the concurrent reissue proceeding before the PTO. Defendants seek to permit its litigation counsel to coordinate with its patent prosecution counsel, Pilloff & Passino LLP. Defendants, therefore, move to set aside the Default Protective Order that prohibits Thompson Hine from participating in the reissue proceedings before the PTO. Defendants contend that participation of its litigation attorneys in at the PTO is necessary to ensure that their prosecution counsel do not submit arguments or evidence in the reissue proceeding that would undermine their litigation strategy or otherwise prejudice them in this litigation. (Id.)

II. STANDARD

The Local Patent Rules for the United States District Court for the Southern District of Ohio provide a Default Protective Order for patent infringement cases. Rule 102.2 provides that "[t]he Default Protective Order . . . automatically governs the productions of any documents or information in a Patent Case unless the Court enters an alternative Protective Order." S.D. Ohio Pat. R. 102.2. Paragraph 2.2(a) of the Default Protective Order provides, in pertinent part, that information designated "Highly Confidential Attorney Eyes Only" ("AEO") may be disclosedonly to "outside attorneys of record . . . provided that such does not include any persons participating in the prosecution of any present or future patent application (including the reexamination or reissue of any present or future patent) that is a counterpart to or related to the patents-in-suit. . . ."¹

Rule 1.2(b) explains more fully:

A party may designate as "HIGHLY CONFIDENTIAL - ATTORNEY EYES ONLY" such materials as the party reasonably and in good faith believes to contain particularly sensitive technical information relating to research for and production of current products; technical, business, and research information regarding future products; non-public and highly sensitive financial information; marketing and sales information, such as marketing plans and forecasts, customer lists, pricing data, cost data, customer orders, and customer quotations; any pending or abandoned patent applications, foreign or domestic; and such other documents, information, or materials that relate to other proprietary information that the designating party reasonably believes is of such nature and character that disclosure of such information would be harmful to the designating party.

Rule 1.3 lists types of information that should not be designated or protected under the Default Protective Order.

District courts have the power to modify protective orders. In re Upjohn Co. Antibiotic Cleocin Products Liab. Litig., 664 F.2d 114, 118 (6th Cir. 1981) ("Clearly, the power of a district judge includes the power to modify a protective order." (citations omitted)). Here, Defendants seek modification of the Default Protective Order. Under these circumstances, the party seeking the modification must show good cause for the modifications sought. See, e.g., Info-Hold, Inc. v. Muzak Hldgs LLC, No. 1:11-cv-283, 2012 WL 3061024, at *3 (S.D. Ohio July 26, 2012) (citations omitted); ("The party who seeks to modify [the] protective order has the burden ofestablishing good cause for the modification."); cf. In re Southeastern Milk Antitrust Litig., 666 F.Supp.2d 908, 914 (E.D. Tenn. 2009) ("The party seeking modification of the protective order has the burden of establishing cause for the modification."); Hochstein v. Microsoft Corp., No. 04-73071, 2008 WL 4387594, at *2 (E.D. Mich. Sept. 24, 2008) ("It is also within the district court's authority to modify the protective order upon a showing of good cause.").

III. ANALYSIS

Defendants contend their request will not harm Plaintiff in any way because (1) confidential information disclosed by Plaintiff to Defendants' litigation counsel in discovery is not relevant to the issues in the reissue proceeding; (2) litigation counsel will not use or reveal any of Plaintiff's confidential information in the reissue proceeding; (3) the claims of the reissue application have not been and cannot be broadened to target Plaintiff; and (4) litigation counsel has promised in writing that if any new claims are added to the reissue application, those claims will never be asserted against Plaintiff. (Def's Motion, ECF No. 57, at p. 3-4.)

Defendants aver that in this litigation, Plaintiff has served contentions that include substantially the same arguments raised by the PTO in the reissue proceeding. (Declaration of Jeff Metzcar at ¶ 10 ["Metzcar Decl."].) As such, Defendants suggest that their litigation counsel will be responding to the same invalidity arguments that their prosecution counsel is expected to address first on December 10, 2018 in the reissue proceeding.² Litigation counsel for Defendants acknowledge that they have been exposed to confidential information that Plaintiff produced during this litigation. (Id. at ¶.) At this juncture, however, Defendants represent that no AEO information has been shared with their prosecution counsel. (Id. at ¶ 12.)

Plaintiff asserts that permitting Defendants' litigation counsel to work with their prosecution counsel presents problems despite Defendants' promises. Plaintiff posits that Defendants' litigation counsel could "inadvertently" or "even subconsciously" reveal Plaintiff's confidential information, which would unmistakably prejudice it. (Plaintiff's Response, ECF No. 59, at p. 5-6.) Defendants counter, however, that Plaintiff will not be prejudiced because they cannot broaden their claims before the PTO by using any confidential information, or otherwise. Defendants note that even if they wanted to broaden the claims they would be prohibited by 35 U.S.C. § 251(d). Under this statute, the window of opportunity to request a broadening reissue is two years, and two years has already passed since the grant of the '959 patent. (Metzcar Decl. at ¶ 6.)

Defendants chiefly contend that they are prejudiced by having to have two sets of counsel where there is no reasonable risk that AEO information will be used to prepare new claims. In particular, Defendant maintain that since "[t]he claims in the reissue proceeding are currently identical to the claims of the asserted '959 patent and, by rule, cannot be broadened because the two-year window of opportunity to request a broadening reissue has passed[,]" the reissue proceeding at hand is "materially the same as a reexamination proceeding" because "in both proceedings the claims can be amended to overcome objections but cannot be broadened."³ (Def's Motion, ECF No. 57, at p. 6.) Based on this analogy, Defendants cite to a handful of cases for the proposition that because claims in a reexamination proceeding cannot be broadened, the harm of requiring a patent holder to retain separate litigation and reexamination counseloutweighs the risk of allowing litigation counsel who have had access to confidential AEO materials, to participate in the reexamination. (Id. at 6-7.)

A closer review of the cases cited by Defendants reveal that none supports their position that litigation counsel should be permitted to participate in a reissue proceeding to prevent prosecution counsel from making arguments that are harmful to an underlying infringement action. All of the cited cases deal with an essentially different procedure, namely reexamination proceedings.

Defendants first cite to Xerox Corp. v. Google, Inc., 270 F.R.D. 182 (D. Del. 2010). In Xerox, which involved a reexamination proceeding, the court denied the defendants' motion to include patent prosecution bar in an existing protective order. The court held that the plaintiff should not be denied the advice of its trial counsel in amending claims on reexamination. Id. at 183. Defendants use this case to support the proposition that "because the claims in a reexamination proceeding cannot be broadened, the harm of requiring a patent holder to retain...