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PPC Broadband, Inc. v. Times Fiber Communications Inc.

United States District Court, N.D. New York

March 5, 2014

PPC BROADBAND, INC., d/b/a PPC, Plaintiff,
v.
TIMES FIBER COMMUNICATIONS, INC., Defendant.

DOUGLAS J. NASH, ESQ., JOHN D. COOK, ESQ., JASON C. HALPIN, ESQ., MARK E. GALVEZ, ESQ., HISCOCK & BARCLAY, LLP, One Park Place, Syracuse, NY, for Plaintiff.

JOEL L. DION, ESQ., CHARLES R. WOLFE, ESQ., BLANK ROME LLP, One Logan Square, Philadelphia, PA.

MITCHELL J. KATZ, ESQ., TERESA M. BENNETT, ESQ., MENTER, RUDIN & TRIVILPIECE, P.C., Syracuse, NY, for Defendant.

DECISION AND ORDER

DAVID E. PEEBLES, Magistrate Judge.

Currently pending before the court in this patent infringement action is a dispute between the parties regarding a confidentiality order, and specifically the scope of the prosecution bar to be included with the order. Defendant Times Fiber Communications, Inc. ("Times Fiber"), seeks to prohibit counsel for plaintiff PPC Broadband, Inc. ("PPC"), from participating in any proceedings conducted before the Patent and Trademark Office ("PTO") following the grant of a patent related to coaxial cable connectors for the cable and telecommunications industries. Plaintiff PPC argues that inclusion of such a provision is inappropriate and prejudicial. For the reasons set forth below, I find that Times Fiber has failed to satisfy its burden under Deutsche Bank Trust Co. Ams., 605 F.3d 1373 (Fed. Cir. 2010), and Rule 26(c) of the Federal Rules of Civil Procedure to demonstrate entitlement to such a sweeping prosecution bar. Accordingly, to the extent the parties include a prosecution bar in any protective order in this case, that provision shall reflect PPC's proposal.

I. RELEVANT BACKGROUND

This is a patent infringement suit between two competitors. In its complaint, PPC accuses Times Fiber of infringing four patents relating to the design of coaxial cable connectors. See generally Dkt. No. 1. Times Fiber has answered PPC's complaint, denying infringement and claiming unenforceability of the patents in suit. See generally Dkt. No. 14. A scheduling order has been issued requiring the submission of opening claim construction briefs by March 11, 2014. Dkt. No. 25-1.

On January 16, 2014, the court held a telephone conference, at the request of Times Fiber, to address the parties' disagreement concerning the scope of the prosecution bar to be included in the protective order governing this action. Text Minute Entry Dated Jan. 16, 2014. At the court's direction, the parties submitted supplemental briefing regarding their specific dispute. Dkt. Nos. 28-32.

PPC explains that, although it contends that a prosecution bar is not necessary "since the nature of PPC's infringement claims concern existing products that are publicly offered in the marketplace, ... in an effort to resolve the parties' dispute short of judicial intervention, [it] has worked with Times Fiber to develop a prosecution bar that would be acceptable to each party." Dkt. No. 28 at 1; see also Dkt. No. 31 at 1. With that in mind, Times Fiber seeks to include the following provision in the protective order:

Notwithstanding the foregoing, during the pendency of this case, including any appeals, and for one year after its conclusion, any Recipient who accesses properly designated Highly Confidential - Prosecution Bar information shall not participate in, aide in, advise, or counsel the drafting of claim language in connection with preparation, filing and/or prosecution of patent applications in any country concerning the non-public, technical features disclosed in the Highly Confidential - Prosecution Bar information, including any interference, reissue, reexamination or other proceeding, related to coaxial cable connectors for the cable and telecommunications industries. The scope of this prosecution bar includes continuations, continuations in part, divisionals, reissues, or foreign counterparts of such patent applications or patents that issue from such applications.

Dkt. No. 28 at 2; Dkt. No. 29 at 2-3. PPC, on the other hand, has countered with the following proposed language:

Notwithstanding the foregoing, during the pendency of this case, including any appeals, and for one year after its conclusion, any Recipient who accesses properly designated Highly Confidential - Prosecution Bar information shall not participate in, aide in, advise, or counsel the drafting of claim language in connection with the preparation, filing and/or prosecution of patent applications in any country concerning the non-public, technical product features disclosed in the Highly Confidential - Prosecution Bar information. The scope of this prosecution bar includes continuations, continuations in part, divisionals, reissues, or interferences concerning such patent applications or patents that issue from such applications, but does not include ex parte reexaminations, post-grant reviews, or inter partes reviews concerning patents that issue from such applications.

Id.

The only difference between the two proposals is the scope of the participation of any recipient of information deemed "Highly Confidential - Prosecution Bar" in certain post-grant proceedings before the PTO. Times Fiber seeks to preclude any recipient of such information from participating in ex parte reexaminations, post-grant reviews, or ...


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