Standard Protective Orders May Raise Some, But Not All Issues, Necessary With Multiple Defendants
The complexities associated with being a defendant in a multiple defendant patent infringement lawsuit start from the very beginning of the case (even earlier if notice is provided before a suit is filed.)
While protective orders in patent cases are part of the standard operating procedure, most existing protective orders were drafted to deal with the situation in which there is only a single defendant or related defendants (such as a parent-subsidiary situation).
Some protective orders even contemplate that discovery might be sought from third parties via subpoena and provide provisions that allow third parties to avail themselves of the protections of the protective order for any information they provide responsive to subpoena. For example, a provision might allow a third party subpoenaed for technical information to provide that information under an “Attorneys Eyes Only” designation and have that information used only during the course of the litigation.
Many such standard protective orders with which attorneys handling patent cases are all-too-familiar do not, however, address many of the complex issues that might arise when multiple competing companies are named as co-defendants in a patent infringement lawsuit. In such circumstances, defendants often are less concerned about how the information might be used by the plaintiff (particularly if the plaintiff is a non-competing patent holding company, for example), but more concerned about how a co-defendant might use such information.
This raises a number of issues regarding who from a defendant corporation will be able to participate in various activities that require access to various types of confidential information. As a result, a protective order in a complex multi-defendant patent infringement case may involve more than one level of confidentiality, and even three, four or even more levels of confidentiality. Each level is designed to define specific information from each defendant that can be reviewed by specific personnel from a co-defendant and/or its outside litigation and/or in-house counsel.
For example, many protective orders allow some level of involvement by in-house personnel (including, in some cases, in-house counsel, business personnel and technical personnel). A protective might provide two levels of confidentiality — “attorneys’ eyes only” Confidential Information that may be shared only with outside counsel for the parties and/or their experts — and a lower level of Confidential Information that may be shared with one or more designated in-house personnel. Some protective orders allow that in-house personnel to be a business person, whereas others only permit in-house attorneys to view that information.
Moreover, while a protective order is enforceable against all parties, attorneys at least are obligated under the ethical obligations of the bar to comply with the terms of the protective order to ensure that information designated thereunder is not used improperly. For example, under the terms of many common protective orders, if one co-defendant produced technical information designated as confidential under the protective order, that information could not be shared with an in-house attorney for a competing co-defendant. Some defendants may want their own in-house attorneys to view that information for a number of reasons: to evaluate the strengths and weaknesses of a party’s case, to evaluate the strengths and weaknesses of a co-defendant’s case, and to provide better assistance to outside counsel in developing strategies and defenses. Indeed, in-house counsel often seeks access to some level of confidential information in a case in an effort to monitor all ongoing activity in a litigation, instead of relying exclusively on outside counsel to provide that information. While such a request is understandable for companies with extensive in-house legal departments, it does create an added level of complexity.
