District Court Addresses Whether Patent Prosecution Bar Extends to IPR Proceedings

In ScentAir Technologies, Inc. v. Prolitec, Inc. IPR2013-00179 (JL), Paper 9 (April 16, 2013), the Board denied ScentAir’s request to file a motion to disqualify Prolitec’s lead counsel from representing Prolitec in an inter partes review (IPR) because they were subject to a protective order in a related district court case. Following the decision, Prolitec filed a motion in the related case, Prolitec Inc., v. Scentair Technologies, Inc., Case No. 12-C-483 (E.D. Wis. May 17, 2013), requesting that the Court clarify the scope of the prosecution bar and explicitly permit its lead counsel to participate in the IPR. The Court concluded that Prolitec’s lead counsel may participate in the IPR proceeding, but may not participate in amending, substituting, or adding claims.

The Court found that, while the protective order’s prosecution bar provision did not discuss inter partes review, it described the types of action that are prohibited (e.g., drafting or advising in drafting or amending patent claims). Consequently, the Court concluded that inter partes review falls within the scope of the prosecution bar as claims can be amended or drafted in an IPR proceeding.

The Court also found that, while Proltiec did not show that its USPTO counsel would not be involved in competitive decision making, the “purpose of this particular AIA reform was to ‘convert inter partes reexamination from an examinational to an adjudicative proceeding.’” The Court thus determined that the litigation skills of Prolitec’s lead counsel would be required during the IPR proceeding, and that ScentAir’s concern regarding inadvertent use of its confidential information was insufficient to overcome the potential harm to Prolitec. Accordingly, the Court allowed Prolitec’s lead counsel to participate in the IPR, but barred the counsel from amending, substituting, or adding claims during the proceeding.