Court settles protective order dispute

June 16, 2015 – The court denied competing protective orders filed by the University of Virginia and General Electric in a patent dispute concerning magnetic resonance imaging (“MRI”).  The court found that “striking the proper balance between protecting the Confidential Materials from disclosure and avoiding restricting the activities of attorneys who do not actually learn the contents of those materials requires a comprehensive prosecution bar subject to exemption on an attorney-by-attorney basis. . . . To avoid any confusion, the prosecution bar should explicitly state that it applies to reissue proceedings. . . . Subject to the restrictions of the protective order, I find that outside counsel may represent [the University of Virginia] in reexamination, inter partes review, or post-grant review proceedings as long as it did not initiate those proceedings.”  The court rejected GE’s proposal for an acquisition bar in the parties’ protective order.  “While I agree that an acquisition bar is necessary, I disagree with the scope of [GE’s] proposal.  The subject matter of an acquisition bar, like a prosecution bar, must be co-extensive with the patents-in-suit.  Thus, the acquisition bar may cover the field of [the patent-in-suit] and [GE’s] products that allegedly infringe that patent, but it may not extend to ‘the field of magnetic resonance imaging,’ as that would greatly exceed the patents-in-suit.  The duration of one year following the conclusion of this lawsuit is appropriate.”

The case is captioned University of Virginia Patent Foundation v. General Electric Company d/b/a GE and is pending in the Western District of Virginia, Charlottesville Division, 14-cv-00051.

By:  Christopher J. Stankus

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