The defendant in this patent case asserted counterclaims for Walker Process antitrust and unenforceability due to inequitable conduct for failing to disclose prior art to the USPTO. During discovery the plaintiffs (Metris) produced a six-year-old email between the inventor and a business associate with potentially inflammatory language including discussions of “a global monopoly” and keeping “prior art quiet.” The email was produced under the most restrictive tier of the protective order. Faro moved to de-classify the email and Magistrate Judge Bowler agreed.
The protective order in the case is a typical three-tier order (highly confidential, confidential, non-confidential) with category definitions commonly found in protective orders in patent cases (though the decision notes that in this case even “confidential” materials could not be shown to client personnel who were not specifically authorized).
Magistrate Judge Bowler found that Metris had not met its burden to show that the document needed to be protected from disclosure. The email in question did not reveal any information of competitive or commercial sensitivity, did not discuss any technology in detail, was six years old at the time of the motion, and was “central” to the counterclaims. Accordingly, the court ordered the email de-designated, though it directed the parties to confer if they can agree to use the email “solely for the purpose” of this case to prevent embarrassment to Metris.
Given that the decision was public, there must be some pretty juicy stuff in the email that wasn’t included in the decision, or there would have been no need for further discussion possibly limiting use of the entire email.
Metris
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