CORRECTED: Facebook’s Order Banning Pragmatus AV’s Litigation Counsel Granted
- July 13, 2012
July 12, 2012 - Magistrate Judge Paul Grewal of the Northern District of California granted defendant Facebook’s proposal for a Model Protective Order banning plaintiff Pragmatus AV’s [NPE] litigation counsel from engaging in patent prosecution during the course of the litigation. Pragmatus first filed suit against Facebook on November 10, 2010, alleging infringement of patents 7,421,470 and 7,433,921 that relate to storing, accessing, and playing multimedia files. Facebook filed for, and was granted, a request for inter partes reexamination of the patents-in-suit. Subsequently, Facebook also filed for, and on October 11, 2011 was granted, a motion to stay the litigation until the final conclusion of the reexamination proceedings (including appeals). In the present motion, Facebook sought a Model Protective Order banning Pragmatus’ attorneys, who had gained access to confidential Facebook technology and information through the discovery process, from engaging in any and all patent prosecution activities. Pragmatus opposed this, arguing that its attorneys should be allowed to participate in the reexamination proceedings of the patents-in-suit, but the Court disagreed and stated, “Facebook has demonstrated that it would be unfair to allow representatives of Pragmatus to make choices about whether and how to narrow a given claim during reexamination with Facebook’s highly confidential information in hand. The expense of retaining separate reexamination counsel notwithstanding, this rationale strikes the court as entirely reasonable.” Pragmatus AV, an entity run by former Altitude Capital partners, acquired 51 issued and pending patents (that had originally been assigned to Avistar) from Intellectual Ventures in June 2010. 7/5, Northern District of California, assigned to Honorable Edward J. Davila and referred to Magistrate Judge Paul Singh Grewal, 5:2012cv02168.