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In re Deutsche Bank Trust Co. Ams.

In re Deutsche Bank Trust Co. Ams.

United States Court of Appeals for the Federal Circuit

May 27, 2010, Decided

Miscellaneous Docket No. 920

Opinion

 [***1400]   [*1375]  ON PETITION FOR WRIT OF MANDAMUS

LINN, Circuit Judge.

ORDER

Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC (collectively, "Deutsche") petition for a writ of mandamus directing the United States District Court for the Southern District of New  [**2] York to vacate its order exempting Charles Macedo ("Macedo"), the lead litigation counsel of Island Intellectual Property LLC, LIDS Capital LLC, Double Rock Corporation, and Intrasweep LLC (collectively, "Island") from the patent prosecution bar applied to other litigation counsel for Island in the case. Island Intellectual Prop., LLC v. Deutsche Bank AG, 658 F. Supp. 2d 615 (S.D.N.Y. 2009) ("Opinion"). Island opposes.

Because this petition presents an important issue of first impression in which courts have disagreed, we grant-in-part Deutsche's petition to vacate the district court's order, and remand the case to the district court for recon-sideration of its order under the standards articulated herein.

 [*1376]  I

This petition stems from a patent infringement suit filed in the Southern District of New York by Island asserting three patents relating to financial deposit-sweep sfinancial depositfinancial depositfinancial depositervices: U.S. Patents No. 7,509,286, No. 7,519,551, and No. 7,536,350. All three of the asserted patents resulted from continuation-in-part applications filed from a common parent application, now U.S. Patent No. 6,374,231. Island also has nineteen pending applications related to this family of patents through continuations  [**3] and continuations-in-part. At least fifteen of these applications are unpublished.

On August 19, 2009, Deutsche sought a protective order including a patent prosecution bar preventing anyone who gains access in the litigation to documents marked "confidential -- patent prosecution bar" from any involvement in prosecuting any patent in the area of "deposit sweep services" during, and for a limited period after, the conclusion of this litigation. After a very short hearing, and without a written opinion, the magistrate judge assigned to the case granted Deutsche's request as to all of Island's trial counsel, but exempted Macedo, Island's lead trial counsel.

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605 F.3d 1373 *; 2010 U.S. App. LEXIS 10837 **; 95 U.S.P.Q.2D (BNA) 1399 ***

IN RE DEUTSCHE BANK TRUST COMPANY AMERICAS AND TOTAL BANK SOLUTIONS, LLC, Petitioners.

Subsequent History: As Corrected June 2, 2010.

Prior History:  [**1] On Petition for a Writ of Mandamus to the United States District Court for the Southern District of New York, Case No. 1:09-CV-02675, Judge Victor Marrero.

Island Intellectual Prop. LLC v. Deutsche Bank AG, 658 F. Supp. 2d 615, 2009 U.S. Dist. LEXIS 107852 (S.D.N.Y., 2009)

Disposition:  The bank's petition to vacate the lower court's order was granted in part, and the case was remanded for reconsideration of its order under the standards articulated in the instant decision.

CORE TERMS

patent, protective order, district court, decisionmaking, inadvertent, disclosure, confidential, patent application, prosecuting, Interim, inventions, exempted, mandamus, reconsideration, decisions, subject matter, trial counsel, balancing, discovery, regional, factors, matters, courts

Civil Procedure, Writs, Common Law Writs, Mandamus, Appeals, Standards of Review, Abuse of Discretion, Discovery & Disclosure, General Overview, Patent Law, Jurisdiction & Review, Discovery, Protective Orders, US Patent & Trademark Office Proceedings, Statutory Bars