## Facts

- Patent plaintiffs sued Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC in the Southern District of New York for infringement of patents concerning financial “deposit-sweep services,” within a larger patent family that included many related, pending applications.
- Deutsche sought a protective order under Rule 26(c) containing a patent-prosecution bar for any lawyer who accessed materials designated “confidential — patent prosecution bar,” covering prosecution activity in the same technological area during the litigation and for a limited post-litigation period.
- A magistrate judge imposed the prosecution bar on Island’s trial counsel but exempted Island’s lead trial counsel, Charles Macedo, without a written opinion; reconsideration was denied.
- The district court upheld the exemption without developing an evidentiary record concerning the nature and extent of Macedo’s patent-prosecution activities in the relevant subject area.
- Deutsche petitioned the Federal Circuit for mandamus to vacate the exemption; the Federal Circuit stayed the exemption pending review.

## Issues

1. Whether Federal Circuit law or regional circuit law governs the inclusion and scope of patent-prosecution bars in protective orders in patent cases.
2. What standard governs whether litigation counsel who also prosecutes patents should be subject to a prosecution bar, and whether exempting counsel without a developed record and balancing analysis is an abuse of discretion.

## Decision

- The Federal Circuit held that Federal Circuit law governs prosecution-bar determinations because they bear a unique relationship to patent law.
- The court granted mandamus in part, vacated the order exempting Macedo from the prosecution bar, and remanded for reconsideration under the proper framework.
- The court did not order Macedo’s disqualification; it required the district court to build an adequate record and apply a counsel-specific, case-specific analysis.

## Legal Principles

- Under Rule 26(c), a prosecution bar may be imposed for good cause to prevent harm from disclosure of confidential information, but it is not automatic and must be tailored.
- The central inquiry is the risk of inadvertent use or disclosure of confidential information, assessed through the attorney’s role in “competitive decisionmaking.”
- Patent prosecution is not uniform; tasks such as drafting or amending claims and advising on claim scope may constitute competitive decisionmaking depending on the facts.
- A structured analysis applies:
  - The movant must make a specific showing that the attorney engages in competitive decisionmaking tied to prosecution activities and that access to protected material poses a genuine risk of harm.
  - If shown, the court must balance that risk against the opposing party’s interest in counsel of choice and effective representation.
- Any prosecution bar must be no broader than necessary, with reasonable limits on subject matter, duration, and scope.

## Conclusion

The Federal Circuit required a fact-driven, attorney-specific inquiry and tailored balancing before exempting or imposing a patent-prosecution bar, and it vacated the exemption of lead counsel because the district court acted without an adequate record or application of the governing standards.


In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373 (Fed. Cir. 2010)