In re Deutsche Bank Trust Cos.

605 F.3d 1373, 95 U.S.P.Q.2d 1399 (2010)

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In re Deutsche Bank Trust Cos.

United States Court of Appeals for the Federal Circuit
605 F.3d 1373, 95 U.S.P.Q.2d 1399 (2010)

Facts

Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC (Deutsche) (plaintiff) was sued in the United States District Court for the Southern District of New York for infringing patents related to financial deposit-sweep services. The patents were owned by Island Intellectual Property LLC, LIDS Capital LLC, Double Rock LLC, and Intrasweep LLC (collectively, the financial companies) (defendants). Deutsche moved for a protective order. Deutsche requested that the protective order impose, for the duration of the litigation, a patent-prosecution bar to prohibit any litigation counsel for the financial companies with access to confidential material from prosecuting patents related to deposit-sweep services. The motion was granted by a magistrate judge, and a patent-prosecution bar was entered for all counsel except lead litigation attorney Charles Macedo. Deutsche filed an objection with the district court to Macedo’s exemption from the patent-prosecution bar. The district court upheld the order of the magistrate court without considering any information about the nature or extent of Macedo’s history of prosecuting patents on behalf of the financial companies for inventions similar to the allegedly infringing products. Deutsche petitioned for a writ of mandamus.

Rule of Law

Issue

Holding and Reasoning (Linn, J.)

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