Front Row Technologies, LLC v. NBA Media Ventures, LLC (125 F. Supp. 3d 1260, 2015)

MEMORANDUM OPINION AND ORDER

James O. Browning, UNITED STATES DISTRICT JUDGE

THIS MATTER comes- before the Court on the Defendants’ Memorandum of Law in Support of their Motion for Entry of a Prosecution Bar Provision in the Protective Order, filed February 20, 2014 (Doc. 204)(“Motion”). The Court held a hearing on October 27, 2015. The primary issues are: (i) whether the Court should grant a prosecution bar, which would prohibit Front Row’s counsel from simultaneously participating in this litigation and prosecuting related patents; and (ii) whether the proposed prosecution bar is reasonable. The, Court concludes that a prosecution bar is appropriate to protect the Defendants’ confidential technical information. It determines that the Defendants’ proposed prosecution bar, modified with some of Front Row’s suggested changes, is reasonable. Consequently, the Court will grant the Motion in part and deny it in part.

FACTUAL BACKGROUND

The Court takes its facts from the Plaintiffs Fourth Amended Complaint for Patent Infringement and Jury Demand, filed April 23, 2013 (Doc. 149)(<£Complaint”). It also draws on Plaintiff Front Row Technologies, LLC’s Opposition to Defendants’ Motion for' Entry of a Prosecution Bar Provision in the Protective Order, filed March 10, 2014 (Doc. 205)(££Response”), for important details where necessary.

Plaintiff Front Row Technologies (“Front Row”) is a New Mexico limited liability company that holds patents related to streaming video on mobile devices. See Complaint ¶¶ 1-20, at 1-5. Front Row owns “all rights, title, and interest in and under” ten such patents:

1. United States Patent No. 8,090,321 (“321 patent”), titled “Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network,” which duly and- legally issued on January 3, 2012;

2. United States Patent No. 8,086,184 (“184 patent”), titled “Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network,” which duly and legally issued on December 27, 2011;

3. United States Patent No. 8,270,895 (“895 patent”), titled “Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network,” which duly and legally issued on September 18, 2012;

4. Plaintiff Front Row Technologies is the owner of all rights, title and interest in and under United States Patent No. 7,812,856 (“856 patent”), titled “Providing Multiple Perspectives of a Venue Activity to Electronic Wireless Hand Held Devices,” which duly and legally issued on October 12, 2010;

5. United States Patent No. 7,796,162 (“162 patent”), titled “Providing Multiple Synchronized Camera Views for Broadcast from a Live Venue Activity to Remote Viewers,” which duly and legally issued on September 14, 2010;

6. United States Patent No. 7,884,855 (“855 patent”), titled “Displaying Broadcasts of Multiple Camera Perspective Recordings from Live Activities at Entertainment Venues on Remote Video Monitors,” which duly and legally issued on February 8, 2011;

7. United States Patent No. 7,782,363 (“363 patent”), titled “Providing Multiple Video Perspectives of Activities through a Data Network to a Remote Multimedia Server for Selective Display by Remote. Viewing Audiences,” which duly and legally issued on August 24, 2010;

8. United States Patent No. 8,184,169 (“169 patent”), titled “Providing Multiple Video Perspectives of Activities through a Data Network to a Remote Multimedia Server for Selective Display by Remote Viewing Audiences,” which duly and legally issued'on May 22, 2012;

9. United States Patent No. 8,401,460 (“460 patent”), titled “Transmitting Sports and Entertainment Data to Wireless Hand Held Devices over a Telecommunications Network,” which duly and legally issued on March 19, 2013; and

10. United States Patent No. 7,376,388 (“388 patent”), titled “Broadcasting Venue Data to a Wireless Hand Held Device,” which duly and legally issued on May 20, 2008.

Complaint ¶¶ 11-20, at 3-5. Front Row alleges that all of these patents are valid and enforceable. See Complaint ¶¶ 21-31, at 5-6.

Inventors Luis Ortiz and Kermit Lopez founded Front Row in 2000. See Motion at 7; Response at 3. Front Row's lead litigation counsel in this matter are Michael Shore and Alfonso Chan of Shore Chan DuPumpo LLP, an intellectual property firm based in Dallas, Texas. See Motion at 7; Response at 3. Mr. Shore, Mr. Chan, Ortiz, and Lopez also co-founded and co-own Micro-Gaming Ventures LLC, another entity that pursues patents related to mobile smartphone gambling. See Motion at 7; Response at 1, 3.

Defendant MLB Advanced Media, L.P. is in the business of broadcasting sporting events through electronic and wireless means, and of selling software to support that broadcasting. See Complaint ¶ 2, at 1-2. Its primary product relevant to this litigation is the “At Bat 13” smartphone application, the official application of Major League Baseball. Complaint ¶ 33, at 6.

Defendants Mercury Radio Arts, Inc. and GBTV, LLC, create and distribute multimedia content over the internet. They are both associated with talk show host and radio personality Glenn Beck. See Complaint ¶¶ 4-5, at 2.

Defendant Premiere Radio Networks, Inc. is a “national radio network that produces radio programming and services for radio stations, and distributes its own and various third-party radio programs to radio station affiliates throughout the world.” Complaint ¶ 5, at 2.

Defendant NBA Media Ventures, LLC, like MLB Advanced Media, L.P., is in the business of broadcasting sporting events through electronic and wireless means, and of selling software to support that broadcasting. See Complaint ¶¶ 6, 37, at 2, 8. Its primary products relevant to this litigation are “NBA League Pass Mobile” and “NBA League Pass Broadband,” which provide video of National Basketball Association games to consumers over the internet. Complaint ¶¶ 37, at 8.

PROCEDURAL BACKGROUND

The Defendants have moved to insert a prosecution bar into the parties’ existing protective orders. Front Row opposes the entry of a prosecution bar and, in the alternative, argues that the court should modify the Defendants’ preferred language. Although the parties have worked to reach an agreement, there are still significant differences between their proposed prosecution orders.

1. The Motion and Proposed Text.

Between November and December of 2013, Front Row and Defendants traded electronic messages with different proposals for the prosecution bar. See Email from Doug Winnard, Goldman Ismail Tomaselli Brennan & Baum, LLP, to Christopher Evans, Shore Chan Dupumpo LLP (dated October 15, 2013), filed February 20, 2014 (Doc. 204-10), The parties ultimately failed to reach an agreement on the prosecution bar’s proper scope. They thus submitted the agreed-upon parts of the protective order to the Court. See Email from Chris Evans, Shore Chan DePumpo LLC, to Andrew Allen, Vinson & Elkins (dated December 4, 2013), filed February 20, 2014 (Doc. 204-17).

On December 10, 2013, the Court entered the parties’ agreed-upon Protective Orders in each of Front Row’s cases against the Defendants. See Protective Order Governing Discovery of Confidential and Proprietary Information, filed December .10, 2013 (Doc. 192); and Protective Order Governing Discovery of Confidential and Proprietary Information, filed December 10, 2013 (Doc. 44)(entered in separate docket for member case Front Row Techs. v. Time Warner Inc. et al, No. CIV 13-0636 JB/SCY). These Protective Orders included placeholder language in paragraph 9: “This paragraph is reserved for a possible Prosecution Bar. The parties disagree on whether such a bar is necessary. Thus, the issue will be briefed separately.” Protective Order Governing Discovery of Confidential and Proprietary Information, filed February 20, 2014 (Doc. 204-2)(“The Defendants’ Proposal”).

On February 20, 2014, all of the Defendants moved for a prosecution bar to be inserted into the Protective Orders in each of their cases. See Motion at 1. The Defendants explain that prosecution bars prohibit anyone who receives another party’s confidential technical information in discovery from prosecuting patents “concerning the technological subject matter of the patents-in-suit.” Motion at 1-2. The bar, the Defendants state, would prevent Front Row from seeking additional patents based on their .confidential information. See Motion at 1-2.

The Defendants include their proposed text for the prosecution bar as part of their Motion. See Protective Order Governing Discovery of Confidential and' Proprietary Information, filed February 20, 2014 (Doc. 204-2)(“The Defendants’ Proposal”). The Defendants’ Proposal reads as follows:

a. Primary Proposal.

(a) Notwithstanding any other provisions of this Protective Ordex-, under no circumstances shall any person employed by, related to, or representing the parties, who has received Protected Materials specifically designated as “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR” or “HIGHLY CONFIDENTIAL-SOURCE CODE” engage in any Prosecution Activity (as defined below) with respect to the subject matter of the patents-in-suit. Furthermore, any person receiving information designated as “HIGHLY CONFIDENTIAL-ATTORNEY’S EYES ONLY” or “HIGHLY CONFIDENTIAL-SOURCE CODE” shall not engage in any Prosecution Activity involving any application related to any of the patents-in-suit. The provisions of this paragraph do not apply where a party discloses its own Protected Materials to an individual not designated under this Order to receive such materials. These restrictions shall apply from the time of receipt of Protected Materials designated “HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY,” “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR,” or “HIGHLY CONFIDENTIAL-SOURCE CODE” through and including two (2) years following the entry of a final, non-appealable judgment or order or the complete settlement of all claims against all Parties in this action.

(b) Prosecution Activity shall mean: (1) preparing and/or prosecuting any patent application, or portion thereof, whether design *'or utility, either in the United States or abroad; (2) preparing patent elaim(s) for any application or patent; or (3) providing advice, counsel, or suggestions x'egarding, or in any other way influencing, claim scope and/or language, embodiment(s) for claim coverage, elaim(s) for prosecution, or products or processes for coverage by claim(s). For the .avoidance of doubt, the proscribed activities described herein are intended to include formulation of broadening claims relating to the Protected Maternal designated as “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR” or “HIGHLY ' CONFIDENTIAL-SOURCE CODE,” but are not intended to preclude participation in post-grant proceedings, including reexaminations, reissues, or inter partes review, to the extent of defending a claim of any patent of that person’s client, including a patent-in-suit, against any assertion of invalidity or unpatentability. In addition, nothing in this paragraph shall prevent any attorney from sending Prior Art to an attorney involved in patent prosecution. Prior Art shall mean (i) publications, including patents and published patent applications; and (ii) materials or information regarding third party system or product that was publicly known, on sale, or in public use as of the relevant priority date, unless such materials are designated as Protected Materials by that third party or are subject to confidentiality obligations owed to that third party.

b. Alternative Proposal.

(a) Notwithstanding any other provisions of .this Protective Order, under no circumstances shall any person employed by, related to, or representing the parties, who has received Protected Materials specifically designated as “HIGHLY. CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR” or “HIGHLY CONFIDENTIAL-SOURCE CODE” engage ..in any Prosecution Activity (as defined below) with respect to the capture of data, including video, related to a sports or entertainment event and the transmission of the data to a hand-held device. ” Furthermore, any person receiving information designated as “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY” or “HIGHLY CONFIDENTIAL-SOURCE CODE” shall not engage in any Prosecution Activity involving any application'related to any of the patents-in-suit. The provisions- of this paragraph do not apply where a party discloses its own Protected Materials to an individual not designated under this Order to receive such materials. These restrictions shall apply from the time of receipt of Protected Materials designated “HIGHLY CONFIDENTIAL-ATTORNEYS’ EYES ONLY,” “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR,” or “HIGHLY CONFIDENTIAL-SOURCE CODE” through and including two (2) years following the entry of a final, non-appealable judgment or order or the complete settlement of all claims against all Parties in this action.

(b) Prosecution Activity shall 'mean: (1) preparing and/or prosecuting any patent application, or portion thereof, whether design or utility, either in the United States or abroad; (2) preparing patent claim(s) -for any application or patent; or (3) providing .advice, counsel, or suggestions regarding, or in any other way influencing, claim scope and/or language, embodiment(s) for claim coverage, elaim(s) for prosecution, or products or processes for coverage by claim(s). For the avoidance of doubt, the proscribed activities described herein are intended to include formulation of broadening claims relating to the Protected Material designated as “HIGHLY CONFIDENTIAL — ATTORNEYS EYES ONLY — PROSECUTION BAR” or “HIGHLY • CONFIDENTIAL-SOURCE CODE,” but are not intended to preclude participation in post-grant proceedings, including reexaminations, reissues, or inter partes review, to the extent of defending a claim of any patent of that person’s client, including a patent-in-suit, against any assertion of invalidity or unpatentability. In addition, nothing in this paragraph shall prevent any attorney from sending Prior Art to an attorney involved in patent prosecution. Prior Art shall mean (i) publications, including patents and published patent applications; and (ii) materials or information regarding third party system or product that was publicly known, on sale, or in public use as of the relevant priority date, unless such materials are designated'as Protected Materials by that third party or are subject to confidentiality obligations owed to that third party.

The Defendants’ Proposal at 2; Motion at 17 (emphasis added).

The Defendants argue that this proposed prosecution bar is appropriate for two. primary reasons. - First, they contend that the close business relationship between Front Row’s litigation counsel, Mr. Shore and Mr. Chan, and Micro-Gaming Ventures LLC creates a. strong risk of inadvertent disclosure. See Motion at 11. The Defendants argue that Mr. Shore and Mr. Chan may use the Defendants’ information to prosecute patent applications “in the same field of technology as the patents-in-suit, namely, the use of hand-held devices for wirelessly receiving information related to sports and entertainment.” Motion at 5. The Defendants note that Mr. Shore and Mr. Chan are currently prosecuting new patent applications and bringing infringement claims against them. See Motion at 6. The Defendants maintain that the subject matter of the new and old patents overlaps — for example, the location awareness necessary to comply with local laws in gambling applications may also be useful to black-out sporting events when the events are televised locally. See Motion at 6-7. The Defendants say that it would be impossible for Mr. Shore and Mr. Chan to “compartmentalize” their thinking by separating information gained in this litigation from the information they use to secure new patents. Motion at 12 (citing In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1381 (Fed.Cir.2010)).

Second, the Defendants argue that their prosecution bar is “both necessary and narrowly tailored to reasonably reflect this heightened risk of inadvertent disclosure.” Motion at 10. They note that it is limited to two categories of technical documents marked “HIGHLY CONFIDENTIAL.” Motion at 14. Defendants state that these labels will only apply to “highly sensitive, technical information, including commercially sensitive technical data and research and development information relating to existing and planned products.” Motion at 14. They point to their proposal’s definition of “Prosecution Activity,” which they contend will include only activities that affect claim scope, such as preparing patent applications or claims. The Defendants’ Proposal at 3. See Motion at 15. They also note that their proposal excludes “participation in post-grant proceedings,” allowing Mr. Shore and Mr. Chan to remain involved in activities like patent reexaminations. The Defendants’ Proposal at 3. See Motion at 15. Defendants also point to their Proposal’s limited duration, which lasts “from the time of receipt of Protected Materials ... through and including two (2) years following” entry of a final judgment or a complete settlement. The Defendants’ Proposal at 2. They argue that this duration is reasonable, because: (i) the information will be less readily available in Mr. Shore and Mr. Chan’s memories after two years, and thus less susceptible to inadvertent disclosure; and (ii) other courts have found this duration reasonable. See Motion at 16 (citing EdiSync Sys., LLC v. Adobe Sys., Inc., No. 12-CV-02231-MSK-MEH, 2013 WL 561474, at *3 (D.Colo. Feb. 13, 2013)(Hegarty, J.)). Finally, the Defendants contend that their, bar’s prohibition of patent prosecution “with respect to the subject matter of the patents-in-suit” is simple, reasonably tailored, and widely adopted by other courts. Motion at 17. As a fallback, the Defendants propose that the bar cover prosecution “with respect to the capture of data, including video, related to a sports or entertainment event and the transmission of that data to a hand-held device.” Motion at 17.

The Defendants close by attacking Front Row’s earlier suggestion that the parties use the U.S. Patent Classification System to define the prosecution bar’s boundaries. First, they complain that this system would arbitrarily allow Front Row “to prosecute patent applications that are in the same patent family and indeed could be asserted against the same products accused of infringing the nine patents-in-suit, all because of the arbitrary classification combinations appearing on their cover pages.” Motion at 19. The Defendants also note that the then-current U.S. Patent Classification System was not static and was, in fact, slated for replacement in January 2015. See Motion at 19-20.

2. Front Row’s Response and the Defendants’ Reply.

Front Row responded on March 10, 2014. See Plaintiff Front Row Technologies, LLC’s Opposition to Defendants’ Motion for Entry of a Prosecution Bar Provision in the Protective Order, filed March 10, 2014 (Doc. 205)(“Response”). Front Row presents a different legal threshold for a prosecution bar, arguing that the Defendants must “prove that Front Row’s outside counsel — specifically Michael Shore and Alfonso Chan — are competitive decision-makers before the Court may even consider whether a prosecution bar is warranted.” Response at 2 (citing In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1378)). Front Row states that Mr. Shore and Mr. Chan act only as outside litigation counsel for Front Row, do not prosecute patents for Front Row, and make no competitive decisions. See Response at 3-7. Although it allows that they are also associated with Micro-Gaming Ventures LLC, it explains that this is a “completely separate ” entity with patents that do not encompass similar subject matter. Response at 4-5 (emphasis in original).

The Defendants replied to the Response on March 27, 2014. See Defendants’ Reply in Support of their Motion for Entry of a Prosecution Bar Provision in the Protective Order, filed March 27, 2014 (Doc. 209)(“Reply”). The Defendants first dispute the proper legal standard. They assert that the moving party must show “that [1] the information designated to trigger the bar, [2] the scope of activities prohibited by the bar, [3] the duration of the bar, and [4] the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” Reply at 2 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1381)).

The Defendants then describe the second step:

Once the moving party has shown that the proposed prosecution bar is reasonable, the burden shifts to the party seeking an exemption from the prosecution bar to show on an individual-by-individual basis that: (1) the individual’s activity before the [United States Patent and Trademark Office (“USPTO”)] does not and is not likely to implicate competitive decision-making related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation” and (2) the potential injury to the exemption-seeking party from restrictions imposed on its choice of litigation and prosecution counsel (or experts) outweighs the potential injury to the information-producing party caused by such inadvertent use.

Reply at 2 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1381)). The Defendants emphasize that the court’s determination of whether the attorneys are competitive decisionmakers is part of this second step rather than a threshold determination. See Reply at 3 (citing Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F.Supp.2d 254, 257 (D.P.R.2012)). They claim that Front Row has failed to dispute the reasonableness of their proposal and that it is reasonable for the four reasons they provided in their Motion. See Reply at 5 (citing Motion at 13-20).

Second, the Defendants contend that, in any case, Mr. Shore and Mr. Chan are involved in activities, before the USPTO that will likely implicate competitive decision-making. See Reply at 6-7. They assert that Mr. Shore and Mr. Chan’s work for a third-party can qualify as competitive decisionmaking, and make a prosecution bar appropriate. See Reply at 6. They explain that Mr. Shore and Mr. Chan’s responsibilities include “making invention disclosures, reviewing applications before they are filed, and defining the scope of the claims that they have purportedly co-invented.” Reply at 9. They also argue that the Court should compare Micro-Gaming Ventures LLC’s patents with not only the patents at issue here, but also with “any subject matter in which the patented technology reasonably could be used.” Reply at 9 (emphasis in original). Third, the Defendants point out that Front Row fails to allege any injury from the proposed prosecution bar. See Reply at 12.

3. The Hearing and Front Row’s Proposed Text,

The Court held a hearing on October 27, 2015. See Transcript of Motion Proceedings at 1:1-4 (Court)(taken October 27, 2015)(“Tr.”). The Defendants made the first arguments, largely repeating the points made in them briefing. See Tr. at 101:9-106:15 (Court, Littman). The Defendants explained that they had attempted negotiations on the prosecution bar, but did not come close to an agreement. See Tr. at 107:2-4 (Littman). The Court requested that each party submit a letter including its last offer to opposing counsel, so that the Court could “narrow the gap [and] choose between” their positions. Tr. at 108:1-14 (Court). The - Defendants agreed, but noted that they would not begin discovery until the prosecution bar was in place. See Tr. at 108:15-109:2 (Littman, Court). The Court then asked the Defendants whether they were aware of or could accept any model patent prosecution bars. See Tr. at 109:3-23 (Court). The Defendants did not give a definitive response, but suggested that they “would think” that language from the United States Court of Appeals for the Federal Circuit’s model would be satisfactory. Tr. at 110:14-21 (Court, Littman).

Front Row responded with a thirty-one-slide PowerPoint presentation. See Notice of Plaintiffs Presentations for October 27, 2015 Hearing, filed October 29, 2015 (Doc. 240-3)(“PowerPoint”). Front Row’s submission and hearing arguments emphasized the differences between the patents at issue and Micro-Gaming Ventures LLC’s patents. See PowerPoint. at 2-3; Tr. at 112:13-113:25 (Rafilson)(explaining that “none of the Microgaming [sic] patents are asserted against defendants” and “none of the patents claim priority to each other or to any common applications”). Front Row again noted that Micro-Gaming Ventures LLC’s patents focused on gaming and .wagering rather than video streaming. See PowerPoint at 5. It described the prejudice from the proposed bar, calling it a “thinly-veiled attempt to harass and disqualify Front Row’s lead counsel.” PowerPoint at 7. See Tr. at 115:1-9 (Rafilsori)(making the same argument). It explained that the Court must balance any risks of disclosure against “the potential difficulty the client might face if forced to rely on other counsel for the pending litigation” or USPTO proceeding. PowerPoint at 18 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d.at 1381). Given the “longstanding relationship” between Mr. Shore, Mr. Chan, and Front Row, it said, a prosecution bar would create a great burden. PowerPoint at 21.

Front Row also moved to rebut the Defendants’ interpretation of In re Deutsche Bank Trust Co. Americas. Front Row points out that the risk of disclosure must be assessed on “a counsel-by-counsel basis ... [which] should turn on the extent to which counsel is involved in ‘competitive decisionmaking’ with its client.” PowerPoint at 11 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1378)(em-phasis in PowerPoint). Front Row contends that neither attorney is a competitive decisionmaker, because: (i) Mr. Shore is not a registered patent attorney; (ii) neither Mr. Shore nor Mr. Chan has prosecuted patents for Front Row; and (iii) neither Mr. Shore nor Mr. Chan drafts claims for Micro-Gaming Ventures LLC or is involved in “day-to-day prosecution.” PowerPoint at 17. See Tr. at 116:15-17 (Rafilson). Front Row also attempts to distinguish Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., No. C-09-02180 SBA DMR, 2011 WL 197811, at *3 (N.D.Cal. Jan. 20, 2011)(Ryu, J.)(unpublished), on the grounds that the decisive factor supporting a general prosecution bar in that case, the United States District Court for the Northern District, of California’s model protective order, does not apply in the District of New Mexico. See PowerPoint at 15.

Front Row then presented two alternative proposals for any prosecution bar’s text through a series of PowerPoint slides. See PowerPoint at 25-31. Front Row’s proposal reads as follows:

a. Primary Proposal.

(a) Notwithstanding any other provisions of this Protective Order, under no circumstances shall any person employed by, related to, or representing the parties, who has- received Protected Materials specifically designated as “HIGHLY’ CONFIDENTIAL — ATTORNEY’S EYES-ONLY — PROSECUTION BAR” or “HIGHLY CONFIDENTIAL-SOURCE CODE” engage in any Prosecution Activity (as defined below) with respect to the subject matter of the patents-in-suit. For clarification, the “subject matter of the patents-in-suit” does not include gambling and/or wagers, and any persons subject to this prosecution bar may provide input into gambling and/or wagering aspects of any patent, regardless of its remaining subject matter. Furthermore, any person receiving information designated as “HIGHLY CONFIDENTIAL-ATTORNEYS EYES ONLY” or “HIGHLY CONFIDENTIAL-SOURCE CODE” shall not engage in any Prosecution Activity involving any application related to any of the patents-in-suit. The provisions of this paragraph do not apply where a party discloses its own Protected Materials to an individual not designated under this Order to receive such materials. These restrictions shall apply from the time of receipt of Protected Materials designated “HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY,” “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR,” or “HIGHLY CONFIDENTIAL-SOURCE CODE” through and including two (2) years following the entry of a final, non-appealable judgment or order or the complete settlement of all claims against all Parties in this action.

(b) Prosecution Activity shall mean: (1) preparing and/or prosecuting any patent application, or portion thereof, whether design or utility, either in the United States or abroad; (2) preparing patent claim(s) for any application or patent; or (3) providing advice, counsel, or suggestions regarding, or in any other way influencing, claim scope and/or language, embodiment(s) for claim coverage, claim(s) for prosecution, or products or processes for coverage by claim(s). For the avoidance of doubt, the proscribed activities described herein are intended to include formulation of broadening claims relating to the Protected Material designated as “HIGHLY CONFIDENTIAL-ATTORNEY’S EYES ONLY-PROSECUTION BAR” or “HIGHLY CONFIDENTIAL — SOURCE CODE,” but are not intended to preclude participation in post-grant proceedings, including reexaminations, reissues, or inter partes review, to the extent of (1) defending a claim of any patent of that person’s client, including a patent-in-shit, against any assertion of invalidity or unpatentability, and/or (2) filing or requesting such a proceeding and participating in said proceeding thereafter. In addition, nothing in this paragraph shall prevent any attorney from sending Prior Art to an attorney involved in patent prosecution. Prior Art shall mean (i) publications, including patents and published patent applications; and (ii) materials or information regarding third party system or product that was publicly known, on sale, or in public use as of the relevant priority date, unless such materials are designated as Protected Materials by that third pai*ty or are subject to confidentiality obligations owed to that third party.

b. Alternative Proposal.

(a) Notwithstanding any other provisions of this Protective Order, under no circumstances shall any person employed by, related to, or representing the parties, who has received Protected Materials specifically designated as “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY — PROSECUTION BAR” or “HIGHLY CONFIDENTIAL-SOURCE CODE” engage in any Prosecution Activity (as defined below) with respect to (1) patents and patent applications prosecuted of the same U.S. Classification (Cl.) or Fields of Classification Search listed/identified on any of the patents-in-suit, (2) patents and patent applications having a Cooperative Patent Classification corresponding [to] the International Classification listed on any of the patents-in-suit, and/or (3) a Cooperative Patent Classification corresponding to the U.S. Classification Search listed on any of the patents-in-suit. Furthermore, any person receiving information designated as “HIGHLY CONFIDENTIAL — ATTORNEY’S EYES ONLY” or “HIGHLY CONFIDENTIAL — SOURCE CODE” shall not engage in any Prosecution Activity involving any application related to any of the patents-in-suit. The provisions of this paragraph do not apply where a party discloses its own Protected Materials to an individual not designated under this Order to receive such materials. These restrictions shall apply from the time of receipt of Protected Materials designated “HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY,” “HIGHLY CONFIDENTIAL-ATTORNEYS EYES ONLY — PROSECUTION BAR,” or “HIGHLY CONFIDENTIAL-SOURCE CODE” through and including two (2) years following the entry of a final, non-appealable judgment or order or the complete settlement of all claims against all Parties in this action.

(b) Prosecution Activity shall mean: (1) preparing and/or prosecuting any patent application, or portion thereof, whether design or utility, either in the United States or abroad; (2) preparing patent claim(s) for any application or patent; or (3) providing advice, counsel, or suggestions regarding, or in any other way influencing, claim scope and/or language, embodiment(s) for claim coverage, claim(s) for prosecution, or products or processes for coverage by claim(s). For the avoidance of doubt, the proscribed activities described herein are intended to include formulation of broadening claims relating to the Protected Material designated as “HIGHLY CONFIDENTIAL-ATTORNEY’S EYES ONLY-PROSECUTION BAR” or “HIGHLY CONFIDENTIAL — SOURCE CODE,” but are not intended to preclude participation in post-grant proceedings, including reexaminations, reissues, or inter partes review, to the extent of (1) defending a claim of any patent of that person’s client, including a patent-in-suit, against any assertion of invalidity or unpatentability, and/or (2) filing or requesting such a proceeding and participating in said proceeding thereafter. In addition, nothing in this paragraph shall prevent any attorney from sending Prior Art to an attorney involved in patent prosecution. Prior Art shall mean (i) publications, including patents and. published patent applications; and (ii) materials or information regarding third party system or product that was publicly known, on sale, or in public use as.of the relevant priority date, unless such materials are designated as Protected Materials by that third party or are subject to confidentiality .obligations owed to that third party.

PowerPoint at 25-31 (emphasis and references in original)." Front Row’s alternative proposal responded to the U.S. Patent Classification System’s expiration in January 2015. See PowerPoint at 23. Front Row contends that the parties could link the. patents-in-suit to classifications within the new Cooperative Patent Classification System, arguing that Front Row’s counsel could simply avoid prosecuting patents with overlapping classifications. See PowerPoint at 23-24. - Front Row also requests that the prosecution bar exempt both Mr. Shore and Mr. Chan. See PowerPoint at 31; Tr. at 126:5-15 (Rafilson). Front Row states that the Defendants would agree with its modification to part (b) to exclude post-grant activity .from the prosecution bar. See. PowerPoint at 28.

The Defendants responded to this proposal by suggesting that it was “a little bit of argument by ambush,” because Front Row was presenting it for the first time. Tr. at 128:10-12 (Littman). They noted that there was still “a gap” between the parties’ proposals and that they did not believe “we’d be able to accept the language as it currently is.” Tr. at 128:19-23 (Littman). The Defendants made two final arguments. -First, they argued that, assuming- Mr. Shore and Mr. Chan’s involvement in patent prosecution was as minimal as Front Row asserted, the Defendants’ prosecution bar would not prejudice them in any way. See Tr, at 129:3-12 (Littman). Second, the - Defendants questioned whether any court had employed the USPTO’s categories in a prosecution bar. See Tr. at 131:6-10 (Littman).

The Court and Front Row then discussed whether the Northern District of California’s model protective order was an appropriate model in the present case. See Tr. at 132:5-22 (Court, Rafilson). Front Row argued that In re Deutsche Bank Trust Co. Americas requires courts to examine “the specific factors in each individual case,” making such a template not “useful or fair.” Tr. at 132:15-22 (Rafilson).

4. The Defendants’ Final Letter.

The Defendants complied with the Court’s request that they submit a letter including their last offer to Front Row on October 30, 2015. See Tr. at 108:1-14 (Court)(making the request); Letter from Doug Winnard, Goldman Ismail Tomaselli Brennan & Baum LLP, to Judge James Browning, filed October 30, 2015 (Doc. 243)(“Final Letter”). The Final Letter largely repeated Defendants’ earlier arguments, but it highlighted a patent application filed on April 29, 2014 with Mr. Shore and Mr. Chan’s signatures. See Final Letter at 2. Defendants argued that Micro-Gaming Ventures, LLC’s patents “focus on the same subject matter as the patents-in-suit and use generic references to gambling or wagering to claim a minor variation on the same theme.” Final Letter at 2. It again attacked Front Row’s updated proposal to use the Cooperative Patent Classification System to define the scope of the bar, arguing that patents would have no set classification at the time: of filing and that “the classifications themselves are revised on an annual basis.” Final Letter at 5. Although the Final Letter attached a proposed prosecution bar, it was identical to the Defendants’ February 2014 proposal. Compare Protective Order Governing Discovery of Confidential and Proprietary Information, filed October 30, 2015 (Doc. 243-1) with The Defendants’ Proposal at 2-3.

LAW REGARDING PATENT PROSECUTION BARS

Discovery in patent litigation frequently requires parties to provide valuable confidential information to opposing counsel. Courts typically shield such information with protective orders that specify that the recipients can use it only for the litigation’s purposes. They recognize, however, that because even competitors acting in good faith “cannot simply purge selected information from their memory, the risk is that they may later use the knowledge gained from the confidential material, however inadvertently, in the prosecution of future patents.” Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *3. This problem often arises when trial counsel' in one patent case also represent their client in patent prosecution actions. When .trial counsel receive confidential technical information from opposing counsel, it may be difficult for them to avoid using the information in separate patent applications.- “A mere ban on such misuse is not enough; apart from the challenge of knowing what is happening in an ex parte proceeding, there is the matter of proof.” Avago Techs., Inc. v. IPtronics Inc., No. 5:10-CV-02863-EJD, 2015 WL 3640626, at *1 (N.D.Cal. June 11, 2015)(Grewal, J,).

Patent prosecution bars protect against this risk by prohibiting the recipients of a party’s confidential technical information from engaging in patent prosecution-related activities concerning the subject matter of the patents in question. See 60 Am.Jur.2d Patents § 768 (“A patent prosecution bar precludes all persons who had access to the opponent’s confidential information produced for trial from working on the patent prosecution on that subject matter.”). Courts determining whether to incorporate a patent prosecution bar into a protective order must balance the risk of inadvertent disclosure or improper use of confidential information against the potential harm to a party’s right to representation by its preferred counsel. “The determination of whether a protective order should include a patent prosecution bar is governed by federal circuit law.” 60 Am.Jur.2d Patents § 761 (citing NeX-edge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d 1040, 1042 (D.Ariz.2011)(Campbell, J.)). “The party-seeking a protective order or patent prosecution bar has the burden of showing good cause for its issuance.” 60 Am.Jur.2d Patents § 761 (citing In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1378).

In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, is the Federal Circuit’s foundational opinion on patent prosecution bars. In that case, the owners of patents related to financial services brought an infringement suit against Deutsche Bank Trust Company Americas and Total Bank Solutions, LLC (collectively, “Deutsche Bank”). See 605 F.3d at 1375. Deutsche Bank responded to their discovery requests by seeking a 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.” 605 F.3d at 1376. Although the United States District Court for the Southern District of New York’s decision granted the bar, it made an exception for the plaintiffs lead trial counsel. Deutsche Bank appealed. See 605 F.3d at 1376.

The Federal Circuit seized the opportunity to determine “when an attorney’s activities in prosecuting patents on behalf of a client raises an unacceptable risk of inadvertent disclosure.” In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1379. It first set out a spectrum of patent prosecution activities ranging from “duties that involve little more than reporting office actions or filing ancillary paperwork, such as sequence listings, formal drawings, or information disclosure statements,” 605 F.3d at 1379, to substantial engagement such as “writing, reviewing, or approving new applications or continuations-in-part of applications,” 605 F.3d at 1380. The Federal Circuit recognized a broad range of roles between these two extremes. In light of this spectrum, the Federal Circuit held that courts must “examine all relevant facts surrounding counsel’s actual preparation and prosecution activities, on a counsel-by-eounsel basis.” 605 F.3d at 1380.

Specifically, In re Deutsche Bank Trust Co. Americas requires courts to balance this risk of disclosure against the prejudice to the nonmoving party’s right to counsel of its choice. See 605 F.3d at 1380. In making this decision, district courts have “broad discretion” to weigh

the extent and duration of counsel’s past history in representing the client before the PTO, the degree of the client’s reliance and dependence on that past history, and the potential difficulty the client might face if forced to rely on other counsel for the pending litigation or engage other counsel to represent it before the PTO.

605 F.3d at 1381. The Federal Circuit then attempted to articulate a concise test for future courts to apply:

We therefore hold that a party seeking imposition of a patent prosecution bar must show that the information designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented by'the disclosure of proprietary competitive' information. We further hold that the party seeking an exemption from a patent prosecution bar must show on a counsel-by-counsel basis: (1) that counsel’s representation of the client in matters before the PTO does not and is- not likely to implicate competitive decisionmaking related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation, and (2) that the potential injury to the moving party from restrictions imposed on its choice of litigation and prosecution counsel outweighs the potential injury to the opposing party caused by such inadvertent use.

In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1381 (Fed.Cir.2010)(émphasis added).

1. Framework.

Courts attempting to apply the Federal Circuit’s test have followed one of two routes. See James Boyle, Patent Prosecution Bars: Hoiv Courts Apply Deutsche Bank, Law360 (Jan. 23, 2013), available at http://www.law360.com/articles/408015/ patent-prosecution-bars-how-courts-applydeutsche-bank. The majority of courts first require the movant to “show that there is an ‘unacceptable’ risk of inadvertent disclosure of confidential information, determined by the extent to which counsel is involved in ‘competitive decisionmaking’ with its client.” NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d, at 1043 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1381). The movant must demonstrate this risk “on a counsel-by-counsel basis.” NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d at 1043, Second, the movant must show that the proposed prosecution bar is reasonable in scope — that it

reasonably reflects] the risk presented by the disclosure of proprietary competitive information. This showing requires that the information designed[] to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar all reasonably reflect the risk presented by disclosure.

NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d at 1043 (quotations omitted).

Only after these steps are complete does the burden shift to. the nonmovant. The party seeking an exception from the prosecution bar must show

on a counsel-by-counsel basis: (1) that counsel’s representation of the client in matters before the PTO does not and is not likely to implicate competitive decisionmaking related to the subject matter of the litigation so as to give rise to a risk of inadvertent use of confidential information learned in litigation, and (2) that the potential injury from restrictions imposed on its choice of litigation and prosecution counsel outweighs the potential injury to the 'moving party caused by such inadvertent use.

NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d at 1043. The majority of courts thus require the movant to show, on a counsel-by-counsel basis, that opposing counsel engage in competitive decisionmaking. See, e.g., ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 274 F.R.D. 576, 580 (E.D.Va.2010)(Stillman, J.)(considering whether specified attorneys were competitive decisionmakers as a threshold determination); Ameranth, Inc. v. Pizza Hut, Inc., No. 11-1810(JLS/NLS), 2012 WL 528248, at *3 (S.D.Cal. Feb. 17, 2012)(Stormes, J.); AmTab Mfg. Corp. v. SICO Inc., No. 11-2692, 2012 WL 195Q27, at *2 (N.D.Ill. Jan. 19, 2012)(Darrah, J.); Iconfind, Inc. v. Google, Inc., No. 11-319(GEB/JFM), 2011 WL 3501348, at *4 (E.D.Cal. Aug. 9, 2011)(Moulds, J.); Kraft Foods Global, Inc. v. Dairilean, Inc., No. 10-C-8006, 2011 WL 1557881, at *4 (N.D.Ill. Apr. 25, 2011)(Lefkow, J.); Telebuyer, LLC v. Amazon.com, Inc., No. 13-CV-1677, 2014 WL 5804334, at *1 (W.D.Wash. July 7, 2014)(Rothstein, J.); Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2014 WL 6629431, at *2 (N.D.Cal. Nov. 21, 2014)(Corley, J.); Sanders v. Mosaic Co., No. 09-00016-CV-W-JTM, 2012 WL 640159, at *3 (W.D.Mo. Feb. 27, 2012)(Maughmer, J.); Chiesi USA, Inc. v. Sandoz Inc., 41 F.Supp.3d 417, 423 (D.N.J.2014)(Donio, J.).

A minority of courts take. a. different approach.. First, the party seeking the bar must show that a genei^al bar would be reasonable in,its particular, case.. See Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F.Supp.2d at 256. ,To meet this burden, it should demonstrate “that the information designated to trigger the bar, the scope of the activities prohibited by the bar, and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary information.” Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F.Supp.2d at 257. The burden then shifts to the party seeking the exemption, which must make a counsel-by-counsel showing: (i) that the targeted counsel’s role will not likely implicate competitive decisionmaking; and (ii) that its potential injury from the restrictions imposed on its choice of counsel outweighs the other party’s potential injury resulting from its inadvertent use of protected information. See Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F.Supp.2d at 257. Only two courts have expressly adopted this position. See Eon Corp. IP Holdings, LLC v. AT & T Mobility LLC, 881 F.Supp.2d at 257; Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *3.

Although the two approaches place different burdens on the party seeking the protective order, they consider the same factors.

2. Competitive Decisionmaker and Risk to Movant.

The Federal Circuit held in In re Deutsche Bank Trust Co. Americas that district courts should determine whether counsel’s representation of the client in two capacities “does not and is not likely to implicate competitive decisionmaking related to the subject matter of the litigation so as to give rise to a risk of inádvertent use of confidential infomation learned in litigation.” 605 F.3d at 1381. The Federal Circuit’s earlier cases defined “competitive decisionmaking” as “shorthand for a counsel’s activities, association, and relationship with a client that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.” Iconfind, Inc. v. Google, Inc., 2011 WL 3501348, at *2 (quoting U.S. Steel Corp. v. United States, 730 F.2d at 1468 n. 3).

The Federal Circuit separated attorneys into three categories to determine whether they were competitive decisionmakers. First, attorneys with only remote opportunities to engage in any competitive decisionmaking would not be competitive decisionmakers:

Some attorneys involved in patent litigation, for example, may have patent prosecution duties that involve little more than reporting office actions or filing ancillary paperwork, such as sequence listings, formal drawings, or information disclosure statements. Similarly, some attorneys may be involved in high-altitude oversight- of patent prosecution, such as staffing projects or coordinating client meetings, but have no significant role in crafting the content of patent applications or advising clients on the direction to take their portfolios____ Unless there is a reasonable expectation that one such attorney’s involvement or authority will change in a relevant way during the tenure of the prosecution bar, a judge may find that the attorney is properly exempted from a prosecution bar.

In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1379-80. See Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *5. A second group “more substantially engaged with prosecution” would be properly included in a patent prosecution bar:

Such involvement may include obtaining disclosure materials for new inventions and inventions under development, investigating prior art -.relating to those inventions, making strategic decisions on the type and scope of patent protection that might be available or worth pursuing for such inventions, writing, reviewing, or approving new-applications or continuations-in-part of applications to cover those inventions, or strategically-amending or surrendering claim scope during prosecution. For these attorneys, competitive decisionmaking may be a regular part of their representation, and the opportunity to control the content of patent applications and the direction and scope of protection sought in those applications may be significant. The risk of inadvertent disclosure of competitive information learned during litigation is therefore much greater for such attorneys.

In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1380. Attorneys falling between these polar extremes would present a. closer question:

Between these examples lies a range of patent prosecution activities that may pose a closer question of the propriety of a patent prosecution bar. For instance, some junior level attorneys may primarily take instructions from more senior level attorneys, but may still have occasion to shape the content of a patent application. Some senior level supervisors may primarily serve as liaisons between prosecuting attorneys and clients, but may also have the opportunity to influence the direction of - prosecution. While these activities may not pose the heightened risk inherent in principal prosecution activities, the risk of-inadvertent disclosure may nonetheless arise under the facts and circumstances of a particular case if counsel is engaged with the client in certain competitive decisionmaking. It is therefore important for a court, in assessing the propriety of an exemption from a patent prosecution bar, to examine all relevant facts surrounding counsel’s actual preparation and prosecution activities, on-a counsel-by-counsel basis. • .

In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1380.

In Ameranth, Inc. v. Pizza Hut, Inc., a small company with few employees and a patent-enforcement business model alleged that Pizza Hut infringed two of its patents. See 2012 WL 528248, at *1. Michael Fabiano, co-litigation counsel for Amamath, Inc., was also the patent prosecutor on two pending patent applications related to the patents in dispute. See 2012 WL 528248, at *1. Mr. Fabiano was involved in “analyzing and submitting prior art, making strategic decisions concerning claim scope, and amending the claims.” 2012 WL 528248, at *1. He had amended related claims and identified relevant prior art. See 2012 WL 528248, at *1. The Honorable Nita L. Stormes, Magistrate Judge for the United States District Court for the Southern District of California, concluded that Mr. Fabiano was a competitive decisionmaker, explaining that “Fabiano’s prosecution duties include analyzing and submitting prior art, making strategic decisions concerning claim scope, and amending claims. These activities demonstrate Fabiano is substantially engaged in prosecution.” 2012 WL 528248, at *5.

Courts have also considered whether the target attorney is a competitor in determining whether he or she is a competitive decisionmaker. In NeXedge, LLC v. Freescale Semiconductor, Inc., the Honorable David Campbell, District Judge for the United States District Court for the District of Arizona explained: “Plaintiff is not a competitor of Defendants, its sole asset is the Asserted Patent, and it is not in the business of developing or patenting new products. Thus, many of the concerns recognized in the prosecution bar cases simply do not exist here.” 820 F.Supp.2d at 1044.

A target attorney’s history of litigation against the party seeking the prosecution bar is relevant, but not dispositive. In Iconfind, Inc. v. Google, Inc., 2011 WL 3501348, for example, Google argued that a prosecution bar was appropriate because “primary counsel for Iconfind are prominent plaintiffs’ attorneys who have a history of filing suit against Google.” 2011 WL 3501348, at *4. The Magistrate Judge replied that:

This type of argument, however, has been rejected by numerous courts. See SmartSignal Corp. v. Expert Microsystems, Inc., 2006 WL 1343647, at *6 (N.D.Ill. May 12, 2006)(denying plaintiffs proposed prosecution bar despite defendant’s outside counsel representing the defendant in patent prosecution work and representation of more than fifty clients on biotechnology matters, including the area involved in the underlying action); AFP Advanced Food Products LLC v. Snyder’s of Hanover Manufacturing, Inc., 2006 WL 47374, at *2 (E,D.Pa. Jan. 6, 2006)(denying defendant’s prosecution bar that would prevent the plaintiffs attorneys from prosecuting new patents for the plaintiff for a period of two years based on insufficient facts).

2011 WL 3501348, at *4. It explained that a broad prosecution bar, “without some tangible reason or good cause other than the general threat of inadvertent misuse of discovered materials, is the exact type of overly broad and generalized fear rejected by the Federal Circuit in U.S. Steel, In re Sibia [Neurosciences, Inc., 132 F.3d 50 (Fed. Cir.1997)] and Deutsche Bank. ” 2011 WL 3501348, at *4.

Other courts, however, have considered the target’s litigation history in making their decisions. Google, Inc. faced a similar plaintiff in buySAFE, Inc. v. Google, Inc., No. 3:13CV781-HEH, 2014 WL 2468553, at *3 (E.D.Va. June 2, 2014)(Hudson, J.). This time, however, the United States District Court for the Eastern District of Virginia noted that the risk to Google, Inc. was significant, “especially in light of Plaintiffs alleged predisposition to file serial lawsuits against Defendant on newly-issued patent claims.” 2014 WL 2468553, at *3. The law on this point remains unsettled, but it appears that at least some courts consider the other litigation of the party objecting to the prosecution bar against the party seeking the bar.

3. Whether the Bar Reasonably Reflects the Risk.

Courts must also determine whether the proposed prosecution bar “reasonably reflects] the risk presented by the disclosure of proprietary competitive information.” NeXedge, LLC v. Freescale Semiconductor, Inc., 820 F.Supp.2d at 1043 (quoting In re Deutsche Bank Trust Co. Americas, 605 F.3d at 1381). One court has described this task as determining “whether the proposed bar is reasonable in scope.” Ameranth, Inc. v. Pizza Hut, Inc., 2012 WL 528248, at *5. Under either name, courts consider whether: “[i] the information designated to trigger the bar, [ii] the scope of activities prohibited by the bar, [iii] the duration of the bar, and [iv] the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” In re Deutsche Bank Tmst Co. Americas, 605 F.3d at 1381.

a. Information designated to trigger the bar.

Courts have drawn a line between financial data and business information, on the one hand, and highly confidential technical information, on the other. Financial data or business information that could give a party a competitive edge, but is irrelevant to a patent application, does not raise sufficient risk for a prosecution bar. See Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *2; Kelora Sys., LLC v. Target Corp., 2011 WL 6000759, at *7; Opperman v. Path, Inc., No. 13-CV-00453-JST, 2013 WL 5643334, at *2 (N.D.Cal. Oct. 15, 2013)(Tigar, J.)(“Because the proposed bar would be triggered by information that typically would not be relevant to the prosecution of a patent, such as confidential sales and competitive data, the bar is overly broad as currently drafted.”). Highly confidential or technical information such as source code, on the other hand, triggers a prosecution bar. See Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *2 (“In contrast with financial data or business information, confidential technical information, including source code, is clearly relevant to a patent application and thus may pose a heightened risk of inadvertent disclosure.”); Telebuyer, LLC v. Amazon.com, Inc., 2014 WL 5804334, at *2 (“Source code is highly confidential, technical information that creates a heightened risk of inadvertent diselosure.”)(quotations omitted). Parties may mark information in a protective order as “‘Confidential,’ ‘Highly Confidential — Attorneys’ Eyes Only,’ or ‘Highly Confidential — Source Code.’ ” Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *2.

b. Scope of activities prohibited by the bar.

Most courts to consider this issue have allowed prosecution bars on activities closely associated with patent prosecution. In Kelora Sys., LLC v. Target Corp., for example, the court described a proposed prohibition on “directly or indirectly drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims” as “appropriately limited.” 2011 WL 197811, at *2. The District Court for the' Northern District of California approved a prosecution bar governing “patent prosecution” — with “prosecution” defined' to include “directly or indirectly drafting, amending, advising or otherwise affecting the scope or maintenance of patent claims, but [] not [] representing a party challenging a patent before a domestic or foreign agency (including, but not limited to, a reissue protest, ex 'parte reexamination or inter partes reexamination).” Applied Signal Tech., Inc. v. Emerging Markets Commc’ns, Inc., 2011 WL 197811, at *2 n. 1. Another decision provided normativ