In our June, 2007 briefing, we explained that patent trials are almost always open to the public. Of course, trials are the culmination of many months, sometimes years, of pre-trial discovery, including the production of documents containing confidential information and the deposition of witnesses. While it's generally known that such pre-trial discovery is not open to the public, a question often asked, particularly by non-US entities involved in US litigation, is whether the opposing in-house counsel will have access to the confidential documents produced and deposition testimony given in the litigation.

Typically, the parties to the litigation will enter into a Protective Order Governing Confidential Information. This Protective Order will set forth who gets access to the confidential documents that are produced and the confidential deposition testimony that is given. It is not uncommon for the parties to agree that a limited number of in-house counsel may have access to such information (or a subset thereof), provided that those counsel are responsible for the management of litigation and have no responsibility for patent prosecution.

In the absence of an agreement between the parties, the court will decide, if the issues are properly raised in a motion, whether to allow in-house counsel access to confidential information provided during discovery. In determining whether to allow in-house counsel access to confidential information, a court "balance[s] [a party's] legitimate interest in maintaining the confidentiality of its proprietary information with [the other party's] legitimate interest in gathering and analyzing evidence to support its lawsuit" (Amsted Indus Inc v Nat'l Castings, Inc, No 88 C 924, 1988 WL 90022, *2 (ND Ill August 22 1988)). The court stated: "It often has been recognized, particularly in intellectual property cases, that the need for disclosure of even highly relevant information to a competitor may be outweighed by the irreparable harm that can result to the disclosing party." Irreparable harm results from the risk that confidential information would be inadvertently disclosed for use beyond the immediate purposes of the litigation (US Steel Corp v US, 730 F2d 1465, 1468 (Fed Cir 1984)).

In balancing the competing interests of the parties, the court will consider numerous factors in deciding whether to allow in-house counsel access to confidential information during discovery. These factors include (1) whether the party seeking access to the information is a direct business competitor of the party who produced the confidential information; (2) whether the information involves directly competing products; (3) whether the information to be disclosed includes technical data or pricing and sales data; and (4) whether the persons to be given access are involved in "competitive decision making".

Thus, as can be seen, there is no bright line answer to the question. Absent agreement between the parties, access is determined on a case-by-case basis given the facts and circumstances of the particular litigation.

Russell Levine

Kirkland & Ellis LLP
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