In 2005, Jim Nikolai served on the Patent Advisory Committee to the U.S. District Court for the District of Minnesota.  That committee recommended rules “designed to ease, simplify, and reduce the cost of patent practice in the District of Minnesota.”  The rule changes recommended by the committee were adopted by the Court and have generally been well received.  As part of its charge the committee drafted a template protective order for patent cases.

Virtually every patent case includes a protective order.  The purpose of a protective order is to permit discovery to proceed in the case and at the same time protect the trade secrets and confidential information of the parties. The committee concluded that repeated negotiations of protective orders “wastes the parties’ resources and delays the beginning of discovery.”  To address the waste of resources, the committee recommended a template to be used in formulating protective orders.  To address delays in beginning discovery, the Court requires parties in patent cases to present the issues to the Court prior to the initial pretrial conference and the Court has agreed to “endeavor to resolve any issues relating to the Protective Order in connection with the pretrial conference.”

A recent opinion by Judge Patrick J. Schiltz in Northbrook Digital, LLC v. Vendio Services, Inc. (Case No. 07-CV-2250) demonstrates just how the template created by the committee is intended to work.  The parties agreed to essentially adopt the template in total, but the defendants wanted changes that would preclude one person from having access to certain types of information, given the unique circumstances surrounding that individual.  That person was not only the named inventor of the patent in suit,  but also an attorney licensed to practice before the U.S. Patent and Trademark Office who prosecuted his own patents, the owner of the plaintiff company, an expected fact and expert witness at trial, and an attorney of record in the lawsuit.  While Judge Schiltz’ order suggests the parties and the Court expended significant resources on this issue, reading between the lines, one sees how the template drafted by the committee allowed the court and parties to focus on this issue alone.  In the end, the court entered an order, based on the template with modifications, designed to meet the particular and unique aspects of the case.

As the committee noted in its comments, the template “is meant to focus attention on issues typically contested in negotiating protective orders…even though in any individual case, parties may, by agreement or by motion, depart from the template.” 

To discuss this and other aspects of patent litigation in the District of Minnesota, please contact Jim at:

Jim.Nikolai@nm-iplaw.com  or (612) 392-7302