Sloan Valve Co. v. Zurn Indus., No. 10 C 204, Slip Op. (N.D. Ill. Mar. 8, 2011) (St. Eve, J.).

Judge St. Eve granted plaintiff Sloan’s motion to lift the stay pending reexam of the patent-in-suit to modify the Protective Order. The Patent office required production of all information material to patentability, even if it is subject to a Protective Order. MPEP § 724. But the Protective Order was silent as to whether Sloan could provide the Patent Office with confidential information.

The Court noted case law holding that MPEP § 724 could not override district court orders. Telecomm. Sys., Inc. v. Mobile 365, Inc., No. 06 C 485, 2009 WL 594 3235 (E.D. Va. Mar. 31, 2009). As a result, the proper method for a patentee was exactly what Sloan did – seek a modification to the governing Protective Order.

So, the Court modified the Protective Order to allow disclosure to the Patent Office, so long as MPEP § 724.02 procedures for maintaining documents as confidential.