AmTab Mfg. Corp. v. SICO, Inc., No. 11 C 2692, Slip Op. (N.D. Ill. Jan. 19, 2012) (Darrah, J.).
Judge Darrah denied defendant’s (collectively “SICO”) motion to amend the Local Patent Rule Appendix B protective order to include a prosecution bar – a limitation that any counsel with access to a category of its opponent’s documents may not prosecute patents for the attorney’s clients for, in this case, two years. SICO did not meet its burden, failing to show a “clearly defined and serious injury” as required by the law. In fact, SICO identified no documents or information that it was particularly concerned about disclosing. And SICO did not show how any harm would result from any specific disclosure or even a general disclosure. Furthermore, there was no evidence that plaintiff AmTab’s counsel was engaged in competitive decision-making. And, SICO did not seek a ban as to AmTab’s outside counsel whose firm also prosecuted patents for AmTab.