United States District Court, N.D. Illinois, Eastern Division
September 23, 2004.
TRADING TECHNOLOGIES INTERNATIONAL, INC., Plaintiff,
eSPEED, INC. Defendant.
The opinion of the court was delivered by: JAMES MORAN, Senior District Judge
MEMORANDUM OPINION AND ORDER
The parties have advised the court that they agree (or
virtually agree) on the terms of a protective order, with one
significant exception: an attorney who is active for plaintiff in
this litigation has also been involved in patent prosecutions for
plaintiff in the past. Assuming that attorney, Steven F. Borsand,
may be involved in patent prosecutions for plaintiff in the
future, a not unreasonable assumption, defendant wants to deny
him access to its highly confidential material or bar him for a
period of time from prosecuting patents on plaintiff's behalf. We
deny that restriction.
Both plaintiff and defendant have cases upon which they can
rely. We think, however that the Federal Circuit presented the
better argument in In re Sibia Neurosciences, Inc., 1997
U.S.App. LEXIS 31828. Mr. Borsand, so far as we know, is
primarily a litigator. He has, in the past, become incidentally
involved in patent applications by, for example, participating in
interviews at the PTO, where the applicant is seeking to persuade
the patent examiner of the strength of its position. He there
acts as an advocate, not as a drafter of specifications and
claims, and certainly not as one involved in his client's
decisions regarding pricing, marketing, product design or the like. We conclude that the risk of
inadvertent misuse of confidential material is not great enough
to justify the restrictions defendant proposes. And we have no
reason to doubt that Mr. Borsand will conscientiously keep in
mind and act to uphold his professional obligations.
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