Other courts have extended the conclusion to hold that patent counseling is also a form of competitive decision-making if it relates broadly to the scope of a patented invention. See, e.g.,Chan v. Intuit, Inc., 218 F.R.D. 659, 661-662 (N.D.Cal.2003) (" if advice related to patent prosecution is defined as competitive decision-making ... then advice on the scope of patent claims must also be defined as competitive decision-making." ).

Several courts have determined that advice related to patent prosecution and advice on the scope of patent claims constitute competitive decision-making. SeeChan v. Intuit, Inc., 218 F.R.D. 659, 661-62 (N.D.Cal.2003) (protective order required patent prosecution counsel from participating in prosecution of patent for period of two years after the conclusion of the action); In re Papst Licensing, 2000 WL 554219, 2000 U.S. Dist. LEXIS 6347 (E.D.La.2000) (finding patent prosecution constituted competitive decision-making and required attorney to refrain from patent prosecution for one year after the conclusion of the litigation, including appeals); Commissariat A L'Energie Atomique v. Dell Computer Corp., 2004 WL 1196965 *2 (D.Del.2004) (" Prosecuting patent applications ‘ involves decisions of scope and emphasis' that implicate competitive decision-making." ) (quoting Motorola, Inc. v. Interdigital Tech. Corp., 1994 WL 16189689, *4, 1994 U.S. Dist. LEXIS 20714 *11 (D.Del.1994)).

The record shows Chiaviello is the prosecuting attorney on the applications. See In re Papst Licensing, GmbH, Patent Litig., MDL 1298, 2000 WL 554219, at *3-4 (E.D. La. May 4, 2000) (upholding protective order which required counsel having access to confidential information to refrain from advice in patent prosecution for one year after conclusion of litigation, including appeals) ("[A]dvice and participation of the Papst parties' counsel in preparation and prosecution of patent applications related to the patents in suit is an intensely competitive decisionmaking activity and would be informed by access to the Non-Papst parties confidential information."); see also Chan v. Intuit, Inc., 218 F.R.D. 659, 661-662 (N.D.Cal. 2003) ("[I]f advice related to patent prosecution is defined as competitive decision-making ... then advice on the scope of patent claims must also be defined as competitive decision-making."). Chiaviello would be informed by access to EZPZ's confidential information.

See 2011 WL 197811, at *2. The prohibited actions in the bar track the language in Chan v. Intuit, Inc., 218 F.R.D. 659, 661 (N.D. Cal. 2003)(Larson, J.). The permitted activities are very similar to the activities allowed in Applied Signal Tech., Inc. v. Emerging Markets Commc'ns, Inc.

See 2011 WL 197811, at *2. The prohibited actions in the bar track the language in Chan v. Intuit, Inc., 218 F.R.D. 659, 661 (N.D.Cal.2003)(Larson, J.). The permitted activities are very similar to the activities allowed in Applied Signal Tech., Inc. v. Emerging Markets Commc'ns, Inc.

tent prosecution is sufficient to find that the attorney is also a competitive decision maker for the party: " Prosecuting patent applications ‘ involves decisions of scope and emphasis' that implicate competitive decision making, as claims may be drafted to ‘ read on new products and new directions where [a party] project[s] sales to be most critical.’ " Commissariat A L'Energie Atomique v. Dell Computer Corp., 2004 WL 1196965, *2, 2004 U.S. Dist. LEXIS 12782, *8 (D.Del.2004) (barring plaintiff's attorneys from accessing defendant's highly confidential information because they were prosecuting patents involving the technology at issue) (quoting Motorola, 1994 WL 16189689, *2-3, *4, 1994 U.S. Dist. LEXIS 20714 at *7-*8, *11); In rePapst Licensing, GmbH, Patent Litig., 2000 U.S. Dist. LEXIS 6374 (E.D.La.2000) (defining advice related to patent prosecution as competitive decision making); Chan v. Intuit, Inc., 218 F.R.D. 659, 662 (N.D.Cal.2003) (defining advice on the scope of patent claims as competitive decision making).          In other cases, courts have made more specific findings regarding patent prosecution and other factors, including who is the attorney at issue, the attorney's relationship with the party, and the specific type of prosecution work undertaken for that client, to show that the attorney is a competitive decision maker.

Other courts have extended the conclusion to hold that patent counseling is also a form of competitive decision-making if it relates broadly to the scope of a patented invention. See, e.g., Chan v. Intuit, Inc., 218 F.R.D. 659, 661-662 (N.D. Cal. 2003) ("if advice related to patent prosecution is defined as competitive decision-making . . . then advice on the scope of patent claims must also be defined as competitive decision-making.").Conclusion

Other courts have extended the conclusion to hold that patent counseling is also a form of competitive decision-making if it relates broadly to the scope of a patented invention. See, e.g.,Chan v. Intuit, Inc., 218 F.R.D. 659, 661-662 (N.D. Cal.2003) ("if advice related to patent prosecution is defined as competitive decision-making... then advice on the scope of patent claims must also be defined as competitive decision-making.").          Conclusion

Greater protections are necessary where counsel may inadvertently use confidential information "to shape advice regarding the scope of patent claims as part of the prosecution of patents for any party to this action, to the detriment of the opposing party, its competitor." Chan v. Intuit, Inc. , 218 F.R.D. 659, 661-62 (N.D. Cal. 2003) (protective order required patent prosecution counsel from participating in prosecution of patent for period of two years after the conclusion of the action). This is primarily because "[p]rosecuting patent applications `involves decisions of scope and emphasis' that implicate competitive decision making, as claims may be drafted to `read on new products and new directions where [a party] project[s] sales to be most critical.'"

Several other courts have barred counsel from accessing the opposing party's confidential information where the counsel was involved in patent prosecution. See Chan v. Intuit, Inc., 218 F.R.D. 659, 662 (N.D. Cal. 2003) (barring plaintiff's attorneys who provided advice related to patent prosecution or scope of claims); Cummins-Allison Corp. v. Glory Ltd., 2003 U.S. Dist. LEXIS 23653 (N.D. Ill. 2004) (barring counsel from prosecuting certain patent applications up until one year after the conclusion of litigation, including appeals); Medtronic, Inc. v. Guidant Corp., 2001 U.S. Dist. LEXIS 22805 (D. Minn. 2001) (barring attorneys who received "Outside Attorneys Eyes Only" information from participating for one year in prosecuting the clients' patents in a certain field); In re Papst Licensing, GmbH, Patent Litig., 2000 U.S. Dist. LEXIS 6374 (E.D. La. 2000) (restricting Papst's counsel because risk of inadvertent disclosure outweighed any impairment on Papst's ability to litigate); Interactive Coupon Mktg. Group, Inc. v. H.O.T.! Coupons, LLS, 1999 U.S. Dist. LEXIS 12437 (N.D. Ill. 1999) (barring plaintiff's counsel because involvement in patent prosecution constituted involvement in competitive decisio