Honor IP Document Protective Orders and Handle With Care


Attorneys and clients should take a court’s protective orders concerning intellectual property documents seriously, as a discussion at a recent conference session and a case I am covering illustrate.

The BIO IP Counsels Committee Conference in Newport Beach, Fla., about which I wrote articles and a blog for Bloomberg BNA, held sessions on major trends and important cases. Procedural issues such as standing (who is allowed to file litigation) and venue (in what court will the case be tried) that have proved to be important in recent lawsuits were also discussed.

One session stressed the need to honor protective orders that a court issues concerning documents. Someone said to me afterward, “Does anyone really need to be warned not to violate a protective order? I mean, has there been a rush of cases about attorneys violating protective orders?”

Li Westerlund, vice president for global intellectual property for Bavarian Nordic, who spoke on protective orders at the session, told me afterward, "Unfortunately, sometimes attorneys violate them, and sometimes the documents are released through plain sloppiness.” She alluded to the nonbiopharma case of Apple Inc. v. Samsung Electronics Co. Ltd., N.D. Cal., No. 5:11-cv-01846, 2014, in which an employee distributed a report under a protective order to hundreds of other employees not involved in the litigation.

One case I have been covering illustrates the relevance of what Westerlund told me.

I wrote a special report about a lawsuit filed in 2015 in the U.S. District Court for the Southern District of New York by Errant Gene Therapeutics (EGT) against Sloan Kettering Institute for Cancer Research (SKI) for breach of contract, fraud and return of a treatment for thalassemia, a fatal inherited blood disease, and for sickle cell disorder. Pat Girondi founded EGT to find a treatment and cure for his son. EGT filed separate litigation on Sept. 29, 2016, in the Illinois Circuit Court for Cook County for tortious interference with a business relationship and fraud against Bluebird Bio Inc., whose own thalassemia therapy SKI allegedly favored.

SKI asked the federal court in New York to enforce the protective order concerning an “attorneys’ eyes only document” and for sanctions. It alleged that EGT and its law firm knowingly used in the Illinois court restricted information produced in discovery from SKI and BlueBird for the federal lawsuit, notwithstanding the protective order’s clear prohibition against using discovery from this case for any other case. Both parties have filed responses, and the court is expected to issue a ruling soon.

Westerlund told me that the violation of a protective order can happen by accident or on purpose. But regardless of how the violation occurred, the consequences can affect the outcome of the court proceeding and the reputations of attorneys. And even if a court finds the protective order hasn’t been violated, it still takes a great deal of time and money to defend against the accusation in court.

So, attorneys and clients should “take protective orders seriously and handle them with care,” Westerlund advised.

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