Argued and submitted February 11, 1982.
On review from Court of Appeals.
Appeal from Circuit Court, Multnomah County, Robert P. Jones, Judge 53 Or. App. 890, 632 P.2d 1377 (1981).
Robert E. Franz, Jr., Eugene, argued the cause and filed brief for petitioners on review.
Charles R. Mowry, Portland, argued the cause and filed brief for respondent on review. With him on the brief was Dardano, Mowry, Weidner Griffiths, P.C., Portland.
Plaintiff, a contractor in the business of cleaning and painting large structures, sued its liability insurer to recover sums that plaintiff had paid to the owners of automobiles damaged by plaintiff in the course of spray painting a bridge. The insurer defended on the grounds that coverage was excluded, first, by a clause in the policy and second, by a public policy against recovering insurance for liability arising from intentional conduct. The trial court entered summary judgment for defendant on the basis of the policy exclusion. The Court of Appeals reversed, holding that the exclusion required clarification by evidence and that coverage, if provided by the insurance policy, was not precluded by the nature of plaintiff's conduct. 53 Or. App. 890, 632 P.2d 1377 (1981). Having allowed review primarily to consider the second issue, we affirm.
"In September, 1977, plaintiff purchased a broad form property damage liability insurance policy from the defendants. In May, 1978, plaintiff was awarded a contract with the State of Oregon to paint the McCollough Bridge in Coos County. Under the terms of the contract with the State, plaintiff could paint the bridge by brush, roller or spray. The contract also required plaintiff to make arrangements for the removal of overspray from passing vehicles. Despite plaintiff's efforts to avoid overspray damage, a large number of vehicles passing over the bridge were sprayed. In accordance with its contract, plaintiff established a paint removal service near the bridge. Not all drivers took advantage of the service, and some of those who did were unsatisfied. The affidavit of plaintiff's owner asserts that precautions to avoid overspray were taken, but that despite any precautions taken in such a spray paint operation, overspray in undeterminable amounts is inevitable."
53 Or App at 892.
"(h) For damage to property arising out of the discharge, dispersal, release or escape of smoke, vapors, soot, fumes, acids, alkalis, toxic chemicals, liquids or gases, waste materials or other irritants, contaminants or pollutants into or upon land, the atmosphere or any watercourse or body of water; but this exclusion does not apply if such discharge, dispersal, release or escape is sudden and accidental."
53 Or App at 892-93. The parties dispute whether the list of acids, alkalis, liquids, and other substances mentioned in this clause includes the paint sprayed by plaintiff that gave rise to the claims against it. The Court of Appeals concluded that this reading of the clause is not "so clear as to cause a reasonable person in the position of the insured to believe that paint was one of the substances referred to" in the exclusion and that the clause plausibly might be read to exclude liability for pollution damages to the environment. In view of an affidavit that defendants knew of the sandblasting and painting operations for which plaintiff wished liability insurance, the meaning intended or understood by the parties to the policy should be determined upon trial. 53 Or. App. 894-96. We agree with this conclusion of the Court of Appeals.
The case nevertheless would not need to be remanded for trial if the harmful conduct for which plaintiff became liable precludes recovery under a general principle disallowing indemnity against liability for intentional wrongdoing. In the law of liability insurance, this general principle is variously based on specific policy provisions, or on "the very nature of insurance," or on public policy. See Keeton, Insurance Law 288-289 (1971). Because such insurance contracts traditionally covered liability arising from "accidents" or expressly excluded liability for intentional acts, most decisions denying recovery have not had to go beyond the limits explicit or implicit in the contract and squarely to hold insurance covering liability for intentional acts to be an unlawful contract. There may be a question how far the case law interpreting older policies was superseded, intentionally or otherwise, by the 1966 change in a new standard liability policy, which substituted the term "occurrence" for "accident" in the key coverage clause (though retaining "accident" as part of the definition of "occurrence" at least for some purposes). The insurance contract found in the present record, however, consists primarily of typewritten provisions of a policy issued by defendant underwriters at Lloyd's, London, which refer neither to "accidents" nor to the legal premise of the liability against which the policy protects the insured. If any policy provisions or prior interpretations of similar insurance policies exclude coverage of this insured's operations, other than the exclusion previously referred to, defendants have not cited them. We therefore turn to the question whether Oregon law precludes recovery if the losses resulting from those operations otherwise were within the coverage of the insurance contract.
This and related questions concerning liability insurance for predictable or unavoidable harm from construction work are helpfully reviewed in Hall, Contractors' Liability Insurance for Property Damage Incidental to Normal Operations — The Standard Coverage Problem, 16 U Kan L Rev 181 (1968).
Defendants contend that recovery is precluded insofar as the insured intentionally chose a method of operation, spray painting, which the insured fully expected to cause the harm for which it paid and now seeks reimbursement. "Intent," in this as in other contexts, is a term of many meanings, which is applied to mental states extending from conscious performance of the simplest bodily acts to the widest ultimate expectations. In a provision restricting insurance against liability for intentional wrongdoing, "intentional" could refer to any liability pleaded as one of the intentional torts, or irrespective of the theory of liability, to an insured's intentional action which unintentionally causes harm, or to such intentional action only when taken in disregard of a certainty or high likelihood of harm, or to actions motivated by a purpose to cause harm, though not necessarily the actual harm suffered by the injured party, or finally only to action taken for the purpose of inflicting the very harm for which liability is later imposed. Courts have reached different positions on these meanings of intent when construing clauses excluding intended harm from insurance coverage. See Pachucki v. Republic Ins. Co., 89 Wis. 703, 708, 278 N.W.2d 898, 901 (1979), citing Annot., 2 ALR 3d 1238 (1965). This court interpreted one such exclusion to apply only when the harm itself was intended in City of Burns v. Northwestern Mutual Ins. Co., 248 Or. 364, 434 P.2d 465 (1967). Two later decisions similarly interpreted contract clauses, Snyder v. Nelson/Leatherby Ins. Co., 278 Or. 409, 564 P.2d 681 (1977) (policy limited to losses "caused by accident"); Nielsen v. St. Paul Companies, 283 Or. 277, 583 P.2d 545 (1978) (exclusion of losses "expected or intended from the standpoint of the Insured"). Professor (now Judge) Keeton maintained that the concept of insurance necessarily implies an exclusion of "intentional" losses, as seen from the standpoint of the person whose loss is the basis of the insurance claim, conceding that to include "highly expectable" losses under this rubric states a difficult distinction of degree. Keeton, Insurance Law 286-90, 297-99 (1971).
As we have said, the question how far an insurance policy in the form employed in this case is understood or interpreted to imply such an exclusion has not been briefed. If coverage is to be precluded as a matter of law, however, the rule must be sought not in the meaning of "intent" but in some public policy overriding normal contractual obligations.
Such a public policy may be found in legislative enactments, administrative regulations, even in the constitution, see Hendrix v. McKee, 281 Or. 123, 132, 575 P.2d 134 (1978). No such source is cited to us here. Occasionally, the rule may be developed in case law. See Harrell v. Travelers Indemnity Co., 279 Or. 199, 205-208, 567 P.2d 1013 (1977), Isenhart v. General Casualty Co., 233 Or. 49, 377 P.2d 26 (1962). Defendant argues that such a rule precludes insurance against liability for injuries caused by the insured's intentional action when these injuries, though undesired, are so certain as to fall within the tort principle that one is deemed to intend the foreseen or expected consequences of one's acts. The rule is said to be required by a public policy of deterring persons from choosing to disregard known or expected harm to others because any liability for this harm will be borne by the insurer.
Insofar as there was a governmental policy in this case, it presumably was to have the bridge painted at the lowest cost while minimizing the attendant risk of harm as well as inconvenience. The contracting parties contemplated the high probability that paint would strike some vehicles and provided for facilities to clean them as well as insurance. The state did not choose to close the bridge for periods alternating with periods of painting.
The case thus illustrates the obstacles to judicial creation of "public policy" restrictions on liability insurance. The costs here at issue could be spread through insurance, reflected in the contract bid, or through the tax costs of painting by costlier methods less likely to strike cars than spray painting, or they could be left to tort claims of the hapless victims against the contractor. If liability coverage is precluded, the state might be limited to contractors large enough to be self-insurers, unless it is willing to deal with contractors that may be financially unable to satisfy uninsurable claims. Policy choices like these should have a source beyond judicial speculation.
Although the argument of "deterrence" has superficial plausibility, this court has not found in it the basis of a "public policy" restricting liability insurance. For one thing, the argument proves too much. There is a public policy, expressed by criminal, administrative, and civil sanctions, to deter negligent and irresponsible as well as intentional misconduct, yet the argument that insurance would undermine the deterrent of liability for negligence was rejected long ago. See Appleman, Insurance Law and Practice § 2105 at 9 (Revised Ed); McNeely, Illegality as a Factor in Liability Insurance, 41 Colum L Rev 26 (1941). Moreover, when a court is called upon to derive a public policy from assumptions about the effect of legal rules on social behavior, it is asked to act largely on faith. A rule against insurance for highly expectable losses is a blunt instrument. Fear of uninsured liability may serve to deter irresponsible conduct in one context and not in another. In the present context of a contractor's liability for harm caused by construction or repair work, for instance, it has been suggested that other costs of injuries and claims litigation remain to deter substandard operations even under liability insurance. Hall, Contractors' Liability Insurance for Property Damage Incidental to Normal Operations — The Standard Coverage Problem, 16 U Kan L Rev 181, 187-91 (1968). Legislators can make such policy judgments on empirical or on political grounds, but the court has been presented with nothing within the reach of judicial notice to show that liability insurance would have a greater "evil tendency" to promote tortious or otherwise unlawful operations when it covers expected, though undesired, negligently caused injuries.
Mr. Hall, in the article cited in note 1, discusses the possibility that businessmen may be willing to risk liability for property damage from dangerous operations when they would shy away from gain at the cost of another's bodily injury, and that this willingness might be enhanced by liability insurance. He lists several countervailing factors nevertheless discouraging high-risk operations, such as possible injury to employees, disruption of operations, penalty clauses in contracts, collateral costs in claims litigation and of loss of goodwill, the risk of higher insurance premiums, and the pressure of liability insurers for safer operations. 16 U Kan L Rev 181, 187-189.
"Even if it could be established that liability insurance for property damage incidental to the contractor's normal operations would discourage utilization of safer modes of operation, it would not follow necessarily that insurance for such damage should be held to be against public policy. Deterrence is not the only objective of the tort law. Equally if not more important is the objective of compensating the injured party . . . The significance of insurance as the sole source of compensation looms particularly large in the areas of contractors' liability for property damage incidental to normal operations."
16 U Kan L Rev 181, 190. Possibly a contractor might still be denied recovery under a liability insurance policy if it is shown that the contractor deliberately chose a high-risk, cost-cutting method of operation because it had shifted the financial risk to the insurer, but such a defense would have to be found in the relations between the insurer and the insured, not in a rule forbidding the insurance.
Pyle v. Kernan, 148 Or. 666, 673, 36 P.2d 580 (1934).
"A contract to indemnify the insured for damages he is forced to pay as a result of an intentionally inflicted injury upon another should not be regarded as contrary to public policy unless the fact of insurance coverage can be related in some substantial way to the commission of wrongful acts of that character. Plaintiff contends that a person's decision as to whether he will intentionally inflict an injury upon another will not ordinarily turn upon the existence or non-existence of insurance covering the insured's loss resulting from an action brought against him for such conduct. Generally this is probably true, although depriving insured of coverage for intentionally inflicted injuries might have such a deterring effect in some cases. However, punishment rather than deterrence is the real basis upon which coverage should be excluded. A person should suffer the financial consequences flowing from his intentional conduct and should not be reimbursed for his loss, even though he bargains for it in the form of a contract of insurance. A similar idea is expressed in the cases which exclude coverage on the ground that `a person should not profit from his own wrong.'"
233 Or at 52-53 (footnotes omitted). Liability for assault and battery therefore was not within the coverage of the policy and of the promise to defend the insured.
The court further held that the insurer had no duty to defend even against a groundless claim of damages for an intentional tort, determining the duty to defend by the allegations of the complaint against the insured. This part of the holding did not rest on public policy but on the court's assumption about the insurer's promise to defend, which presumably depends on the terms of the policy. 233 Or at 54.
In Harrell v. Traveler's Indemnity Co., supra, the court rejected an insurer's contention that public policy forbids liability insurance to cover punitive damages. In that case, punitive damages had been awarded against an insured who injured another by reckless driving after drinking. Quoting Isenhart v. General Casualty Co., supra, the court drew a distinction between the "intentional act" and "intentionally inflicted injury" for which coverage was denied in Isenhart and the driver's conduct in Harrell, even though that conduct had been found sufficiently reckless of danger to others to justify imposition of punitive damages and presumably was a serious traffic offense. See ORS 483.992, cited in Harrell v. Ames, 265 Or. 183, 189, 508 P.2d 211 (1973). The several opinions in Harrell v. Traveler's Indemnity Co., supra, make clear that the court rejected a rule denying liability coverage for the sake of deterrence and confined the rule of Isenhart to those intentional acts whose purpose is to cause an injury of the kind giving rise to the insured's liability. This limited rule was again restated with reference both to an exclusion clause and to public policy in Nielsen v. St. Paul Companies, supra, 283 Or at 281.
It is worth noting that both Isenhart and Harrell involved torts of the kind committed by individuals rather than by enterprises, and that these torts formed the context of the discussion of "punishment" or "deterrence." This does not mean that even an intentional tort by an individual may not be unintended and "fortuitous" from the standpoint of a corporation or other insured who is derivatively liable for the individual's act. See Keeton, Insurance Law 293 (1971). Compare Ferguson v. Birmingham Fire Ins., 254 Or. 496, 460 P.2d 342 (1969), stating that the Isenhart exclusion would apply to a trespass action against an individual landowner for the acts of a laborer only if the damages arose out of the "willful" conduct of the insured. 254 Or at 506.
Although the insurer in this case tries to place the contractor's method of operation within the class of intentional wrongdoing, nothing in the record suggests that it was any part of the contractor's purpose to spray paint on automobiles crossing the bridge while it was being painted. To the contrary, the contractor had obligated itself to maintain cleaning facilities for just this eventuality, and its contract bid included $20,000 to cover anticipated claims. No doubt the contractor would have been pleased if no cars had crossed the bridge while the painting was in progress, but those were not the conditions provided by the state. See supra note 2. The choice to paint the bridge by methods and under conditions expected to cause some compensable harm was intentional, as the insurer asserts, but it was not the kind of purposeful infliction of injury that excludes recovery of indemnity under the rule of Isenhart v. General Casualty Co.


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This chapter goes on with the burden of Nineveh, and concludes it. I. The sins of that great city are charged upon it, murder (v. 1), whoredom and witchcraft (v. 4), and a general extent of wickedness (v. 19). II. Judgments are here threatened against it, blood for blood (v. 2, 3), and shame for shameful sins (v. 5-7). III. Instances are given of the like desolations brought upon other places for the like sins (v. 8�). IV. The overthrow of all those things which they depended upon, and put confidence in, is foretold (v. 12�).
Here is, I. Nineveh arraigned and indicted. It is a high charge that is here drawn up against that great city, and neither her numbers nor her grandeur shall secure her from prosecution. 1. It is a city of blood, in which a great deal of innocent blood is shed by unrighteous war, or under colour and pretence of public justice, or by suffering barbarous murders to go unpunished; for this the righteous God will make inquisition. 2. It is all full of lies; truth is banished from among them; there is no such thing as honesty; one knows not whom to believe nor whom to trust. 3. It is all full of robbery and rapine; no man cares what mischief he does, nor to whom he does it: The prey departs not, that is, they never know when they have got enough by spoil and oppression. They shed blood, and told lies, in pursuit of the prey, that they might enrich themselves. 4. There is a multitude of whoredoms in it, that is, idolatries, spiritual whoredoms, by which she defiled herself, and to which she seduced the neighbouring nations, as a well-favoured harlot, and sold and ruined nations through her whoredoms. 5. She is a mistress of witchcrafts, and by them she sells families, v. 4. That which Nineveh aimed at was a universal monarchy, to be the metropolis of the world, and to have all her neighbours under her feet; to compass this, she used not only arms, but arts, compelling some, deluding others, into subjection to her, and wheedling them as a harlot by her charms to lay their necks under her yoke, suggesting to them that it would be for their advantage. She courted them to join with her in her idolatrous rites, to tie them the faster to her interests, and made use of her wealth, power, and greatness, to draw people into alliances with her, by which she gained advantages over them, and made a hand of them. These were her whoredoms, like those of Tyre, Isa. 23:15, 17. These were her witchcrafts, with which she unaccountably gained dominion. And for this that God has a quarrel with her who, having made of one blood all nations of men, never designed one to be a nation of tyrants and another of slaves, and who claims it as his own prerogative to be universal Monarch.
II. Nineveh condemned to ruin upon this indictment. Woe to this bloody city! v. 1. See what this woe is.
1. Nineveh had with her cruelties been a terror and destruction to others, and therefore destruction and terror shall be brought upon her. Those that are for overthrowing all that come in their way will, sooner or later, meet with their match. (1.) Hear the alarm with which Nineveh shall be terrified, v. 2. It is a formidable army that advances against it; you may hear them at a distance, the noise of the whip, driving the chariot-horses with fury; you may hear the noise of the rattling of the wheels, the prancing horses, and the jumping chariots; the very noise is frightful, but much more so when they know that all this force is coming with all this speed against them, and they are not able to make head against it. (2.) See the slaughter with which Nineveh shall be laid waste (v. 3), the sword drawn with which execution shall be done, the bright sword lifted up and the glittering spear, the dazzling brightness of which is very terrible to those whom they are lifted up against. See what havoc these make when they are commissioned to slay: There is a great number of carcases, for the slain of the land shall be many; there is no end of their corpses; there is such a multitude of slain that it is in vain to go about to take the number of them; they lie so thick that passengers are ready to stumble upon their corpses at every step. The destruction of Sennacherib's army, which, in the morning, were all dead corpses, is perhaps looked upon here as a figure of the like destruction that should afterwards be in Nineveh; for those that will not take warning by judgments at a distance shall have them come nearer.
2. Nineveh had with her whoredoms and witchcrafts drawn others to shameful wickedness, and therefore God will load her with shame and contempt (v. 5-7): The Lord of hosts is against her, and then she shall be exposed to the highest degree of disgrace and ignominy, shall not only lose all her charms, but shall be made to appear very odious. When it shall be seen that while she courted her neighbours it was with design to ruin their liberty and property, when all her wicked artifices shall be brought to light, then her shame is discovered to the nations. When her proud pretensions are baffled, and her vain towering hopes of an absolute and universal dominion brought to nought, and she appears not to have been so strong and considerable as she would have been thought to be, then to see the nakedness of the land do they come, and it appears ridiculous. Then do they cast abominable filth upon her, as upon a carted strumpet, and make her vile as the offscouring of all things; that great city, which all nations had made court to and coveted an alliance with, has become a gazing-stock, a laughing stock. Those that formerly looked upon her, and fled to her, in hopes of protection from her, now look upon her and flee from her, for fear of being ruined with her. Note, Those that abuse their honour and interest will justly be disgraced and abandoned, and, because miserable, will be made contemptible, and thereby be made more miserable. When Nineveh is laid waste who will bemoan her? Her trouble will be so great, and her sense of it so deep, as not to admit relief from sympathy, or any comforting considerations; or, if it would, none shall do any such good office: When shall I seek comforters for thee? Note, Those that showed no pity in the day of their power can expect to find no pity in the day of their fall. When those about Nineveh, that had been deceived by her wiles, come to be undeceived in her ruin, every one shall insult over her, and none bemoan her. This was Nineveh's fate, when she was made a spectacle, or gazing-stock. Note, The greater men's show was in the day of their abused prosperity the greater will their shame be in the day of their deserved destruction. I will make thee an example; so Drusus reads it. Note, When proud sinners are humbled and brought down it is designed that others should take example by them not to lift up themselves in security and insolence when they prosper in the world.
II. He shows them that all those things which they reposed a confidence in should fail them. 1. Did the men of Nineveh trust to their own magnanimity and bravery? Their hearts should sink and fail them. They shall be hid, shall abscond for shame, being in disgrace, abscond for fear, being in distress and danger, and not able to face the enemies, because of whose strength and terror, having no strength of their own, they shall seek strength, shall come sneaking to their neighbours to beg their assistance in a time of need. Thus God can cut off the spirit of princes, and take away their heart. 2. Did they depend upon their barrier, the garrisons and strongholds they had, which were regularly fortified and bravely manned? Those shall prove but paper-walls, and like the first-ripe figs, which, if you give the tree but a little shake, will fall into the mouth of the eater that gapes for them; so easily will all their strongholds be made to surrender to the advancing enemy, upon the first summons, v. 12. Note, Strongholds, even the strongest, are no fence against the judgments of God, when they come with commission. The rich man's wealth is his strong city, and a high wall, but only in his own conceit, Prov. 18:10. They are supposed to make their strongholds as strong as possible, and are challenged to do their utmost to make them tenable, and serviceable to them against the invader (v. 14): Draw thee water for the siege; lay in great quantities of water, that that which is so necessary to the support of human life may not be wanting; it is put here for all manner of provision, with which Nineveh is ironically told to furnish herself, in expectation of a siege. "Take ever so much care that thou mayest not be starved out, and forced by famine to surrender, yet that shall not avail. Fortify the strongholds, by adding out-works to them, or putting men and arms into them,'' as with us by planting cannon upon them. "Go into clay, and tread the mortar, and make strong the brick-kiln; take all the pains thou canst in erecting new fortifications; but it shall be all in vain, for (v. 15) there shall even the fire devour thee if it be taken by storm.'' It is by fire and sword that in time of war the great devastations are made. 3. Did they put confidence in the multitude of their inhabitants? Were they, from their number and valour, reckoned their strongest walls and fortifications? Alas! these shall stand them in no stead; they shall but sink the sooner under the weight of their own numbers (v. 13): Thy people in the midst of thee are women; they have no wisdom, no courage; they shall be fickle, feeble, and faint-hearted, as women commonly are in such times of danger and distress; they shall be at their wits' end, adding to their griefs and fears by the power of their own imagination, and utterly unable to do any thing for themselves; the valiant men shall become cowards. O ver� Phrygiae, neque enim Phryges�I>Phrygian dames, not Phrygian men. Though they make themselves many (v. 15), as the canker-worm and as the locust, that come in vast swarms, though thou hast multiplied thy merchants above the stars of heaven, though thy exchange be thronged with wealthy traders, who, having so much money to stand up in defence of and so much to lay out in the means of their defence, should, one would think, give the enemy a warm reception, yet their hearts shall fail them too; though they be numerous as caterpillars, yet the fire and sword shall eat them up easily and irresistibly as the canker-worm, v. 15. They are as numerous as those wasting insects, but their enemies shall be mischievous like them. He adds (v. 16), The canker-worm spoils, or spreads herself, and flies away. Both the merchants and the enemies were compared to canker-worms. The enemies shall spoil Nineveh, and carry away the spoil, without opposition, or any hope of recovering it. Or the rich merchants, who have come from abroad to settle in Nineveh, and have raised vast estates there, out of which it was hoped they would contribute largely for the defence of the city, when they see the country invaded and the city likely to be besieged, will send away their effects, and remove to some other place, will spread their wings and fly away where they may be safe, and Nineveh shall be never the better for them. Note, It is rare to find even those that have shared with us in our joys willing to share with us in our griefs too. The canker-worms will continue upon the field while there is any thing to be had, but they are gone when all is gone. Those that men have got by they do not care to lose by. Nineveh's merchants bid her farewell in her distress. Riches themselves are as the canker-worms, which on a sudden fly away as the eagle towards heaven, Prov. 23:5. 4. Did they put a confidence in the strength of their gates and bars? What fence will those be against the force of the judgments of God? v. 13. The gates of thy land shall be set wide open unto thy enemies, the gates of thy rivers (ch. 2:6), the flood-gates, or the passes and avenues, by which the enemy would make his entrance into the country, or the gates of the cities; these, though ever so strong and well-guarded, shall not answer their end: The fire shall devour thy bars, the bars of thy gates, and then they shall fly open. 5. Did they put a confidence in their king and princes? They should do them no service (v. 17): Thy crowned heads are as the locusts; those that had pomp and power, as crowned heads, were enfeebled, and had no power to make resistance, when the enemy came in like a flood. "Thy captains, that should lead thy forces into the field, are great indeed, and look great, but they are as the great grasshoppers, the maximum quod sic梩he largest specimens of that species; still they are but grasshoppers, worthless things, that can do no service. They encamp in the hedges, in the cold day, the cold weather, but, when the sun arises, they flee away, and are gone, nobody knows whither. So these mercenary soldiers that lay slumbering about Nineveh, when any trouble arises, flee away, and shift for their own safety. The hireling flees, because he is a hireling.'' The king of Assyria is told, and it is a shame he needs to be told it (who might observe it himself), that his shepherds slumber; they have no life or spirit to appear for the flock, and are very remiss in the discharge of the duty of their place and the trust reposed in them: Thy nobles shall dwell in the dust, and be buried in silence. 6. Did they hope that they should yet recover themselves and rally again? In this also they should be disappointed; for, when the shepherds are smitten, the sheep are scattered; the people are dispersed upon the mountains and no man gathers them, nor will they ever come together of themselves, but will wander endlessly, as scattered sheep do. The judgment they are under is as a wound, and it is incurable; there is no relief for it, "no healing of thy bruise, no possibility that the wound, which is so grievous and painful to thee, should be so much as skinned over; thy case is desperate (v. 19) and thy neighbours, instead of lending a hand to help thee, shall clap their hands over thee, and triumph in thy fall; and the reason is, because thou hast been one way or other injurious to them all: Upon whom has not thy wickedness passed continually? Thou hast been always doing mischief to those about thee; there is none of them but what thou hast abused and insulted; and therefore they shall be so far from pitying thee that they shall be glad to see thee reckoned with.'' Note, Those that have been abusive to their neighbours will, one time or another, find it come home to them; they are but preparing enemies to themselves against their day comes to fall: and those that dare not lay hands on them themselves will clap their hands over them, and upbraid them with their former wickedness, for which they are now well enough served and paid in their own coin. The troublers shall be troubled will be the burden of many, as it is here the burden of Nineveh.

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In interpreting the Five-Year Rule, the Nevada Supreme Court has said on numerous of occasions that Rule 41(e) requires dismissal after five years. Harvey’s Wagon Wheel, Inc. v. Van Blitter, 959 F.2d 153, at 156 (9th Cir. 1992), Morgan v. Las Vegas Sands, Inc., 118 Nev. 315, at 320, 43 P.3d 1036 (2002), Erickson v. One Thirty-Three, Inc., 104 Nev. 755, at 758, 766 P.2d 898 (1988), C.R. Fedrick, Inc. v. Nevada Tax Comm’n, 98 Nev. 387, at 389, 649 P.2d 1372 (1982), Ad-Art, Inc. v. Denison, 94 Nev. 73, at 74, 574 P.2d 1016 (1978), Johnson v. Harber, 94 Nev. 524, at 526, 582 P.2d 800 (1978), Plankinton v. Fifth Judicial Dist. Court, 93 Nev. 643, at 645, 572 P.2d 525 (1977), Bank of Nevada v. Friedman, 86 Nev. 747, at 749, 476 P.2d 172 (1970), Great W. Land & Cattle Corp. v. Sixth Judicial Dist. Court, 86 Nev. 282, at 285, 467 P.2d 1019 (1970), Volpert v. Papagna, 85 Nev. 437, at 440, 456 P.2d 848 (1969), Lindauer v. Allen, 85 Nev. 430, at 435, 456 P.2d 851 (1969), Faye v. Hotel Riviera, Inc., 81 Nev. 350, at 352, 403 P.2d 201 (1965), Smith v. Garside, 81 Nev. 312, at 314, 402 P.2d 246 (1965), Thran v. First Judicial Dist. Court, 79 Nev. 176, 380 P.2d 297 (1963), cited, Dubin v. Harrell, 79 Nev. 467, at 470, 386 P.2d 729 (1963).
One way to avoid the effects of the Five-Year Rule is to get a written stipulation to extend time of trial beyond the five-year period. Erickson v. One Thirty-Three, Inc., 104 Nev. 755, at 758, 766 P.2d 898 (1988), Prostack v. Lowden, 96 Nev. 230, at 231, 606 P.2d 1099 (1980), Thran v. First Judicial Dist. Court, 79 Nev. 176, 380 P.2d 297 (1963).
A second way to avoid the effect of the rule is through tolling brought on by a bankruptcy. Rickard v. Mongomery Ward Co., 120 Nev. 493, 96 P.3d 743 (2004). However, tolling only protects the party that files the bankruptcy and does not protect any other party to the action. Edwards v. Ghandour, 123 Nev. Adv. Op. 14 (2007).
A parallel may be found by reference to statutes of limitation. There the underlying policy is to preclude the litigation of stale claims. Here the policy to be served is that, once suit is commenced, it must be carried forward with reasonable diligence unless circumstances exist which excuse delay (if less than five years has passed). The statute of limitations is a defensive weapon granted a party defendant and may be asserted to defeat a claim for relief which has not been filed within the prescribed period. NRCP 8(c). Rule 41(e) invests the court with the power (though inherently possessed) to refuse to hear a case that has been filed but not prosecuted with the diligence required. In either case, i.e., whether the claim is barred by limitations or dismissed for want of prosecution, the judgment entered does not constitute an adjudication on the merits of the claim, in the literal sense, for there has been no hearing on the merits. In neither instance is the substantive cause of action destroyed—just the availability of a remedy to enforce it. A claimant’s right to a “day in court” is subject to reasonable procedural requirements (cf. Thran v. District Court, 79 Nev. 176, 380 P.2d 297) and may be lost by the failure to comply with them.
If the court dismisses the case, it will have discretion to determine whether the dismissal should be with our without prejudice. If the dismissal is without prejudice, a later suit can be brought so long as the statute of limitation has not run. Lighthouse v. Great Western Land & Cattle Corp., 88 Nev. 55, 493 P.2d 296 (1972).
Nevada Follows A Modified "Firefighter's Rule"

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Mirror Worlds, LLC v. Apple, Inc.
Mirror Worlds, LLC v. Apple, Inc. Doc. 92 Att. 6 EXHIBIT F Dockets.Justia.com Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 1 MAUSKOPF, District Judge. Only the Westlaw citation is currently available. United States District Court, E.D. New York. PALL CORPORATION, Plaintiff, v. ENTEGRIS, INC., d.b.a., Mykrolis Corporation, Defendant. No. 05-CV-5894 (RRM)(WDW). Nov. 26, 2008. West KeySummary 292.4 *1 Defendant Entegris, Inc. objects to Magistrate Judge William D. Wall's May 23, 2008 Order (the "May 23rd Order") clarifying the terms and conditions of a September 15, 2006 protective order (the "Protective Order") entered into between Entegris and Plaintiff Pall Corp. [Docket entry 135]. Pall has interposed its opposition to the objections and seeks additionally to strike portions of Entegris' submissions as constituting an improper expansion of Entegris' unpreserved arguments. Upon a review of the record, this Court concludes that, for the reasons below, the May 23rd Order is neither clearly erroneous nor contrary to law. As such, Entegris' objections are DISMISSED and Pall's motion to strike is DENIED as moot. FACTUAL AND PROCEDURAL BACKGROUND Pall and Entegris are competitors in the development and manufacture of commercial filter technology. At issue in this litigation are infringement claims concerning two Pall patents: 6,174,439 (the "439 patent") and 5,510,026 (the "026 patent"). The main thrust of this dispute concerns so-called "wet filter" technology-filters requiring moisture to operate. Given the difficulty in applying moisture to, and maintaining that moisture in, the filter material, Pall developed a means of delivering filters to consumers in a pre-wet state. It is Pall's position that certain Entegris products infringe its pre-wet filter patents and the 439 patent in particular. Separate from the pre-wet filter dispute, Pall and Entegris are engaged in separate infringement litigation before this court concerning so-called "pleated filters"-filters with membranes arranged in a pleated formation to increase the filter's surface area. See Pall Corp. v. Entegris, Inc., No. 07-CV-1869(RRM) (ETB). In that action Entegris challenged the validity of Pall's pleated filter patents nos. 5,543,047 and 5,690,765, but moved to stay that action FN1 in light of a pre-existing dispute between Pall and a third party, Cuno Incorporated ("Cuno"), concerning those very same pleated filter patents, which disputes are also pending before this Court. See Pall Corp. v. Patents 291 291 Patents 291XII Infringement 291XII(C) Suits in Equity 291k292 Discovery 291k292.4 k. Other Matters. Most Cited Cases An alleged patent infringer did not establish a compelling need to expand the protective order with the patent holder to prevent the holder's participation in a reexamination case of different patents. The reexamination did not involve the infringer, but was initiated by a third party to the dispute and involved patents unrelated to the ones in the case. Further, the holder established a compelling need to participate in the reexamination, and there was little risk of misuse of information in regard to the litigated matter. Brett A. Hesterberg, Michael H. Hartmann, Jason T. Murata, Mark E. Phelps, Nancy J. Gettel, Leydig, Voit & Mayer, Ltd., Chicago, IL, James W. Weller, Joseph John Ortego, Nixon Peabody LLP, Jericho, NY, for Plaintiffs. Anthony Andrew Pastor, Arthur Joseph Cutillo, Ropes & Gray, LLP, New York, NY, John T. Montgomery, Ropes & Gray LLP, Boston, MA, for Defendants. MEMORANDUM & ORDER � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 2 Cuno, Inc., 97-CV-7599(RRM)(ETB) and Pall Corp. v. Cuno. Inc., 03-CV-0092(RRM)(ETB). FN1. On September 25, 2008, this Court denied Entegris' motion to stay that proceeding. In connection with the Pall/Cuno disputes pending before this Court, Cuno has commenced a patent reexamination proceeding, an extra-judicial, administrative proceeding before the United States Patent and Trademark Office, challenging the validity of Pall's pleated filter patents. Cuno's reexamination request is based in part upon two foreign patents which it claims constitute prior art, and which invalidate Pall's pleated filter patents. Pall's litigation counsel, Mr. Michael Hartmann of Leydig, Voit & Mayer, Ltd. ("LVM"), who has represented Pall in litigation with Cuno since 1997, views the Cuno-initiated reexamination as merely an extension of the parties' longstanding pleated filter litigation to another forum; he therefore intends to work with Pall's patent counsel to defend Pall against Cuno's invalidity claims in that proceeding. *2 Entegris, which is not a party to the reexamination proceeding, nonetheless objects to Hartmann's involvement in that proceeding. Entegris argues that in connection with its pre-wet filter dispute with Pall, it has produced a significant amount of "highly confidential," trade secret documents concerning not only its pre-wet filter products, but its pleated filter technology as well. While Entegris acknowledges that the current pre-wet filter dispute does not directly implicate pleated filter technology, Entegris claims that, over its objections, Judge Wall ordered them to produce such documents in response to Pall's discovery requests for information concerning Entegris' "redesigned" and allegedly non-infringing pre-wet filters, which redesigned filters also incorporated pleated filter technology. It is this incidental production of Entegris' pleated filter documents that forms the basis of the current dispute. Entegris argues that Hartmann's involvement in the Cuno reexamination may prejudice Entegris. Simply put, Entegris claims that by virtue of requested discovery in this lawsuit, Hartmann has access to Entegris' pleated filter trade secrets, which secrets should not and must not be conveyed to those LVM attorneys serving as patent counsel. The danger ac- cording to Entegris, is that Pall's patent counsel, armed with Entegris' trade secrets, will be in a position to file new patents or expand existing Pall patents based on Entegris' efforts, or may use such information to unfairly further its various litigation efforts against Entegris. For these reasons, Entegris seeks to enforce the Protective Order between Pall and Entegris. Section 10(a) of that Order contains a "prosecution bar," prohibiting litigation counsel from participating in the "prosecution of patent applications," and reads, in part, as follows: 10. Protected Information designated as HIGHLY CONFIDENTIAL may be disclosed only to the following persons: (a) A party's outside attorneys of record in this litigation, but not any individual who is involved in patent prosecution matters (domestic or foreign) on behalf of said party. Any outside attorney who reads and/or reviews HIGHLY CONFIDENTIAL information shall not become involved or otherwise participate in the prosecution of patent applications that relate in any way to the subject matter of the HIGHLY CONFIDENTIAL information on behalf of said party for a period of three (3) years following the final resolution of this litigation ... On May 5, 2008, Pall filed a motion seeking clarification of the prosecution bar. Oral argument was heard before Judge Wall on May 23, 2008. Based upon the parties' written submissions and oral argument, Judge Wall granted Pall's motion for clarification and agreed with Pall's position that "patent prosecution" as described in the Protective Order did not extend to reexamination proceedings commenced subsequent to the application for and issuance of the patent. Further, Judge Wall stated, "I don't see the need to prevent Mr. Hartmann from participating in the reexamination process. I don't think it has an impact on this litigation." *3 On June 23, 2008 Judge Wall adopted Pall's proposed order clarifying Hartmann's right to participate in the Cuno reexamination proceedings, which proposed order stated, "... the terms `patent prosecution matters' and `prosecution of patent applications' in ... the Protective Order do not encompass post-grant proceedings in the United States Patent and Trade- � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 3 mark Office."(Docket entry 132-2). On June 9, 2008, Entegris filed its objections to Judge Wall's order. Following substantial briefing on the issue, a hearing was held before this Court on September 19, 2008. Despite indications at the hearing that a compromise might be reached further negotiations between Pall and Entegris have failed to resolve the Protective Order dispute. Pall has rejected Entegris' September 23, 2008 proposal, which proposal would have permitted Hartmann to participate in the reexamination, provided that he not review any Entegris documents produced from Entegris' Quality Documentation System (the "QDS" documents) during the pendency of the reexamination.FN2 Entegris argues that the approximately 2,500 QDS documents produced comprise only five (5) percent of the total document production in this case, and, as Pall admits, relate principally to Entegris' pleated filter technology, not to the patents in-suit, which concern pre-wet filter products. As such, Entegris argues that its proposal would permit Mr. Hartmann to participate in the reexamination with minimal burden while protecting Entegris against potential prejudice. FN2. At the September 25, 2008 hearing, Hartmann acknowledged that purposefully, and as a result of this pending Protective Order dispute, he has not viewed any of Entegris' QDS documents. See Entegris' October 3, 2008 letter. Courts have noted that reexamination proceedings take an average of 21 months. Silicon Graphics, Inc., v. ATI Tech., Inc., No. 06-C-611-C, 2007 WL 5433478, at *1 (W.D.Wis. Aug.8, 2007) (citing Plastics Corp. v. Advanced Flexible Composites, Inc., 436 F.Supp.2d 252 (D.Mass.2006). In its October 3, 2008 letter, Entegris claims: "The next two phases of the present litigation are claim construction and expert discovery related to damages. Thus, for the foreseeable future (likely up to an entire year), Mr. Hartmann would have no need to review any of Entegris' Quality Documentation System documents. It is certainly possible that his litigation and/or the reexamination will be over by that time, rendering this entire dispute moot." In rejecting Entegris' proposal, Pall now seeks to enforce the revised Protective Order adopted by Judge Wall, permitting Pall's outside counsel to participate in the reexamination without conditions. Entegris renews its objections that Judge Wall's adoption and enforcement of that revised Protective Order is clearly erroneous or contrary to law. DISCUSSION I. Standard of Review As relevant here, discovery matters, including issuance and application of protective orders, are nondispositive decisions governed by Federal Rule of Civil Procedure 72(a) and the Federal Magistrate Act, 28 U.S.C. � 636(b)(1)(A). Weiss v. La Suisse, 161 F.Supp.2d 305, 320-21 (S.D.N.Y.2001). Given magistrate judges' broad discretion to resolve nondispositive issues, see In re Comverse Tech., Inc. Derivative Litig., No. 06-CV-1849, 2006 WL 3511375, at *2-3 (E.D.N.Y. Dec. 6, 2006), this Court may overrule such decision only where it is clearly erroneous or contrary to law. Rubin v. Valicenti Advisory Servs., 471 F.Supp 2d 329, 333 (W.D.N.Y.2007) (magistrate decisions on non-dispositive issues are subject to limited and deferential review under Rule 72(a), not de novo review as required for recommendations on dispositive motions under Rule 72(b)). "Under the clearly erroneous standard of review of Rule 72(a), the magistrate judge's findings should not be rejected merely because the court would have decided the matter differently. Rather, the district court must affirm the decision of the magistrate judge unless the district court on the entire evidence is left with the definite and firm conviction that a mistake has been committed."Id. (internal citations omitted). Meanwhile, "[a]n order is contrary to law when it fails to apply or misapplies relevant statutes, case law or rules of procedure." Equal Employment Opportunities Comm'n v. First Wireless Group, Inc., 225 F.R.D. 404, 405 (E.D.N.Y.2004). However, a magistrate judge's decision is contrary to law only where it runs counter to controlling authority. See Manufacturing Administration and Management Sys., Inc. v. ICT Group, Inc., 212 F.R.D. 110, 119 (E.D.N.Y.2002). Consequently, "[a] magistrate judge's order simply cannot be contrary to law when � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 4 the law itself is unsettled."Id. II. Objections to the May 23rd Order *4 It is an open question whether the prosecution bar in the Protective Order applied to PTO reexaminations. For the reasons below, this Court finds that Judge Wall properly exercised his inherent authority to define the limits of discovery, that he did so in keeping with the spirit and intent of the Protective Order, and that his resolution of the issue was neither clearly erroneous nor contrary to law. Entegris erroneously argues that a prohibition on the "prosecution of patent applications" and "prosecution related matters" contemplates and precludes litigation counsel's involvement in USPTO reexamination proceedings as a matter of law (citing Grayzel v. St. Jude Med., Inc., 162 F. App'x 954, 957-58, 966 (Fed.Cir.2005); Visto Corp. v. Seven Networks, Inc., No. 2:03-CV-333-TJW, 2006 WL 3741891 (E.D.Tex. Dec.19, 2006); Microunity Sys. Eng'g, Inc. v. Dell. Inc., No. 2:04-CV-120-TJW, 2005 WL 2299455 (E.D.Tex. Aug.1, 2005)). This Court cannot adopt so sweeping a statement, and is not persuaded that Judge Wall's reading of the prosecution bar is improperly narrow, that his interpretation abrogates or modifies the scope of the parties' negotiated protections without good cause, or that Entegris has been denied the benefit of its bargain. Patent reexaminations, as the name suggests, are invoked to challenge a PTO patent grant. As Judge Wall properly noted, they are exclusively a "postgrant" procedure, distinguishable from prosecution efforts on an initial patent application. Although patent claims may be amended, redrafted or substituted for new albeit narrower claims, unlike prosecution of an initial patent application, the Patent Act, 35 U.S.C. �� 305, 314, expressly curtails the scope of reexamination, prohibiting any claim amendment that would enlarge the scope of the initial patent. See Hoffman v. Wisner Classic Mfg. Co., 927 F.Supp. 67, 73 (E.D.N.Y.1996) ("An important limitation on reexamination is that no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding. Thus, claims added or amended in a reexamination proceeding will necessarily be narrower because section 305 bars claims that enlarge the scope of original claims. Therefore, no device can infringe the narrower claims emerging from reexamination that would not have infringed the original claims as well.") (citations omitted). This restriction both underscores the distinction between initial patent prosecution and reexamination, and effectively mitigates the potential to misuse PTO procedures to gain a collateral business or litigation advantage, thereby rendering a prosecution bar in the reexamination context largely unnecessary. As Judge Wall concluded, the reexamination has no bearing on the instant litigation, and this Court agrees. While recognizing that the ability to "tinker" with an existing patent can, in certain circumstances, adversely impact ongoing litigation (see, e.g., Grayzel, 162 Fed. Appx. at 964-65),FN3 in negotiating protective orders it appears that litigants increasingly protect themselves against such risk by either expressly baring reexamination participation or expressly defining "patent prosecution" to include post-issuance reexamination. Compare. Hochstein v. Microsoft Corp., No. 04-CV-73071, 2008 WL 4387594, at *1 (E.D.Mich. Sept. 24, 2008) (the parties protective order stated in relevant part, "... prohibited patent prosecution shall include without limitation ...reexamination .") (emphasis supplied). Where sophisticated parties, as is Entegris, conscientiously negotiate to protect themselves, such explicit protections do not amount to contractual surplussage or over-cautious behavior, but reflect a distinction between prior-issuance and post-issuance proceedings and the potential impact of each on ongoing litigation. FN3. Reexamination "... provides a mechanism by which patent owners can amend claims to avoid prior art. Litigation does not generally provide such a mechanism. Therefore, a claim that might be considered invalid during litigation could be amended during reexamination to produce a "valid" claim. Such an amendment may result in the reduction, or complete alleviation, of damages, but an injunction for present and future activities would still be an available remedy."Steven E. Lipman, Patent Reexamination Fundamentals, Practicing Law Institute (2007). � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 5 *5 Having failed to negotiate such an express protection, Entegris seeks to impose one by judicial means. Entegris has it backward: absent an express reexamination prohibition, Entegris-not Pall-must establish a compelling need to expand the Protective Order. To dodge that burden, Entegris' cites several cases in which generic prosecution bars, as here, have been extended to preclude reexamination participation. Specifically, Entegris cites two non-binding, unpublished Eastern District of Texas decisions (see, Visto Corp. v. Seven Networks, Inc., supra; Microunity Sys. Eng'g, Inc. v. Dell, Inc., supra ), and a solitary Federal Circuit opinion expressly designated as noncitable and non-precedential pursuant to Federal Circuit Rule 47.6 (see, Grayzel v. St. Jude Med. Inc., supra ). Entegris argues that in declining to extend the prosecution bar, Judge Wall acted contrary to the above cited law and that his May 23rd Order should therefore be vacated pursuant to Rule 72' s "contrary to law" standard. As a threshold matter, none of Entegris' cited cases constitute controlling authority-a fact fatal to its "contrary to law" objection. See Mfg. Admin., and Mang. Sys., 212 F.R.D. at 119 (recognizing that courts need not defer to determinations of sister courts, and that "[a] Magistrate Judge's order simply cannot be contrary to law when the law itself is unsettled); Norton v. Town of Islip, No. 04-CV3079(NGG) (WDW), 2006 WL 2465031, at *7 (E.D.N.Y. Aug. 23, 2006) (affirming Judge Wall's decision to disqualify attorneys and finding Judge Wall's decision was not contrary to law even in light of potentially contrary but non-binding determinations by sister courts); Pkfinanas Intern. Corp. v. IBJ Schroder Leasing Corp., Nos. 93 Civ. 5375(SAS), 96 Civ. 1816(SAS), 1996 WL 675772, at *2 (S.D.N.Y. Nov. 21, 1996). Even if these cases represented binding precedent-which they do not-none support a universal proposition that patent reexamination is tantamount to the prosecution of a patent application. To the contrary, they exemplify Federal Circuit law that prosecution bars are not all alike and must be construed on a case-by-case basis. See, e.g., Matsushita Elec. Indus. Co., Ltd. v. United States, 929 F.2d 1577, 1579 (Fed.Cir.1991); U.S. Steel Corp. v. United States, 730 F.2d 1465, 1567 (Fed.Cir.1984). In Grayzel, for example, extension of the prosecution bar was warranted where the plaintiff patent-owner affirmatively placed his patents into reexamination, thereby attempting to re-craft them based upon his review of defendant's confidential litigation discovery. Plaintiff thus intended to misuse both the reex- amination proceeding and the discovery process to gain a tactical advantage over the infringement defendant. The Court found that plaintiff's side-door maneuvering violated the general spirit and intent of the protective order. Contrary to Entegris' characterization of that holding, however, the Grayzel Court found it unnecessary to address the scope of the prosecution bar as a legal matter, but relied instead upon more general provisions in the Protective Order to vindicate a general intent to bar misuse of the discovery process .FN4 FN4. Like the Federal Circuit in Grayzel, other federal courts have declined to reach this still open and unsettled issue. See, e.g., Silicon Graphics Inc. v. ATI Tech., Inc., No. 06-C-611-C, 2007 WL 5433478, at *3 (W.D.Wis. Aug.8, 2007) ("[Defendant's] litigation team insists that the filing of a request for reexamination by an alleged infringer does not constitute "patent prosecution activities" and is not prohibited by the patent prosecution bar, a contention with which [plaintiff] vehemently disagrees. However, it is unnecessary to resolve that question ...."). *6 Unlike Grayzel, Pall's intention to participate in reexamination here is not a side-door litigation strategy. Here, Pall's involvement is purely defensive. Far from the risks presented in Grayzel, the likelihood that participation in the reexamination may, even inadvertently, prejudice Entegris' litigation position is lessened if not eliminated by the following: (1) the reexamination here does not involve Entegris, but was initiated by Cuno, a third-party unrelated to the present Entegris dispute, and (2) the subject of that reexamination-namely pleated filters, is substantially unrelated to the pre-wet filter technology at issue in the instant litigation. This complete lack of identity between either the litigants or the subject matter distinguishes Entegris' reliance on Microunity and Visto, both of which, like Grayzel, involved PTO reexaminations between the same litigants and directly concerned the patents in-suit. In each of those cases, expansion of the relevant protective order was essential to prevent a potentially adverse impact upon the outcome of then-pending litigation FN5-a situation not presented here. FN5. It is well recognized that "[w]here re- � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 6 lated patents are being prosecuted and litigated simultaneously, a party may obtain strategic advantage by using information from the litigation in the patent prosecution." Northbrook Digital LLC v. Vendio Services, Inc., No. 07-2250, 2008 WL 2390740, at *15 (D.Minn. April 4, 2008) (citing Mercexchange, L.L.C. v. eBay, Inc., 467 F.Supp.2d 608, 624-25 (E.D.Va.2006)). Even assuming, however, that reexaminations fall within the scope of the prosecution bar, Pall has adequately established a compelling need for its litigation counsel to participate in that proceeding and good cause for modifying the Protective Order. See Hochstein, 2008 WL 4387594 at *2 (recognizing the court's authority to modify protective orders upon a showing of good cause). Accordingly, even if Judge Wall indeed exercised his inherent discretion to abrogate and modify that Order, his decision to do so is not clearly erroneous in light of the facts and circumstances of this case. After reviewing the record, and balancing the potential hardships, this Court agrees that Pall has shown good cause for modification of the Protective Order. Even assuming that Pall's litigation counsel has reviewed Entegris' confidential information-a highly disputed point-there is little risk from the potential to misuse that information either with respect to the filing of new patent applications or within the reexamination procedure itself. First, Pall readily acknowledges that it is not seeking patents related to the disputed pleated filter technology, that that family of patents is closed, and that Pall is precluded from filing "any continuation patent applications that incorporate or cover any allegedly confidential Entegris information relating to its pleated filter [technology]." Plf's Opp. 7; see Medimmune Inc. v. Centocor, Inc., 271 F.Supp.2d 762, 775 (D.Md.2003) (declining to adopt an expansive prosecution bar where there "was no showing that patent counsel counsel was currently prosecuting patents on the exact same subject matter of the litigation.") Second, Pall argues that Entegris' purportedly confidential information would largely be irrelevant to a prior art challenge. See Hochstein, 2008 WL 4387594 at * 2 (finding defendant's confidential information irrelevant where, as here, the reexamination implicated only matters in the public record, i.e., the subject patent and the prior art); MercExchange v. Ebay, 500 F.Supp.2d 556, 589 (E.D.Va.2007) (same). Third, amendments to Pall's patent claims, if necessary, will necessarily result in narrower patent coverage, a fact that only benefits Entegris as an infringement defendant. See Hoffman, 927 F.Supp. at 73. Finally, Pall argues that prohibiting its litigation counsel from participating in the reexamination defense would be highly prejudicial to its position both in the ongoing Cuno litigation and in this action. This Court finds persuasive Pall's arguments in favor of participating in the reexamination, and finds that to bar such participation would also result in substantial prejudice to Pall. *7 Pall and Cuno first engaged in litigation in this district as far back as 1997-a history of constant legal wrangling fast-approaching Dickensian proportions. With respect to pleated filter technology specifically, Pall and Cuno have been embroiled in litigation since at least 2003. In all that time, Pall's litigation counsel, and Mr. Hartmann in particular, have been intimately involved, waging ambidextrous war in the courts, the PTO and back again. Indeed, Pall's counsel describes Cuno's October 2007 request for PTO reexamination of Pall's pleated filter patents as an attempt to undue, by administrative means, judicial rulings favorable to Pall. Under these circumstances, Entegris' broad reading of the Protective Order would unjustifiably place Pall's litigation counsel on the "horns of a dilemma," forcing them to choose between continuing to prosecute Entegris for alleged infringement or withdrawing from this litigation to provide a more complete defense against Cuno's PTO challenges. Other than gaining leverage, and an obvious tactical advantage over Pall in this litigation, Entegris has failed to establish any real need for forcing such a Hobson's choice. As such, to remove Mr. Hartmann from that fight at this late date, based solely on an over-inclusive reading of a Protective Order entered into with Entegris, a party wholly unrelated to the Cuno dispute, over an equally unrelated subject matter, would be detrimental, prejudicial and a result neither contemplated nor supported by the plain language of the Protective Order. While Pall has amply demonstrated manifest prejudice, Entegris own claim of prejudice is speculative. While the Court does not deny that Entegris may indeed have a secrecy interest, it is notable that Entegris has twice failed adequately to articulate that � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Slip Copy Slip Copy, 2008 WL 5049961 (E.D.N.Y.) (Cite as: 2008 WL 5049961 (E.D.N.Y.)) Page 7 interest. Indeed, despite ample opportunity prior to the May 23rd hearing before Judge Wall, Entegris did not at that time identify specific confidential information at risk for disclosure, nor did Entegris identify the specific manner in which that information might be used to Entegris' detriment. See Hochstein, 2008 WL 4387594 at *3 (denying objections to reexamination participation where"[d]efendant was unable to specify what confidential information was at risk of disclosure, or the manner in which [plaintiff's] litigation counsel may use such information during the reexamination.") Having failed to support their position before Judge Wall, Entegris comes to this Court with newly expanded arguments and citing, for the first time, a host of allegedly confidential material all of which was easily identifiable prior to the May 23rd hearing. Even now, it took until after this Courts September 19, 2008 hearing on the matter before Entegris properly identified confidential information to be protected. Thus, only on September 23, 2008, and in light of Pall's objections that Entegris' had improperly designated copious public documents, did Entegris ultimately limited its claim to some 2,500 pages, or roughly 5 percent of its discovery production. *8 This Court is not impressed with Entegris' eleventh-hour attempt to finally add flesh to the bones of its objection, a circumstance Pall rightly challenges as creating undue surprise and denying it a fair opportunity to respond. Nonetheless, neither Entegris' new arguments nor its supplemental identification of allegedly sensitive material render its prejudice claims any more compelling, and are not enough to preclude Pall's litigation counsel from participating in the reexamination, particularly when balanced against the immediate prejudice to Pall should its litigation counsel be precluded from defending against Cuno's reexamination strategy. For these reasons, Entegris' objections are dismissed and Judge Wall's Order clarifying the right of Pall's litigation counsel to participate in the Cuno reexamination is affirmed. CONCLUSION For the reasons above, I find that Magistrate Judge Wall's Order of May 23, 2008, clarifying the September 15, 2006 Protective Order is neither clearly erroneous nor contrary to law. Accordingly, Entegris' objections are DISMISSED. Further, Pall's motion to strike portions of Entegris' submissions is DENIED as moot. SO ORDERED. E.D.N.Y.,2008. Pall Corp. v. Entegris, Inc. Slip Copy, 2008 WL 5049961 (E.D.N.Y.) END OF DOCUMENT � 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works.

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