Two-Way Media Ltd. v. Comcast Cable Communications LLC et al

Filing 65

MEMORANDUM ORDER ruling on disputes over the protective order. On or before November 25, 2015, the parties shall submit a proposed protective order (see Memorandum Order for further details). Signed by Judge Richard G. Andrews on 11/17/2015. Associated Cases: 1:14-cv-01006-RGA, 1:14-cv-01212-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

TWO-WAY MEDIA LTD.,
Plaintiff,
v.
COMCAST CABLE COMMUNICATIONS,
LLC, COMCAST INTERACTIVE MEDIA,
LLC, NBCUNIVERSAL MEDIA, LLC and
·NBCUNIVERSAL, LLC,

Civil Action No. 14-1006-RGA

Defendants.

TWO-WAY MEDIA LTD.,
Plaintiff,

v.

Civil Action No. 14-1212-RGA

. VERIZON SERVICES CORP. and
VERIZON ONLINE LLC,
Defendants.

MEMORANDUM ORDER
Presently before the Court is a dispute between Plaintiff and Defendants over the terms of
proposed protective orders to govern confidential information produced or otherwise provided in
these cases. (C.A. No. 14-1006 D.I. 56-1; C.A. No. 14-1212 D.I. 46-1). I have considered the
parties' relevant letters. (C.A. No. 14-1006 D.I. 58 & D.I. 59; C.A. No. 14-1212 D.I. 48 & D.I.

49). 1 For the reasons stated below, I adopt Defendants' if 6(G) proposal and Plaintiffs if 10
proposal, and I reject Defendants' if 10 proposal.

LEGAL STANDARD
Under Federal Rule of Civil Procedure 26(c)(l), "[t]he court may, for good cause, issue
an order to protect a party ... from annoyance, embarrassment, oppression, or undue burden or
expense." Fed. R. Civ. P. 26(c)(l). The parties do not dispute that a protective order is needed
to govern the production of confidential information in this case. The parties disagree as to
certain terms of such an order. In particular: (1) whether Plaintiff should be allowed to share
Highly Confidential Information received from a defendant in one of the above-captioned cases
with a defendant in the other case; and (2) whether the prosecution bar should extend to postgrant PTO proceedings. (D.I. 58 at 1; D.I. 59 at 1). Defendants bear the burden to show good
cause for the protective provisions for which they advocate. See Fed. R. Civ. P. 26(c); In re
Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010) ("A party seeking a
protective order carries the burden of showing good cause for its issuance. The same is true for a
party seeking to include in a protective order a provision effecting a patent prosecution bar."
(citations omitted)).

ANALYSIS
I. Sharing Highly Confidential Information Across Cases
Plaintiff argues that Defendants have not shown good cause to prevent it from using in
one of the above-captioned cases any Highly Confidential Information produced by a defendant

1
Plaintiffs letters in each case, C.A. No. 14-1006 D.I. 58 and C.A. No. 14-1212 D.I. 48, are identical. Defendants'
letters in each case, C.A. No. 14-1006 D.I. 59 and C.A. No. 14-1212 D.I. 49 are identical in substance. Subsequent
citations refer to docket items in C.A. No. 14-1006 for simplicity.

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in the other case. (D.I. 58 at 1). Plaintiff argues that the agreed-upon 9i[ 6(C) "address[ es] any
confidentiality concerns" by limiting disclosure of Highly Confidential Information to outside
counsel and experts. (See id.; D.I. 56-1 at 8). As Defendants point out, however, 9i[ 6(C) permits
disclosure of Highly Confidential Information to outside counsel "of the receiving party" in
particular, and therefore does not contemplate disclosure to counsel for another party. (See D.I.
59 at 1). Thus, the agreed-upon provisions of the Protective Order undermine Plaintiffs
argument.
Further, Defendants have shown good cause to prevent Plaintiff from sharing Highly
Confidential Information across cases. If Defendants' proposed 9i[ 6(G) were omitted and 9i[ 6(C)
were modified to allow Plaintiff to disclose the Highly Confidential Information of one
defendant to outside counsel and experts in the other case, Defendants would suffer prejudice. If
Plaintiff were allowed to use, for example, Comcast' s Highly Confidential Information in its
expert report in the Verizon case, Verizon's in-house counsel would be prohibited from viewing
those portions of Plaintiffs expert report. Such a circumstance would impair Verizon in its
defense. On the other hand, the parties seem to agree that if the Protective Order permitted
disclosure of one defendant's Highly Confidential Information to in-house counsel of defendants
in the other case, that information would be unacceptably compromised. (D.I. 59 at 1; see D.l.
58 at 1).
Defendants' proposed 9i[ 6(G) should therefore be included in the Protective Order.

II. Post-Grant Proceedings Bar
In evaluating whether there is good cause to impose a prosecution bar, the Court must
balance the risk of inadvertent disclosure or competitive use of confidential information against
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the potential harm to the opposing party in denying its choice of counsel. In re Deutsche Bank
Trust Co. Americas, 605 F.3d at 1378. Whether a risk of inadvertent disclosure or competitive

use exists depends "on the extent to which counsel is involved in 'competitive decisionmaking'
with its client." Id. Attorneys "substantially engaged with prosecution" are regularly engaged in
competitive decisionmaking. Id. at 1380. Here, however, disclosure to attorneys "substantially
engaged with prosecution" no longer presents a risk of competitive use because prosecution of
the patents-in-suit is closed. (D.I. 58 at 2).
Involvement in post-grant proceedings does not raise the same risk of competitive misuse
as does involvement in prosecution. Xerox C01p. v. Google, Inc., 270 F.R.D. 182, 184-85 (D.
Del. 2010). Post-grant proceedings, including reexamination, inter partes review, and covered
business method review, all involve assessing the patentability of existing claims. 35 U.S.C.
§§ 302, 311; AIA §18(a)(l ). Further, only narrowing claim amendments may be made during
post-grant proceedings. 35 U.S.C. §§ 305, 314(a); AIA §18(a)(l). There is therefore little risk
that confidential information learned in litigation will be competitively used to draft claims that
read on Defendants' products. Defendants have not recited any circumstances specific to
proceedings related to these patents that suggest otherwise.
The attenuated risk of inadvertent disclosure or competitive use must be balanced with
the potential harm in denying Plaintiff its choice of counsel in post-grant proceedings. See Xerox
Corp., 270 F.R.D. at 185. Such potential harm includes "[ f]orcing [P]laintiff to rely on less

knowledgeable counsel ... [,thereby] incr.eas[ing] costs and duplicat[ing] effort" and preventing
Plaintiff from "formulating a coherent and consistent litigation strategy." Id. The risk of

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inadvertent disclosure or competitive use of Defendants' confidential information is outweighed
here by the potential harm to Plaintiff by denying its choice of counsel in post-grant proceedings.
Thus, Defendants have failed to show good cause for their proposed post-grant
proceedings bar.
For the reasons above, IT IS HEREBY ORDERED that:

1. Defendants' proposed if 6(G) is adopted (D.I. 56-1 at 9-10);
2. Plaintiff's proposed language regarding 'if 10 is adopted and Defendants' proposed
language is rejected (Id. at 11); and
3. On or before November 25, 2015, the parties shall submit a proposed protective order
incorporating this language.

Entered this

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Il_ day of November, 2015.