Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 29

MOTION for Protective Order by GOOGLE, INC.. (Attachments: # 1 Exhibit A)(Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

GOOGLE INC.,
Counterclaim-Plaintiff,
v.
SKYHOOK WIRELESS, INC.,
Counterclaim-Defendant.

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CIVIL ACTION
NO. 1:10-cv-11571-RWZ

DEFENDANT AND COUNTERCLAIM-PLAINTIFF GOOGLE, INC.’S
MOTION FOR ENTRY OF A PROTECTIVE ORDER
Pursuant to Federal Rule of Civil Procedure 26(c)(1), Defendant and CounterclaimPlaintiff Google Inc. (“Google”) respectfully moves this Court to enter its proposed Protective
Order, in the form of an order as attached hereto as Exhibit A. The parties are in agreement as to
nearly all aspects of an appropriate protective order, including the need for a prosecution bar. As
discussed in the accompanying Memorandum of Law, the parties do not agree on the appropriate
scope of that prosecution bar. Google proposes that the prosecution bar disallow counsel with
access to the other party’s highly confidential and trade secret information from participating in
the preparation of modified or new patent claims during any reissue or reexamination
proceeding. Under Google’s proposal, such counsel would be able to participate in reissue or
reexamination proceedings with regard to the analysis of the patent as originally issued, or with

regard to prior art. The grounds in support of this Motion are set forth in Google’s Memorandum
of Law in Support of its Motion for Entry of a Protective Order, which is filed herewith and
incorporated herein by reference.
Dated: May 25, 2011

Respectfully submitted,
GOOGLE INC.,
By its attorneys,

David M. Magee (BBO No. 652399)
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
Boston, MA 02110-1726, U.S.A.
617.951.8000

Susan Baker Manning (pro hac vice)
[e-mail]
Robert C. Bertin (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
2020 K Street, NW
Washington DC 20006-1806, U.S.A.
202.373.6000

William F. Abrams (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
1900 University Avenue
East Palo Alto, CA 94303-2223, U.S.A.
650.849.4400

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LOCAL RULE 7.1 CERTIFICATION
I, Susan Baker Manning, am counsel for the movant Google Inc. I hereby certify
that I have conferred with Samuel K. Lu, counsel for Plaintiff and Counterclaim-Defendant
Skyhook Wireless, Inc., as to the relief sought in this motion in a good faith effort to resolve the
issues raised in this motion. I have spoken or exchanged substantive correspondence with Mr.
Lu or one of his colleagues about the protective order on numerous occasions, including but not
limited to February 10, February 22, March 15, March 28, April 1, April 12, April 18, April 20,
April 26, May 12, May 16, May 17, and May 24. The parties have reached agreement as to the
language of Paragraphs 1-13.2, and 14-15 of the subject proposed protective order. The parties
have been unable to reach agreement as to the language of Paragraph 13.3 of the proposed
protective order.

Date: May 25, 2011

Susan Baker Manning

-3-

CERTIFICATE OF SERVICE
I hereby certify that these documents filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
and paper copies will be sent to those indicated as non-registered participants on May 25, 2011.

Susan Baker Manning
[e-mail]