Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 30

MEMORANDUM in Support re 29 MOTION for Protective Order filed by GOOGLE, INC.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I)(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

MEMORANDUM OF LAW IN SUPPORT OF
DEFENDANT AND COUNTERCLAIM-PLAINTIFF GOOGLE, INC.’S
MOTION FOR ENTRY OF A PROTECTIVE ORDER
I.

INTRODUCTION
All parties recognize that this litigation will require them to divulge trade secrets or other

confidential technical and business information. Both sides recognize that a protective order is
necessary, and that it should limit the use and dissemination of each side’s confidential technical
and business information. Both sides agree that any person reviewing another party’s highly
confidential material should be barred from engaging in “Prosecution Activity.” However, the
parties do not agree on the scope of this bar. Plaintiff Skyhook Wireless, Inc. (“Skyhook”),
agrees that “Prosecution Activity” should include the prosecution of patent applications, but
insists that it should not include any aspect of reissue or reexamination proceedings involving

previously-issued patents. In contrast, defendant Google Inc. (“Google”) requests that
“Prosecution Activity” be defined to encompass those stages of reissue or reexamination
proceedings that, like pre-issuance prosecution activities, effect claim scope. Google therefore
seeks a prosecution bar that would allow those attorneys with access to confidential information
to be involved in addressing prior art issues that arise during reissue or reexamination
proceedings, but would prohibit them from being involved in the preparation of new or modified
patent claims.
It is not enough for the protective order in this case to prohibit generally the use of
confidential information for non-litigation purposes. Attorneys are human, and courts recognize
that even the most well-intentioned person can have enormous difficulty in mentally
compartmentalizing information. Simply put, people know what they know. Skyhook proposes
that its attorneys be permitted to access and analyze Google’s highly confidential material, but is
silent as to how those same attorneys could possibly perform the mental gymnastics necessary to
avoid using that inside knowledge in the preparation of new or modified patent claims during
reissue or reexamination proceedings. Under Skyhook’s position, there is a significant risk that
Skyhook attorneys would use Google’s highly confidential material—at minimum,
inadvertently—in shaping new or modified claims of Skyhook’s patents through reissue or
reexamination proceedings. That risk of substantial prejudice to Google is unwarranted, and
adequately addressed only by the provisions of Google’s proposed protective order.
Therefore, Google respectfully moves the Court to enter its proposed form of protective
order, which is, except for the few differences discussed below, identical to that agreed to by
Skyhook. See Exhibits A (Google’s proposed protective order), B (markup showing the
differences between Google’s proposed protective order and Skyhook’s first proposed protective
order), & C (markup showing the differences between Google’s proposed protective order and
Skyhook’s second proposed protective order). By extending the “Prosecution Activity” bar to
the preparation of new or modified patent claims during any reissue or reexamination
proceeding, Google’s proposed protective order goes much further toward ensuring that
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Google’s highly confidential material is used only for purposes of this case, and not to otherwise
advantage Skyhook in the marketplace.
II.

STATEMENT OF FACTS
The parties have agreed to nearly all details of a protective order. The only outstanding

issue is the extent to which a person with access to another party’s highly confidential material
may take part in reissue or reexamination proceedings.
The parties have long agreed on the need for a prosecution bar in this case. In an effort to
define its scope, Google initially proposed to include pre-issuance prosecution activities, as well
as all aspects of reissue and reexamination proceedings within the “Prosecution Activity” barred
by the protective order.1 See Exhibit D. Skyhook agreed that individuals with access to the
opposing party’s highly confidential material should be barred from pre-issuance prosecution
activities, but objected to extending the bar to reissue and reexamination proceedings. See
Exhibit E. Under Skyhook’s proposal, attorneys with access to Google’s highly confidential
information would be able to participate in all aspects of reissue and reexamination proceedings,
including activities directly related to the language and scope of the claims. In an effort to
balance each side’s concerns, and in the hope of avoiding motion practice, Google offered a
compromise: extend the “Prosecution Activity” bar to only those aspects of reissue and
reexamination proceedings involving the preparation of new or modified patent claims. See
Exhibit F. The proposal is captured in Paragraph 13.3 of Google’s proposed protective order:
13.3. Prosecution Activity shall mean: (1) prepare and/or
prosecute any patent application (or portion thereof), whether
design or utility, and either in the United States or abroad on behalf
of a patentee or assignee of patentee’s rights; (2) prepare patent
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Reissue proceedings are governed by 35 U.S.C. §§ 251 and 252, and allow a patentee to
correct errors affecting the validity and enforceability of an issued patent. See MARTIN J.
ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW 674 (2d ed. 2003). Reexamination
proceedings are governed by 35 U.S.C. §§ 302-307 and 35 USC §§ 311-318, and allow the
Patent and Trademark Office to reconsider the validity of a patent at the request of the patentee
or a third party. See id.

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claim(s) on behalf of a patentee or assignee of patentee’s rights,
including but not limited to participate in the preparation of
modified or new patent claims during any reissue or reexamination
proceedings on behalf of a patentee or assignee of patentee’s
rights; or (3) provide advice, counsel or suggestions regarding, or
in any other way influencing, claim scope and/or language,
embodiment(s) for claim coverage, claim(s) for prosecution, or
products or processes for coverage by claim(s) on behalf of a
patentee or assignee of patentee’s rights. For the avoidance of
doubt, participation in the analysis of a patent as originally issued
or of Prior Art for the purpose of any reissue or reexamination
proceeding on behalf of a patentee or assignee of patentee’s rights
shall not constitute Prosecution Activity.
Nothing in this
paragraph shall prevent any attorney from sending Prior Art or
non-confidential discovery or Court filings (including, without
limitation, interrogatory responses, contentions, summary
judgment briefing, expert reports, and claim construction
materials) to an attorney involved in patent prosecution for
purposes of ensuring that such Prior Art is submitted to the U.S.
Patent and Trademark Office (or any similar agency of a foreign
government) to assist a patent applicant in complying with its duty
of candor. “Prior art” shall be construed in accordance with the
meaning given that term in Title 35 of the United States Code, and
interpretations thereof provided by the federal judiciary.2
Google’s proposal thus maintains the ability of individuals with access to another party’s highly
confidential material to review and analyze prior art as part of any reissue or reexamination
proceeding. Skyhook insists that its attorneys should both be able to review Google’s highly
confidential business information and also be involved in shaping the scope of Skyhook’s patent
claims. See Exhibit G. This is unreasonable and, thus, the issue remains unresolved despite
Google’s good faith efforts. See Exhibit H.
III.

ONLY GOOGLE’S PROPOSED PROTECTIVE ORDER
PROTECTS HIGHLY CONFIDENTIAL MATERIAL.

ADEQUATELY

Access to highly confidential material by attorneys involved in the preparation of new or
modified patent claims during any reissue or reexamination proceedings is an important issue to
Google. Google would be profoundly prejudiced if its highly confidential material were used to
aid a competitor in its efforts to reshape the scope of its patent monopoly, or otherwise block

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Text proposed by Google to which Skyhook does not agree is underlined.

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competition from the marketplace. The protective order entered in this case therefore must
ensure that Skyhook and its counsel will not, even unintentionally, use Google’s highly
confidential material to prepare new or modified patent claims that might purport to cover the
very products at issue in this case.
A.

Counsel With Access To Highly Confidential Material Should Be Prohibited
From Preparing New Or Modified Patent Claims During Any Reissue Or
Reexamination Proceedings.

The Court has broad discretion to fashion a protective order that will prevent the
disclosure of confidential information, or to limit its dissemination. The Federal Rules of Civil
Procedure provide:
The court may, for good cause, issue an order to protect a party or
person from annoyance, embarrassment, oppression, or undue
burden or expense including...requiring that a trade secret or other
confidential research, development, or commercial information not
be revealed or be revealed in only a specific way....
FED. R. CIV. P. 26(c)(1)(g). The party seeking the protective order has the burden to demonstrate
good cause. See Anderson v. Cryovac, Inc., 805 F.2d 1, 7 (1st Cir. 1986); see also In re
Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1378 (Fed. Cir. 2010) (requiring party seeking a
patent prosecution bar to establish good cause). Here, the burdens are equal in that both sides are
seeking entry of a protective order.3 The court is to balance the parties’ interests. See Gill v.
Gulfstream Park Racing Ass’n, Inc., 399 F.3d 391, 400 (1st Cir. 2005).
Courts recognize that the inadvertent use or disclosure of confidential information is a
real risk that can be addressed in the design of a protective order.
Inadvertence, like the thief-in-the-night, is no respecter of its
victims. Inadvertent or accidental disclosure may or may not be
predictable. To the extent that it may be predicted, and cannot be

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The parties are by agreement today each filing simultaneous motions for entry of a
protective order. Each side’s proposed form of protective order differs only with respect to the
disputed scope of the prosecution bar.

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adequately forestalled in the design of a protective order, it may be
a factor in the access decision.
U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). As the Federal Circuit
has recognized, one common structural mechanism for guarding against inadvertent use or
disclosure of confidential information is to limit not just the use of that information, but who
may access it. Google’s proposal is in keeping with precedent that even well-intentioned
individuals often cannot compartmentalize their knowledge in a way that adequately protects
confidential information. See, e.g., Deutsche Bank, 605 F.3d at 1378 (“‘[I]t is very difficult for
the human mind to compartmentalize and selectively suppress information once learned, no
matter how well-intentioned the effort may be to do so.’” (quoting FTC v. Exxon Corp., 636
F.2d 1336, 1350 (D.C. Cir. 1980))). Every prosecution bar limits, to a certain degree, which
counsel may act on behalf of a party with respect to certain issues. Courts recognize this, and
where parties to a lawsuit are commercial competitors, courts balance the risk to the moving
party of “inadvertent disclosure or competitive use…against the potential harm to the opposing
party from restrictions imposed on that party’s right to have the benefit of counsel of its choice.”
Deutsche Bank, 605 F.3d at 1380.
Parties frequently agree—and where they do not, courts frequently require—that counsel
with access to the confidential information of a competitor not be involved in related patent
prosecution. See, e.g., Abbott GMBH & Co. v. Centocor Ortho Biotech, Inc., No. 4:09-CV-11340
(FDS) (D. Mass. filed May 13, 2010) (entering stipulated protective order including prosecution
bar); United States v. Pani, No. 08-CR-40034-FDS (D. Mass. filed Mar. 3, 2010) (entering
protective order including prosecution bar); Chan v. Intuit, Inc., 218 F.R.D. 659, 661-62 (N.D.
Cal. 2003) (preventing patent prosecution counsel from participating in prosecution of patents
for period of two years after the conclusion of the action); In re Papst Licensing, No. MDL 1278,
2000 WL 554219 (E.D. La. May 4, 2000) (requiring attorney to refrain from patent prosecution
for one year after the conclusion of the litigation, including appeals).

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Several courts have interpreted general patent prosecution bars to prohibit involvement in
reissue and reexamination proceedings. See, e.g., Grayzel v. St. Jude Med., Inc., 162 Fed. App’x.
954, 966 (Fed. Cir. 2005) (unpublished and non-precedential) (interpreting protective order
limiting use of confidential information “only for purposes in connection with this litigation” to
prohibit participation in reexamination proceedings)4; Visto Corp. v. Seven Networks, Inc., No.
2:03-CV-333-TJW, 2006 U.S. Dist. LEXIS 91453, at *22 (E.D. Tex. Dec. 19, 2006)
(interpreting protective order barring outside counsel from “prosecution of any new or currently
pending patent applications” to include reexamination proceedings).
The competitive decision-making exercised by those involved in reissue and
reexamination proceedings warrants inclusion of such proceedings within the “Prosecution
Activity” bar. In Deutsche Bank, the Federal Circuit upheld the competitive decision-making
test as the proper standard for application of a patent prosecution bar. See 605 F.3d at 1378-79.
In doing so, the appellate court foresaw increased “risk of inadvertent disclosure of competitive
information learned during litigation” when attorneys with access to such information are
involved with “strategically amending or surrendering claim scope.” Id. at 1380. This is the
precise activity that Google seeks to prohibit through its proposed protective order. See Methode
Elecs., Inc. v. Delphi Auto. Sys., L.L.C., No. 09-13078, 2009 WL 3875980, at *4 (E.D. Mich.
Nov. 17, 2009) (referring to counsel’s participation in reexamination proceedings as “evidence of
competitive decisions made by him”).
Reissue and reexamination proceedings hold much the same risk as traditional preissuance patent prosecution. The reexamination process affords the patent owner the opportunity
to add or amend claims. See 35 U.S.C. §§ 305, 314(a) (2011). A person with access to Google’s

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While the Federal Circuit’s unpublished Grayzel opinion is not precedential, it is
persuasive. See generally Booker v. Mass. Dept. of Pub. Health, 612 F.3d 34, 42 n.8 (1st Cir.
2010) (relying on unpublished opinions of other Circuit Courts of Appeal for their persuasive
value). The risk that confidential information gained during the course of litigation may inform
claim drafting during a reexamination or reissue proceeding is real and warrants protection.

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highly confidential material might shape the new or amended claims in an effort to make them
read directly on Google’s products. See Shared Memory Graphics, LLC v. Apple, Inc., No. C10-2475 VRW (EMC), 2010 U.S. Dist. LEXIS 125184, at *11 (N.D. Cal. Nov. 12, 2010) (stating
“in reexamination…a patent owner may well choose to restructure claims in a manner informed
by the alleged infringer’s confidential information gleaned from litigation”); Pall Corp. v.
Entegris, Inc., 655 F. Supp. 2d 169, 173 (E.D.N.Y. 2008) (recognizing that “the ability to
‘tinker’ with an existing patent can…adversely impact ongoing litigation”); Xerox Corp. v.
Google, Inc., 270 F.R.D. 182, 184 (D. Del. 2010) (“Defendants raise a legitimate concern that
their confidential information could be competitively misused in strategically narrowing
plaintiff’s patent claims during reexamination.”).5 Therefore, Skyhook attorneys who choose to
access Google’s highly confidential business information should be barred from preparation of
new or modified patent claims during any reissue or reexamination proceeding, no less than
during any other phase of prosecution.
B.

Entry Of Google’s Proposed Protective Order Would Not Unduly Prejudice
Skyhook In Its Choice Of Counsel.

Under any form of protective order that adequately protects Google’s highly confidential
material, Skyhook will be put to a choice. It will have to decide whether it wishes to have
certain individuals review and analyze Google’s highly confidential material, or whether it

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Certain courts have taken the view that persons with access to the confidential
information of a competitor may participate in reexamination or reissue proceedings because any
new or confirmed claims are not to be broader than the claims as originally issued. See, e.g.,
Vasudevan Software, Inc. v. IBM, No. C09-05897 RS (HRL), 2010 U.S. Dist. LEXIS 100835, at
*11-*12 (N.D. Cal. Sept. 14, 2010). That view is overly narrow. Sophisticated practitioners
understand that patent scope is often hotly contested. See, e.g., R.H. Murphy Co. v. Illinois Tool
Works, Inc., 292 F. Supp. 2d 259 (D. Mass. 2003). It cannot be presumed that whether a new or
revised claim impermissibly enlarges the scope of the claims as issued is a straightforward
matter. See, e.g., Quantum Corp. v. Rodime PLC, 851 F. Supp. 1382, 1386 (D. Minn. 1994)
(noting that patentee allegedly intentionally broadened its claim scope through reexamination to
read onto a competitor’s product), aff’d, 65 F.3d 1577 (Fed. Cir. 1995). No defendant should
have to face claims that are tailored to its products based on its confidential information.
Google’s proposed compromise language avoids this risk.

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prefers to employ them to prepare new or modified patent claims during a reissue or
reexamination proceeding.
It is not difficult to imagine why Skyhook might perceive an advantage in being able to
use lawyers with inside knowledge of its competitor’s products to prepare new or modified
patent claims during a reissue or reexamination proceeding. But it is beyond imagining why
denial of such an advantage would be unfair to Skyhook. Google’s proposal allows Skyhook to
employ any attorney—including those with access to Google’s highly confidential material—to
participate in the review and analysis of prior art raised during reissue and reexamination
proceedings, a compromise approved by several other courts. See Document Generation Corp.
v. Allscripts, LLC, No. 6:08-CV-479, 2009 WL 1766096, at *1 (E.D. Tex. June 23, 2009)
(entering protective order prohibiting those persons with access to confidential information from
prosecuting a reexamination proceeding); Hochstein v. Microsoft Corp., No. 04-73071, 2008 WL
4387594, at *3 (E.D. Mich. Sept. 24, 2008) (amending protective order to allow litigation
counsel to take part in reexamination proceedings only after counsel pledged not to “draft new
claims or amend existing claims during the reexamination”). Reissue and reexamination
proceedings are “limited proceeding[s] assessing only the patentability of existing claims against
specific prior art references.” Xerox, 270 F.R.D. at 184. Google’s proposed protective order
maintains Skyhook’s choice of counsel in this regard.
IV.

CONCLUSION
Google’s proposed protective order ensures that its highly confidential material will not

be used, even inadvertently, to advantage Skyhook in the marketplace, while adequately
preserving Skyhook’s choice of counsel. Google therefore respectfully requests that the Court
grant its Motion and enter its proposed protective order.

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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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CERTIFICATE OF SERVICE
I hereby certify that this 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]

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