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)

EXHIBIT F

From:
Manning, Susan Baker
Sent:
Monday, March 28, 2011 1:10 PM
To:
Lu, Sam
Cc:
'[e-mail]'; Lo, Audrey; Suggs, Christopher B.; Goldberg, Robin S.
Subject:
Skyhook v. Google (federal) -- protective order
Dear Sam -I write to follow up on the only outstanding issue on the PO: whether the prosecution bar will
prohibit those attorneys with access to the other side's confidential information from being
substantively involved in reissue or reexamination proceedings. Google believes that the case
law (and common sense) on balance supports extending the bar to reexamination and reissue
proceedings. When you and I last spoke, neither party had a compromise position to propose. In
thinking about the issue since then, Google's chief concern is that counsel with access to its
confidential information not be able to use that information (even inadvertently) to reshape the
claims of the patents. Were the patents to be part of reexamination or reissue proceedings, we
think the risk of misuse of Google's confidential information is less grave if counsel's activities are
limited to addressing the scope of the prior art and its relevance to the claims as originally issued.
If Skyhook is open to such an approach, please give me a call to discuss. Either way, please
advise as to Skyhook's position in the next few days. We'd like to get this wrapped up. I hope
we're able to come to agreement, but if we're not, let's discuss an approach for presenting the
issue to the court for resolution.
thanks,
Susan

_________________________________
Susan Baker Manning | Bingham McCutchen LLP
2020 K Street NW, Washington, DC 20006-1806
Tel: [phone] | Fax: [phone]
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