Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 36

Opposition re 31 MOTION for Protective Order filed by GOOGLE, INC.. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit)(Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
CIVIL ACTION
NO. 1:10-cv-11571-RWZ

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

DEFENDANT AND COUNTERCLAIM-PLAINTIFF GOOGLE INC.’S
OPPOSITION TO PLAINTIFF AND COUNTERCLAIM-DEFENDANT
SKYHOOK WIRELESS, INC.’S
MOTION FOR ENTRY OF A PROTECTIVE ORDER
I.

INTRODUCTION
On May 25, 2011, Google Inc. and Skyhook Wireless, Inc. filed simultaneous Motions

for Entry of a Protective Order, each with supporting Memoranda. (Dkt. Nos. 29-32.) The
parties’ proposed orders are largely identical, and the parties agree that any protective order
entered by this court should include a Patent Prosecution Bar that would, for example, prohibit
those attorneys with access to confidential information of the other party from prosecuting
patents in the relevant field for one year after resolution of this case. They disagree as to how the
Patent Prosecution Bar should apply in reexamination and reissue proceedings.

Google proposes to apply the Patent Prosecution Bar to those stages of reissue or
reexamination proceedings that, like pre-issuance prosecution activities, affect claim scope.
Exhibit A at ¶ 13.3. Under Google’s proposal, however, attorneys with access to confidential
information may still participate in those portions of reissue or reexamination proceedings that
focus on the prior art. Id. Skyhook offers two alternatives. Under its first proposal, attorneys
with access to confidential information may participate in all aspects of reexamination
proceedings, and in non-broadening reissue proceedings—including the drafting or amendment
of claims. (Skyhook’s Memo. at 2, Dkt. No. 32.) Skyhook’s second proposal would allow
attorneys with access to confidential information to participate to the same extent in
reexamination proceedings initiated by or at the behest of Google. (Id.)
Neither of Skyhook’s proposals adequately safeguards Google’s highly confidential
material from the practical concerns raised in Google’s Motion. Skyhook would allow its
attorneys with access to Google’s protected material to fully participate in reissue and
reexamination proceedings, thus ignoring the widely-recognized risk of inadvertent misuse or
disclosure. Skyhook contends that this risk is minimized by the “nature” of the proceedings at
issue, but its analysis is flawed. The practical reality is that, despite statutory direction, reissue
and reexamination proceedings sometimes do result in patent claims broader than those
originally issued. Only a properly tailored protective order avoids the costly and timeconsuming litigation that would result from broadened claims shaped by knowledge of Google’s
highly confidential material.
Skyhook’s arguments are unavailing. Although Skyhook claims that it would face
“substantial harm” should its litigation counsel be prevented from participating in reissue or
reexamination proceedings, this ignores Google’s actual proposal. Google’s proposal explicitly
preserves the ability of all individuals to review and analyze prior art during such proceedings,
thus mitigating any potential harm, and putting the parties on even ground. In contrast,
Skyhook’s “compromise” proposal exacerbates the risk to Google because it would advantage

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Skyhook in precisely those proceedings before the Patent and Trademark Office (“PTO”) most
likely to be relevant to Google’s products.
Google’s proposed protective order strikes the right balance, and is fair to all parties.
Google thus respectfully requests that the Court enter its proposed protective order, including the
prohibition on those individuals with access to the opposing party’s highly confidential material
from “participat[ing] in the preparation of modified or new patent claims during any reissue or
reexamination proceedings.” Exhibit A at ¶ 13.3.
II.

SKYHOOK’S PROPOSED ORDERS INTRODUCE A REAL RISK THAT
GOOGLE’S PROTECTED MATERIAL WILL BE INADVERTENTLY USED OR
DISCLOSED.
By seeking to limit the use of Google’s highly confidential material rather than limiting

those with access to such material, Skyhook’s proposed orders introduce an unacceptable level of
risk that Google’s highly confidential material will be improperly used or disclosed. 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. See U.S. Steel Corp. v. United States, 730 F.2d
1465, 1468 (Fed. Cir. 1984) (comparing inadvertent disclosure to “the thief-in-the-night” and
stating that “[t]o the extent that it may be predicted, and cannot be adequately forestalled in the
design of a protective order, it may be a factor in the access decision”). Skyhook largely ignores
this risk, defending as adequate an agreed-upon provision that, it admits, serves only to prohibit
its attorneys from “deliberately using” Google’s highly confidential material “in reexamination
or reissue proceedings.” (Skyhook Memo. at 10.)
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 can, in practice, avoid
inadvertently using that inside knowledge in the preparation of new or modified patent claims
during reissue or reexamination proceedings. See, e.g., In re Deutsche Bank Trust Co. Ams., 605
F.3d 1373, 1378 (Fed. Cir. 2010) (“‘[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))). “[E]ven the
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most rigorous efforts of the recipient of such information to preserve confidentiality in
compliance with the provisions of such a protective order may not prevent inadvertent
compromise.” Id.
Google attempts to avoid this problem entirely by proposing a protective order that
controls who may access its highly confidential material. Specifically, Google’s proposed order
prohibits individuals with such access from being involved in the preparation of new or modified
patent claims. This proposal effectively eliminates the risk that Skyhook’s attorneys will
inadvertently use Google’s protected material during reissue or reexamination proceedings. See
id. at 1380 (recognizing that the “risk of inadvertent disclosure of competitive information
learned during litigation is…much greater for…attorneys” engaged in “strategically amending or
surrendering claim scope”).
III.

SKYHOOK’S PROPOSED ORDERS FAIL TO ACCOUNT FOR THE
ECONOMIC INCENTIVES TO USE GOOGLE’S PROTECTED MATERIAL
DURING REEXAMINATION AND REISSUE PROCEEDINGS.
Skyhook relies on a flawed understanding of the “nature” of reexamination and non-

broadening reissue proceedings in advocating for its proposed orders. (Skyhook Memo. at 5.)
Skyhook repeatedly references the narrowed claims that will result from such proceedings and
concludes that the proceedings thus “create little risk of inadvertent use of confidential
information.” (Id. at 1, 5-7, 10.) This ignores the complexities and incentives of modern patent
litigation.
One cannot presume that the claims resulting from a reexamination proceeding will, in
fact, be narrower than the claims as originally issued. The scope of a patent’s claims is a hotly
contested matter in most patent litigation—no less so for claims issued via reexamination
proceedings. See, e.g., Anderson v. Int’l Eng’g and Mfg., Inc., 160 F.3d 1345, 1350 (Fed. Cir.
1998) (holding that claims-at-issue were impermissibly broadened during reexamination);
Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 694 (Fed. Cir. 1997) (same); R.H. Murphy
Co. v. Ill. Tool Works, Inc., 292 F. Supp. 2d 259 (D. Mass. 2003) (reviewing patent claims

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granted during reexamination to determine if they were broader than the claims as originally
issued).
Furthermore, a patentee may attempt to use a reexamination proceeding to broaden claim
scope to read directly onto a competitor’s product. 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). Google should not have to face claims improperly tailored to its products
through the use of confidential materials obtained only for the purposes of this litigation. Yet,
Skyhook’s proposed orders invite this result and leave Google with the expensive and timeconsuming option of ex post litigation as its only manner of protection.
Reissue proceedings offer even greater potential for a patentee to broaden claim scope.
In addition to the risk that a patentee will impermissibly broaden the patent’s claims, reissue
proceedings introduce the further risk associated with the permissible broadening of claims. See
Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1380-81 (Fed. Cir. 1998) (holding that
claims-at-issue were impermissibly broadened during reissue). The Patent Act explicitly allows
the PTO to issue claims broader than those originally issued if “applied for within two years
from the grant of the original patent.” 35 U.S.C. § 251. Skyhook’s patent portfolio contains
eight patents issued within the last two years, as well as at least thirty-two pending applications,
all of which will, if issued, be thereafter eligible for a broadening reissue.1 See Exhibit B.
Skyhook’s agreement that “broadening amendments should fall within the prosecution bar” is
therefore of little comfort. (Skyhook Memo. at 6 n.6.) Skyhook offers no practical guidelines
for ensuring that individuals with access to Google’s highly confidential material participate in
only those reissue proceedings that are truly non-broadening. In contrast, Google’s proposed

1

Skyhook’s patent portfolio may include additional patent applications which are either
unpublished or for which the PTO has yet to record an assignment.

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protective order avoids this risk entirely and thus offers the only sufficient protection for
Google’s trade secrets and highly confidential information.
Skyhook’s further assertion that it lacks incentive to strategically narrow its claims to
read on Google’s products is unconvincing. The temptation for an individual with access to a
competitor’s confidential information to misuse this information to strategically shape claims
during reissue and reexamination proceedings is well understood by the courts. See Shared
Memory Graphics, LLC v. Apple, Inc., No. C-10-2475 VRW (EMC), 2010 U.S. Dist. LEXIS
125184, at *11 (N.D. Cal. Nov. 12, 2010) (“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”) (citations omitted); 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.”).
While the resulting patent would indeed be narrower in scope, there is no basis to assume
that its value would be “greatly diminish[ed].” (Skyhook Memo. at 7.) In fact, the patent’s
value may be greatly enhanced. As issued, the claims of the Skyhook patent may be invalid—
the purpose of a reexamination proceeding is to determine this very question. See 35 U.S.C.
§ 307. Thus, during any potential reexamination proceeding, Skyhook may be forced to concede
patent scope in order to try to thread the needle between infringement and invalidity. See
generally Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998) (finding
that the patentee “relinquished” claim scope during reexamination in order to maintain validity
of the patent). Skyhook would undoubtedly benefit economically from shaping its claims with
Google’s products in mind. And they would, of course, be in mind. It is simply not realistic to
suggest that attorneys actively litigating the case could ignore their own intimate knowledge of
Google’s products when drafting new or revised claims. Google’s proposed order avoids this
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impossible situation and ensures that highly confidential material is used only for purposes of
this case.
IV.

SKYHOOK WOULD SUFFER NO PREJUDICE SHOULD THE COURT
EXTEND THE PATENT PROSECUTION BAR TO REISSUE AND
REEXAMINATION PROCEEDINGS.
Google’s proposal is fair to Skyhook. While it is undoubtedly true that litigants have an

interest in choosing their counsel, courts regularly find it fair—and necessary—to place limits on
choice of counsel. See, e.g., Abbott GMBH & Co. v. Centocor Ortho Biotech, Inc., No. 4:09CV-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 patent prosecution bar); Chan v. Intuit, Inc., 218 F.R.D. 659,
661-62 (N.D. Cal. 2003) (same); In re Papst Licensing, No. MDL 1278, 2000 WL 554219 (E.D.
La. May 4, 2000) (same). Indeed, Skyhook accepts that its—and Google’s—choice in counsel
may be appropriately curtailed—that is the effect of the Patent Prosecution Bar Skyhook itself
proposes. See Exhibits C & D at ¶ 13.
In contrast to the real risks faced by Google under the terms of Skyhook’s proposed
orders, Google’s proposed order causes Skyhook little—if any—inconvenience, much less actual
harm. 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 allows Skyhook to employ any attorney—including those
with access to Google’s highly confidential material—to participate in the review and analysis of
this prior art. See Exhibit A at ¶ 13.3. Skyhook thus continues to enjoy the benefit of litigation
counsel’s “acquired expertise in the patents-in-suit,” maintains the ability to promote a
“consistent litigation strategy,” and can minimize any potential duplication of effort. (Skyhook
Memo. at 7, 9.)

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V.

SKYHOOK’S “COMPROMISE” PROPOSAL INCREASES THE RISK FACED
BY GOOGLE AND THUS IS NO COMPROMISE AT ALL.
Through its “compromise” proposal, Skyhook seeks to exclude from the Patent

Prosecution Bar those reexamination proceedings initiated by or at the behest of one of the
parties to this action. (Id. at 2.) This only exacerbates the problem. Any reexamination of
Skyhook’s patents initiated by Google would likely involve the patents-at-issue or those
involving similar technology. “It is well recognized that where related patents are being
prosecuted and litigated simultaneously, a party may obtain strategic advantage by using
information from the litigation in the patent prosecution.” Pall Corp., 655 F. Supp. 2d at 175 n.5
(internal quotation marks and citation omitted). Thus, prohibiting individuals with access to
Google’s highly confidential material from participating in the preparation of new or modified
patent claims in a reexamination proceeding initiated by Google is “essential to prevent a
potentially adverse impact upon the outcome of [the] pending litigation.” Id. at 175.
Furthermore, the “compromise” proposal seeks to resolve a problem that does not exist.
Skyhook argues that in prohibiting individuals with access to Google’s highly confidential
material from participating in the preparation of new or modified patent claims, Google’s
proposed protective order somehow disadvantages Skyhook vis-à-vis Google in a hypothetical
inter partes reexamination initiated by Google. (Skyhook Memo. At 9.) This is irrelevant.
Google’s proposed protective order does not “preclude Skyhook’s outside litigation counsel”
from participating in such a reexamination. (Id.) It simply limits outside litigation counsel’s
participation to the review and analysis of prior art, see Exhibit A at ¶ 13.3, the equivalent of the
involvement by Google’s outside litigation counsel in the inter partes reexamination. See 35
U.S.C. § 314(b). Thus, Google’s proposed protective order puts the parties on an even field,
while Skyhook seeks the “tactical advantage” inherent in allowing individuals with “access to
confidential information…to navigate between prior art and its infringement claims.” Shared
Memory Graphics, 2010 U.S. Dist. LEXIS 125184 at *12.

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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. Skyhook’s proposed protective orders, in contrast,
would put its counsel in an impossible position, and introduce genuine risk to the continued
protection of Google’s most confidential information. Google therefore respectfully requests
that the Court grant the Motion and enter Google’s proposed form of protective order.

Dated: June 8, 2011

Respectfully submitted,
GOOGLE INC.,
By its attorneys,

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

Jonathan M. Albano (BBO No. 013850)
[e-mail]
David M. Magee (BBO No. 652399)
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
Boston, MA 02110-1726, U.S.A.
617.951.8000
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 document 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 June 8, 2011.

__________________________________
Susan Baker Manning
[e-mail]

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