Voice Domain Technologies, LLC v. Apple Inc.

Filing 67

Magistrate Judge David H. Hennessy: ORDER entered denying 44 Motion for Protective Order; denying 45 Motion for Protective Order. "The Parties are hereby ORDERED to submit a Proposed Protective Order consistent with the reasoning and dictates of this Order by October 22, 2014." (Belpedio, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

VOICE DOMAIN TECHNOLOGIES, LLC,
Plaintiff,

v.
APPLE, INC.,
Defendant.

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CIVIL ACTION
NO. 13-40138-TSH

ORDER
October 8, 2014
Hennessy, M.J.
By Order of Reference dated July 29, 2014, pursuant to 28 U.S.C. § 636(b)(1)(A)
(Docket #47), this matter was referred to me for a ruling on the competing Motions for
Protective Orders of Plaintiff Voice Domain Technologies, LLC (“Voice Domain”) (Docket #44)
and Defendant Apple, Inc. (“Apple”) (Docket #45). These matters are now ripe for adjudication.
For the reasons that follow, the competing Motions are both DENIED. The Parties are hereby
ORDERED to submit a Proposed Protective Order consistent with the reasoning and dictates of
this Order.
I.

BACKGROUND
Voice Domain is a Connecticut limited liability company founded by Bruce Barker in

1999 with a principal place of business in Westborough, Massachusetts. (Docket #1 at ¶ 1).
Barker is the inventor of several patents and Voice Domain is the assignee of his inventions.
(Id.). Voice Domain is the owner of United States patent number 6,281,883 (the “’883 Patent”),
which was issued by the United States Patent and Trademark Office (“PTO”) on August 28,

2001 to Barker and assigned to Voice Domain. (Id. at ¶ 2). Voice Domain has licensed the ’883
Patent to corporations whose products incorporate Barker’s inventions. (Id. at ¶ 3).
In January 2013, Barker contacted Apple about the need to license the ‘883 Patent.
(Docket #44 at 4). On November 25, 2013, Voice Domain filed suit against Apple alleging that
Apple has infringed at least claim 1 of the ‘883 Patent through the inclusion of Siri voice
command functionality in their devices. (Docket #1 at ¶ 10). Apple filed its answer and a
counterclaim for a declaration of non-infringement, invalidity, and unenforceability on March 7,
2014. (Docket #22).
On May 13, 2014, Judge Hillman adopted the parties’ joint statement as the scheduling
order. (Docket #36). Pursuant to that schedule, Voice Domain was required to serve and file
preliminary disclosure of the claims infringed and produce all documents supporting its
contentions by June 3, 2014. (Docket #31 at 2). Apple was required to serve and file its
Preliminary Invalidity and Non-Infringement Contentions and produce documents relevant to its
invalidity defenses by August 11, 2014. (Id. at 2-3). Pursuant to the scheduling order, Apple
was also required to produce documents sufficient to show operation of the accused products or
methods identified by Voice Domain in its preliminary infringement disclosures by August 11,
2014, if a protective order had been entered. (Id. at 3). On August 11, 2014, Apple filed its
preliminary invalidity and non-infringement contentions. (Docket #55). As no protective order
had been entered, Apple did not produce documents sufficient to show operation of the accused
products or methods identified by Voice Domain in its preliminary infringement disclosures on
August 11, 2014.
Voice Domain filed its Motion for a Protective Order on July 3, 2014. (Docket #44). On
July 17, 2014, Apple filed its opposition and a Motion for Protective Order. (Docket #45). After

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extensive briefing, a hearing on the matter was held on September 5, 2014. (Docket #57).
Following the hearing, Apple and Voice Domain each filed a supplemental memorandum
addressing issues raised at the hearing. (Dockets #61 and 65, respectively).
II.

STANDARD
The scope of discovery generally extends to “any nonprivileged matter that is relevant to

any party’s claim or defense.” Fed. R. Civ. P. 26(b)(1). If a party or any person from whom
discovery is sought shows good cause, the Court may issue an order to protect that party or
person “from annoyance, embarrassment, oppression, or undue burden or expense[.]” Fed. R.
Civ. P. 26(c)(1). “Rule 26(c) is highly flexible, having been designed to accommodate all
relevant interests as they arise. The ‘good cause’ standard in the Rule is a flexible one that
requires an individualized balancing of the many interests that may be present in a particular
case.” Gill v. Gulfstream Park Racing Ass’n, 339 F.3d 391, 402 (1st Cir. 2005) (quoting United
States v. Microsoft Corp, 165 F.3d 952, 959-60 (D.C. Cir. 1999)) (alterations omitted). The
burden is on the party seeking the more restrictive protective order to show good cause under
Rule 26(c). Pharmachemie, B.V. v. Pharmacia, Inc., No. 95-40085-NMG, 1998 U.S. Dist.
LEXIS 2192, at *4 (D. Mass. Jan. 30, 1998) (Swartwood, M.J.). To show good cause, the party
seeking the protective order must demonstrate a particular need for protection; “[b]road
allegations of harm, unsubstantiated by specific examples or articulated reasons, do not satisfy
the Rule 26(c) test.” Cipollone v. Liggett Group, Inc., 785 F.2d 1108, 1121 (3d Cir. 1986),
quoted in Parmachemie, 1998 U.S. Dist. LEXIS 2192, at *4.

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III.

ANALYSIS
The parties are in agreement as to the majority of the provisions of the proposed

protective orders; however, there are three proposed provision as to which the parties disagree.1
Voice Domain argues that these disputed provisions are unnecessary as the agreed-to provisions
of the protective order and other facts already sufficiently protect Apple and any additional
restrictions would allow Apple to use the protective order as a tactic to game the outcome of the
case.
A.

Confidentiality Provisions
Apple’s proposed protective order has three tiers of confidentiality designations:

CONFIDENTIAL, CONFIDENTIAL – ATTORNEYS’ EYES ONLY (“AEO”), and
CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE (“SOURCE
CODE”). (Docket #45-2). Material designated as CONFIDENTIAL can be seen by a party’s
outside counsel and a limited number of a party’s employees. (Id. at ¶ 8). Material designated as
AEO and SOURCE CODE may be seen by a party’s outside counsel who is not involved in
“competitive decision making” for a party, but not in-house counsel. (Id. at ¶¶ 9-10). The
parties agree that Barker is expressly prohibited from accessing material designated as SOURCE
CODE. (Docket #44-9 at 3; Docket #45 at 4 n.3). However, the parties disagree over whether
Barker should be allowed access to material designated AEO.
Apple’s proposed AEO provision reads, in relevant part:
(a) A Producing Party may designate Discovery Material as “CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” only if such material contains or reflects
information that is extremely confidential and/or extremely sensitive in nature and
the Producing Party reasonably believes in good faith that the disclosure of such
Discovery Material is likely to cause economic harm or significant competitive
1

Apple’s proposed protective order is available at Docket #45-2. A document comparison showing the differences
between the Voice Domain and Apple proposed protective orders is available at Docket #45-7.

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disadvantage to the Producing Party, such as trade secrets, non-public technical
information such as product development information, engineering documents
and testing documents, non-public sensitive financial data such as pricing
information, sales information, sales or marketing forecasts or plans, business
plans, sales or marketing strategy, employee information, other non-public
information of similar competitive and business sensitivity and information
subject to an obligation of confidentiality to a third person or Court.
(b) Unless otherwise ordered by the Court, Discovery Material designated as
“CONFIDENTIAL-ATTORNEYS’ EYES ONLY” may be disclosed only to:
(i) The Receiving Party’s Outside Counsel, provided that such Outside Counsel is
not involved in competitive decision-making, as defined by case law, on behalf of
a Party or a competitor of a Party, and such Outside Counsel’s immediate
paralegals and staff, and any copying or clerical litigation support services
working at the direction of such counsel, paralegals, and staff. For purposes of
section 9, Bruce Barker shall not be given access to Discovery Material
designated as “CONFIDENTIAL-ATTORNEYS’ EYES ONLY”[.]
(Docket #45-2 at ¶ 9).
Voice Domain’s proposed protective order eliminates the AEO designation. (Docket
#45-7). Hence, Barker would have access to all materials produced other than SOURCE CODE.
Under Voice Domain’s proposal, Barker would be allowed to see Apple’s trade secrets; nonpublic technical information such as product development information, engineering, and testing
documents; non-public sensitive financial data such as pricing information, sales information,
sales or marketing forecasts or plans, business plans, sales or marketing strategy, employee
information, and other non-public information of similar competitive and business sensitivity.2
Voice Domain argues that the AEO provision will preclude Barker, and therefore, Voice Domain
itself, from evaluating any non-public technical or financial information and thereby impair its
ability to make sound litigation decisions. (Docket #44 at 17-18).
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In its supplemental submission following the hearing, Apple stated that it would be amenable to allowing Barker to
review the following types of financial documents, which would likely be designated AEO, following the
commencement of fact discovery: Apple’s summary financial reports for relevant time periods that show the price
and number of units sold of the accused devices; licenses potentially relevant to the determination of a reasonable
royalty in this case, if any; and agreements potentially relevant to valuation of the voice-recognition software at
issue in this litigation. (Docket #61 at 2). The Court expects that the proposed protective order submitted pursuant
to this Order shall include these terms.

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Voice Domain’s removal of the AEO provision also eliminates previously agreed-to
protections. With the elimination of the AEO designation, the only available designations are
either CONFIDENTIAL or SOURCE CODE.

(Docket #45-7 at ¶¶ 8-10).

Thus, all the

information that would have been labeled AEO, i.e., highly confidential information that is not
SOURCE CODE, can only be designated as CONFIDENTIAL. Apple and Voice Domain had
previously agreed that material designated CONFIDENTIAL could be disclosed to mock jurors,
but material designated as AEO or SOURCE CODE could not. (Docket #45-2 at ¶¶ 8-10).
Eliminating the AEO provision permits the parties to allow mock jurors to access highly
confidential information.
1. Risk of Inadvertent Disclosure
In United States Steel Corp. v. United States, the Federal Circuit clarified that the
relevant determination for denial of access under a protective order is “[w]hether an
unacceptable opportunity for inadvertent disclosures exists.” U.S. Steel Corp. v. United States,
730 F.2d 1465, 1468 (Fed. Cir. 1984). This determination turns on the extent to which the
person to whom the information is to be disclosed is involved in “competitive decisionmaking”
with the client.

Id. The Federal Circuit in U.S. Steel gave the following explanation of

“competitive decisionmaking:”
The parties have referred to involvement in “competitive decisionmaking” as a
basis for denial of access. The phrase would appear serviceable as shorthand for a
counsel’s activities, association, and relationship with a client that are such as to
involve counsel’s advice and participation in any or all of the client’s decisions
(pricing, product design, etc.) made in light of similar or corresponding
information about a competitor.
Id. at 1468 n.3 (emphasis added).
Apple asserts that Barker is a competitive decisionmaker as Barker is synonymous with
Voice Domain. (Docket #45 at 14). Voice Domain, representing that it holds only four patents
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directed to voice data technology and does not manufacture electronics, argues that it is not a
competitor with Apple and, therefore, there is no particularized need for protection. (Docket #44
at 12; Docket #46 at 5). Apple asserts that this argument is unsupported by fact and law and
disregards the fact that, as a patent inventor and prosecutor, access to highly confidential Apple
documents creates an unacceptable risk to Apple’s business. (Docket #45 at 14).
“[C]ourts have not limited the category of competitive decision makers to only those
people who work for entities that make or sell competing products.”

Microsoft Corp. v.

Common Sci. & Indus. Research Org., No. 6:06 CV 549, 2009 U.S. Dist. LEXIS 13675, at *1819 (E.D. Tex. Mar. 14, 2008) (holding that, while parties were not traditional competitors in the
market place, they were adversarial as one party produced products that the other claimed
practiced its patent); see Apeldyn Corp. v. AU Optronics Corp., No. 08-568-SLR, 2012 U.S.
Dist. LEXIS 85692, at *24 (D. Del. June 13, 2012) (stating that the fact that the plaintiff did not
currently compete with defendant did not eliminate risk of inadvertent disclosure); St Sales Tech
Holdings, LLC v. Daimler Chrysler Co., No. 6:07-CV-346, 2008 U.S. Dist. LEXIS 107096, at
*23 (E.D. Tex. Mar. 14, 2008) (“Moreover, it is somewhat disingenuous to argue Sales Tech is
not Defendants’ competitor simply because Sales Tech is in the business of acquiring and
enforcing patents, while Defendants manufacture and design automobiles.

Plaintiff and

Defendants all seek to utilize, in one manner or another, intellectual property as part of a
business model for pecuniary gain.”); Tailored Lighting, Inc. v. Osram Sylvania Prods., Inc., 236
F.R.D. 146, 149 (W.D.N.Y. 2006) (“I note that TLI has not cited, nor has this Court found, any
cases to suggest that the disclosure of proprietary information to an opposing patent inventor
would be appropriate merely because the parties were not currently direct competitors,
particularly where, as here, the inventor licenses the patent to a direct competitor.”). Even where

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parties are not “traditional competitors in the market place,” an individual may still be deemed a
competitive decisionmaker where the parties are in an “adversarial” posture and the individual
receiving the highly confidential information would be “especially situated to take positions that
are directly harmful and antagonistic to [the defendant].” Microsoft, 2009 U.S. Dist. LEXIS
13675, at *19-20.
Apple asserts that Barker is “especially situated to take positions that are directly harmful
and antagonistic” to Apple because of the many hats he wears at Voice Domain. (Docket #45 at
15). Apple argues that Barker’s role in licensing and litigating Voice Domain’s patents presents
a high risk of inadvertent disclosure, stating that Apple’s information could be used by Barker to
aid Voice Domain in determining what kinds of patents to prosecute or acquire, which
companies to sue in future litigation, and the price of licenses or litigation settlements. (Id.).
Courts have denied disclosure based on these concerns. See Intel Corp. v. VIA Techs., Inc., 198
F.R.D. 525, 530 (N.D. Cal. 2000) (denying access to protected information to in-house counsel
where her “involvement in licensing through litigation constitutes competitive decisionmaking,
because her advice and counsel necessarily affect licensing decisions”); Affymetrix, Inc. v.
Illumina, Inc., Civil Action No. 05-901-JJF, 2005 U.S. Dist. LEXIS 15482, at *8 (D. Del. July
28, 2005) (holding that party’s involvement with settling patent litigation and licensing crosses
over into competitive-decision making and, therefore, party was appropriately barred from
viewing confidential material under protective order). Apple also states that there is a high risk
of inadvertent disclosure because Barker has prosecuted multiple patents related to the accused
technology, and continues to invent, prosecute, and obtain patents from the PTO even if he does
not have any pending patents related to the accused technology in this case. (Docket #44 at 16).
Courts have recognized the risk of inadvertent use of confidential information if disclosed to

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inventors, engineers, and scientists. See Trustees of Boston Univ. v. Everlight Elecs. Co., Ltd.,
No. 12-cv-11935-PBS, Docket #636 at 7-8 (D. Mass. July 8, 2014) (Boal, M.J.) (“Although the
Court does not question [the inventor of the named patent and employee of plaintiff]’s intentions,
it ‘nonetheless question[s] his human ability during future years of research to separate the
applications he has extrapolated from [defendants’] documents from those he develops from his
own ideas) (quoting Safe Flight Instrument Corp. v. Sundstrand Data Control, Inc., 682 F. Supp.
20, 22 (D. Del. 1998)); Tailored Lighting, 236 F.R.D. at 149 (“[T]his Court has no reason to
question the integrity of plaintiff’s president and patent inventor; nonetheless, it seems
unreasonable to expect that anyone working to further his own scientific and technological
interests would be able assuredly to avoid even the subconscious use of confidential information
revealed through discovery that is relevant to those interests.”).
The Court finds that Barker is a competitive decisionmaker. While Voice Domain and
Apple may not make or sell competing products, Voice Domain alleges that Apple is producing
products that practice its patent. As the sole employee of Voice Domain, Barker is “especially
situated” to take positions “directly harmful and antagonistic” to Apple. While the Court has no
cause to doubt Barker’s integrity, it questions whether it is possible to avoid the subconscious
use of Apple’s confidential material in his future endeavors. Hence, the Court finds that there is
a real risk of inadvertent disclosure if Barker is permitted to access the AEO material.
2. Balance of Harms
Although the Court has found that a risk of inadvertent disclosure exists, the Court must
also balance that risk against the potential harm to the opposing party. See In re Deutsche Bank
Trust Co. Ams., 605 F.3d 1373, 1380 (Fed. Cir. 2010). Voice Domain argues that it would
suffer severe harm if the AEO provision is included in the protective order because it would

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preclude Barker from evaluating any of the highly confidential materials in the case, and,
because Barker is Voice Domain’s sole employee, thereby prevent Voice Domain from making
sound litigation decisions. (Docket #44 at 17-18). However, the Court finds that this hardship is
mitigated by the fact that Voice Domain’s counsel will have access to the AEO materials and can
therefore competently advise their client. See Vardon Golf Co., Inc. v. BBMG Golf, Ltd., No.
91 C 0349, 1991 U.S. Dist. LEXIS 15283, at *4 (N.D. Ill. Oct. 24, 1991) (holding that the
hardship on plaintiff due to plaintiff’s sole owner, shareholder, and employee being unable to
discover protected material is negligible because plaintiff’s trial counsel would be permitted
access to the protected material); see also EPL Holdings, LLC v. Apple Inc., 2013 U.S. Dist.
LEXIS 71301, at *4 (N.D. Cal. May 20, 2013) (“Moreover, EPL brought this action against
Apple; EPL’s apparent lack of internal resources to effectively pursue this action does not mean
that Apple’s confidential information should be exposed to non-parties.”).
Voice Domain also argues that the provision would impair Voice Domain’s counsel’s
ability to consult with the inventor of the patent at issue and, thus, prevent them from preparing
their case effectively. (Docket #44 at 18). This argument was made and rejected in Trustees of
Boston University v. Everlight Electronics Co., Ltd. Judge Boal stated that, while the court was
persuaded that the patent inventor had specialized knowledge about the patented technology, the
court was not persuaded that the plaintiff would be unable to effectively prosecute the case
unless the patent inventor was able to access the confidential materials. Trustees of Boston
Univ., No. 12-cv-11935-PBS, Docket #636 at 8. Judge Boal relied on the fact that the patent
inventor would be able to access discovery including confidential material that had not been
designated outside counsel only and that the plaintiff had failed to show that it would be unable
to obtain the assistance it needed from a different expert. Id. Those same considerations are at

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play here. Barker is able to access material designated CONFIDENTIAL. Voice Domain also
has not shown why it could not engage an expert other than Barker to assist it in this litigation.
The Court finds that the potential harm to Voice Domain from precluding Barker from
accessing materials designated AEO does not outweigh the risk of inadvertent disclosure of
Apple’s confidential material. Thus, any proposed protective order submitted to this Court as a
result of this Order shall contain an AEO provision.
B.

Patent Prosecution Bar
The parties have agreed that a prosecution bar is appropriate in this case for those who

access material designated as SOURCE CODE. (Docket #45 at 11). Voice Domain has also
agreed to bar Barker and counsel from prosecuting any new Voice Domain patent applications
concerning the subject matter of this patent case.

(Docket #44 at 8).

The proposed

confidentiality orders also contain an undisputed provision providing, “All Protected Material
shall be used solely for this case or any related appellate proceeding and not for any other
purpose whatsoever, including without limitation any other litigation, patent prosecution or
acquisition, patent reexamination or reissue proceedings, or any business or competitive purpose
or function.” (Docket #45-7 at ¶ 6(a)).
Apple’s proposed prosecution bar, as drafted on May 21, 2014 states:
Absent the written consent of the Producing Party, any person on behalf of either
Party who receives one or more items designated “CONFIDENTIALATTORNEYS’ EYES ONLY-SOURCE CODE” or “CONFIDENTIALATTORNEYS’ EYES ONLY” shall not be involved, directly or indirectly for the
respective Party that they represent in the case, in any of the following activities:
(i) advising on, consulting on, preparing, prosecuting, drafting, editing, and/or
amending of patent applications, specifications, claims, and/or responses to office
actions, or otherwise affecting the scope of claims in patents or patent
applications relating to the functionality, operation, and design of software or
hardware for data entry, voice recording, dictation, processing voice commands,
converting speech to text, natural language processing, and/or interacting with a
device (generally or as described in any patent in suit), before any foreign or
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domestic agency, including the United States Patent and Trademark Office.
These prohibitions are not intended to and shall not preclude counsel from
participating in proceedings on behalf of a Party challenging the validity of any
patent, but are intended, inter alia, to preclude counsel from participating directly
or indirectly in drafting or amending claims during reexamination, inter partes
review, covered business method review, or reissue proceedings on behalf of a
patentee. These prohibitions shall begin when access to “CONFIDENTIALATTTORNEY’S EYES ONLY-SOURCE CODE” or “CONFIDENTIALATTORNEY’S EYES ONLY” materials are first received by the affected
individual, and shall end two (2) years after the final resolution of this action,
including all appeals.
(Docket #45-1 at ¶ 8) (emphasis in original).
The dispute over the prosecution bar centers on two issues: (1) whether the prosecution
bar should apply to those who access material designated as AEO, and (2) whether the
prosecution bar should apply to post-grant proceedings (i.e. reexamination, inter partes review,
covered business method review, or reissue proceedings). (Docket #45 at 11).
1. AEO Materials
While Voice Domain has agreed to a prosecution bar applying to SOURCE CODE,
Apple argues that a broader prosecution bar applying to AEO material is needed as, per the
scheduling order, it is required to produce its documents sufficient to show the operation of the
accused products. (Docket #45 at 20). Apple states that, often, the technical details of how a
product works are disclosed in documents like schematics, data sheets, specifications, flow
charts, artwork, or formulas rather than or in addition to source code. (Id.). The preceding
materials would fall under the AEO designation but not the SOURCE CODE designation. Apple
seeks to apply the prosecution bar to individuals accessing the AEO material.
In In re Deutsche Bank, the Federal Circuit recognized that an attorney with access to its
adversary’s confidential information may be barred from representing clients in certain matters
before the PTO due to the high risk of inadvertent disclosure and misuse of that information. In

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re Deutsche Bank, 605 F.3d at 1380-81. For the same reasons that the Court found that the AEO
provision should be included in any submitted protection order, the Court finds that material
designated AEO is entitled to protection under the prosecution bar.
2. Post-Grant Proceedings
Under the Patent Act, patent owners and third parties may initiate a “reexamination”
proceeding to confirm or challenge the validity of a previously issued patent. See 35 U.S.C.
§§ 302-307. Once a reexamination request is made, the Director of the PTO determines whether
the reexamination request raises a “substantial new question of patentability.” 35 U.S.C. § 303.
If not, the reexamination request is denied. Id. If it does, the Director orders a reexamination
and gives both the owner and the requestor the opportunity to weigh in on the matter. 35 U.S.C.
§ 304. The reexamination goes forward “according to the procedures established for initial
examination” – that is, the process undertaken by the PTO to examine a new patent application.
35 U.S.C. § 305. Amendments are allowed on reexamination, though they “must not enlarge the
scope of a claim nor introduce new matter. Amended or new claims which broaden or enlarge
the scope of a claim of the patent should be rejected under 35 U.S.C. 314(a).” Ameranth, Inc. v.
Pizza Hut, Inc., No. 3:11-cv-01810, 2012 WL 528248, at *6 (S.D. Cal. Feb. 17, 2012) (quoting
Manual of Patent Examining Procedure § 2666.01).
Until recently, courts generally did not include reexamination proceedings within the
scope of a prosecution bar. See id. (“a review of cases directly discussing a prosecution bar
applied to reexamination finds near unanimous support against extending the [prosecution] bar to
cover reexamination”). In EveryScape, Inc. v. Adobe Systems, Inc., Judge Collings was faced
with the parties’ competing proposed protective orders, the dispute between the two centering on
whether counsel should be barred from participating in reexamination proceedings. EveryScape,

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Inc. v. Adobe Sys. Inc., No. 1:10-cv-11597-RGS, Electronic Order (D. Mass. Aug. 12, 2011)
(“Specifically, plaintiff proposes that the prosecution bar not apply to representation of a
patentee in reexaminations of the patent-in-suit initiated by [] litigants accused of infringing that
patent.”). Judge Collings, citing Crystal Image Technology, Inc. v. Mitsubishi Electric Corp.,
stated that he would follow those decisions in which courts have declined to extend the
prosecution bar to reexamination proceedings in such circumstances. Id.
The Court in Crystal Image stated:
The Patent Act expressly curtails the scope of reexamination, prohibiting any
claim amendment that would enlarge the scope of the initial patent. Thus, an
important limitation on reexamination is that no proposed amended or new claim
enlarging the scope of a claim of the patent will be permitted. Claims added or
amended in a reexamination proceeding will necessarily be narrower and,
therefore, no device can infringe the narrower claims emerging from
reexamination that would not have infringed the original claims.
Crystal Image Technology, Inc. v. Mitsubishi Elec. Corp., No. 08-307, 2009 U.S. Dist. LEXIS
32972, at *5 (W.D. Pa. April 17, 2009) (quoting Pall Corp. v. Entegris, Inc., 655 F. Supp. 2d
169, 173 (E.D.N.Y. 2008)) (alterations omitted). “The above restriction ‘both underscores the
distinction between initial patent prosecution and reexamination, and effectively mitigates the
potential misuse of PTO procedures to gain a collateral business or litigation advantage, thereby
rendering a prosecution bar in the reexamination context largely unnecessary.” Id. (quoting Pall
Corp., 655 F. Supp. 2d at 173) (alterations omitted); see Kenexa Brassring Inc. v. Taleo Corp.,
No. 07-521-SLR, 2009 WL 393782, at *2 (D. Del. Feb. 18, 2009) (“Because reexamination
involves only the patent and the prior art, defendant’s confidential information is ‘basically
irrelevant to the reexamination.’”).
“However, a newer line of cases recognizes that even in a reexamination proceeding, a
patent owner can use confidential information to restructure or amend its claims so as to improve

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its litigation position against alleged infringers.” Telebuyer, LLC v. Amazon.com, Inc., No. 13cv-1677, Docket #118 at 10 (W.D. Wash. July 7, 2014) (available at Docket #45-11) (citing
Shared Memory Graphics, LLC v. Apple, Inc., 2010 U.S. Dist. LEXIS 125184, at *11 (N.D. Cal.
Nov. 12, 2010) (“Claims may still be restructured in reexamination, and, in a given case, a patent
owner may well choose to restructure claims in a manner informed by the alleged infringer’s
confidential information gleaned from litigation.”); Grobler v. Apple Inc., 2013 U.S. Dist.
LEXIS 65048, at *5-6 (N.D. Cal. May 7, 2013) (prohibiting counsel from drafting or amending
claims in reexamination); EPL Holdings, 2013 U.S. Dist. LEXIS 71301, at *9-10 (holding that
parties’ counsel may participate in third-party initiated review proceedings so long as counsel is
prohibited from assisting in any crafting or amendment of patent claims)). “These decisions
recognize that drafting, amending, restructuring, or otherwise participating in reexamination
proceedings may constitute ‘competitive decision-making’ as contemplated by the Federal
Circuit in Deutsche Bank.” Id. at 11. “Thus, where the need to protect confidential information
outweighs the burden on the receiving party, a court may prohibit counsel from participating or
consulting on reexamination proceedings, or may limit that participation.” Id. The Telebuyer
court found that the risk to Amazon’s confidential information outweighed the burdens imposed
on Telebuyer due to the breadth and volume of the material requested by Telebuyer and the
possibility of counsel using such information in the PTO proceeding without technically
“drafting” or “amending” a claim. Id. at 11. The court noted that the burden on plaintiff – the
need to retain other outside counsel – was not too cumbersome as the court had no reason to
doubt that plaintiff could secure different counsel for future patent action during the time of the
prosecution bar. Id. at 8. The court stated its decision was consistent with the Model Stipulated
Protective Order for the Northern District of California. Id. at 11; see N.D. Cal. Patent Local

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Rule 2-2 Interim Model Protective Order, available at http://www.cand.uscourts.gov/modelprotective-orders (updated August 20, 2014). However, the court noted that there was one
particular circumstance where the burden on the receiving party may outweigh the risks. Id. The
court stated that “[s]hould the producing party initiate the reexamination proceeding, the PTO
proceeding might effectively be ‘part and parcel of the litigation at issue;’” thus the prosecution
bar would require the receiving party to retain separate counsel for what is essentially the same
dispute, “another ‘front’ in the litigation.” Id. at 11-12. Therefore, the court stated that, should
the producing party bring reexamination proceedings, counsel for the receiving party would be
permitted to participate in those proceedings upon a grant of leave from the court. Id. at 12; see
also Shared Memory Graphics, 2010 U.S. Dist. LEXIS 125184, at *14-15 (holding that patentee
counsel should not be banned from reexamination proceedings so long as (1) the proceedings are
initiated by the opposing party, and (2) counsel expressly agrees that in the reexamination it will
not rely on any confidential information supplied by the opposing party).
Apple has proposed allowing litigation counsel in this case to participate in a post-grant
proceeding, but counsel’s ability to draft or amend claims would be restricted. (Docket #45 at
22). At the hearing and in its supplemental memorandum, Apple also stated that it would be
amenable to counsel from Fisch Sigler LLP, the firm currently representing Voice Domain, who
have not accessed or reviewed Apple’s documents and other information designated as AEO or
SOURCE CODE to represent Voice Domain in a post-grant proceeding before the PTO for all
purposes, including drafting and amending claims. (Docket #61 at 1-2). Apple conditioned its
agreement to such a proposal on the condition that Voice Domain establish an appropriate ethical
wall, and that materials designated AEO or SOURCE CODE not be shared or communicated in
any way between any member of the Fisch Sigler litigation team and any member of the Fisch

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Sigler post-grant team. (Id. at 2). Apple described the ethical wall as prohibiting any member of
the Fisch Sigler litigation team from drafting or amending claims in a post-grant proceeding, but
stated that it would not prohibit the Fisch Sigler litigation team from communicating with the
post-grant team regarding prior art to the patent-in-suit, including prior art already furnished to
Voice Domain by Apple along with its invalidity contentions. (Id.).
The Court finds the more recent line of cases recognizing “that even in a reexamination
proceeding, a patent owner can use confidential information to restructure or amend its claims so
as to improve its litigation position against alleged infringers” persuasive. See Telebuyer, No.
13-cv-1677, Docket #118 at 10. The Court recognizes the risk to Apple if parties with access to
the AEO or SOURCE CODE materials are allowed to draft or amend claims during
reexamination proceedings on behalf of Voice Domain.

The Court believes that Apple’s

proposed prosecution bar and the ethical wall proposed in its supplemental memorandum address
this real concern while placing the least burden possible on Voice Domain. However, the Court
requires that the parties add one caveat to this provision in any proposed protective order. If
Apple should bring reexamination proceedings, counsel for Voice Domain would be permitted to
participate in those proceedings upon a grant of leave from the court. Such a provision addresses
Voice Domain’s concerns about gamesmanship and is also consistent with the case law relied
upon by Apple. See Telebuyer, No. 13-cv-1677, Docket #118 at 12; Shared Memory Graphics,
2010 U.S. Dist. LEXIS 125184, at *14-15.
C.

Expert Discovery
Apple’s proposed protective order contains a provision describing what materials are and

are not discoverable from experts in this case.

(Docket #45-2 at ¶ 20).

Voice Domain’s

proposed protective order does not contain a similar provision. (Docket #45-7 at ¶ 20). Apple’s

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proposal states that testifying experts are not subject to discovery with respect to any drafts of
their reports, notes, or outlines for draft reports. (Docket #45-2 at ¶ 20). Apple’s proposal also
limits discovery of materials provided to testifying experts to “those materials, facts, consulting
expert opinions, and other matters actually relied upon by the testifying expert in forming his or
her final report, trial, or deposition testimony or any opinion in this case.” (Docket #45-2 at
¶ 20). Voice Domain argues that this provision is not necessary and may lead to “gotcha”-type
difficulties later in discovery to the extent the protective order varies with the actual
requirements of Fed. R. Civ. P. 26. (Docket #44 at 20).
Pursuant to Fed. R. Civ. P. 26(a)(2), an expert’s written report must contain “the facts or
data considered by the witness in forming them.” Fed. R. Civ. P. 26(a)(2)(B)(ii) (emphasis
added). Apple’s proposal differs from Rule 26(c) in that it only requires the parties to turn over
materials “actually relied upon by the testifying expert.” This is a distinction with a difference.
See Allstate Ins. Co. v. Electrolux Home Prods., Inc., 840 F. Supp. 2d 1072, 1080 (N.D. Ill.
2012) (“The term ‘considered’ invokes a broader spectrum of thought than the phrase ‘relied
upon’ which requires dependence on the information.”) (quotation omitted). Apple asserts that
its proposal will forestall confusion over what will be disclosed as there has been tremendous
variation in the interpretation of Rule 26 and prevent unnecessary motion practice. (Docket #45
at 22-23).
The Court finds that Apple has not justified the need for the additional protections in
expert discovery beyond those that Rule 26(a)(2) provides. While it is true that Rule 26 is often
the subject of litigation, Apple, who bears the burden here, has not provided any specific
assertions of potential harm that it will face as to this issue beyond those that every party with an
expert faces in litigation. Thus, any proposed protective order submitted to this Court shall not

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contain a provision, unless agreed to by both parties, that restricts expert discovery beyond the
bounds of Rule 26(a)(2).
IV.

CONCLUSION
For the foregoing reasons, the competing Motions for Protective Order (Dockets #44, 45)

are both DENIED. The Parties are hereby ORDERED to submit a Proposed Protective Order
consistent with the reasoning and dictates of this Order by October 22, 2014.
.

/S/ David H. Hennessy
David H. Hennessy
UNITED STATES MAGISTRATE JUDGE

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