Wireless Recognition Technologies LLC v. A9.com, Inc. et al

Filing 96

Joint MOTION for Protective Order (Entry of) by A9.com, Inc., Amazon.com, Inc., Google, Inc.,, Nokia, Inc., Ricoh Innovations, Inc., Wireless Recognition Technologies LLC. (Attachments: # 1 Exhibit 1-Proposed Protective Order with Competing Proposals, # 2 Exhibit 2-Plaintiff's Proposed Protective Order, # 3 Exhibit 3-Defendants' Proposed Protective Order, # 4 Exhibit 4-Dkt. No. 241 from LTT case, # 5 Exhibit 5-Dkt. No. 169 from LTT case, # 6 Exhibit Dkt. No. 169-1 from LTT case, # 7 Exhibit 7-ST Sales v. Daimler-LEXIS, # 8 Exhibit 8-Yudell Power of Attorney)(Shvodian, Daniel)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

WIRELESS RECOGNITION
TECHNOLOGIES LLC,
Plaintiff,
vs.
A9.COM, INC., AMAZON.COM, INC.,
GOOGLE INC., NOKIA, INC., and
RICOH INNOVATIONS, INC.,
Defendants.

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CIVIL NO. 2:10-CV-00364-TJW-CE

JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER

TABLE OF CONTENTS
Page
A.

Whether In-House Counsel Or Other Individuals Should Be Permitted Access
To Highly Confidential Financial Information (Section 5 of the Proposed
Protective Order).................................................................................................................. 1
1.
2.

B.

Plaintiff’s Position.................................................................................................... 1
Defendants’ Position ................................................................................................ 2

Adequate Procedures To Protect Defendants’ Highly Confidential Source
Code And Plaintiff’s Ability To Access The Same (Sections 6(b)(i), 6(b)(ix)
and 6(b)(xi-xv) of the Proposed Protective Order) .............................................................. 3
1.
2.

C.

Plaintiff’s Position.................................................................................................... 3
Defendants’ Position ................................................................................................ 5

Treatment Of Subpoenas Or Court Orders To Compel Protected Documents
(Section 14 of the Proposed Protective Order) .................................................................... 8
1.
2.

D.

Plaintiff’s Position.................................................................................................... 8
Defendants’ Position ................................................................................................ 8

Patent Prosecution Bar (Section 23 of the Proposed Protective Order)............................. 10
1.
2.

E.

Plaintiff’s Position.................................................................................................. 10
Defendants’ Position .............................................................................................. 11

Whether The Parties Must OCR Documents Before Producing Them, And If
So, Whether The OCR Costs Should Be Split Between The Parties (Section 31
of the Proposed Protective Order)...................................................................................... 13
1.

Plaintiff’s Position.................................................................................................. 13

2.

Defendants’ Position .............................................................................................. 14

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TABLE OF AUTHORITIES
Page(s)
CASES
Brown v. Braddick,
595 F.2d 961 (5th Cir. 1979) .............................................................................................. 9
FTC v. Exxon Corp.,
636 F.2d 1336 (D.C. Cir. 1980) ........................................................................................ 13
In re Deutsche Bank Trust Co. Americas,
605 F.3d 1373 (Fed. Cir. 2010)....................................................................... 10, 11, 12, 13
In re Genentech, Inc.,
566 F.3d 1338 (Fed. Cir. 2009)......................................................................................... 14
Light Transformation Technologies. LLC v. Anderson Custom Electronics, Inc.,
Case No. 2:09-cv-354 (E.D. Tex. Mar. 30, 2011) .............................................................. 2
ST Sales Tech Holdings, LLC v. Daimler Chrysler Co.,
2008 U.S. Dist. LEXIS 107096 (E.D. Tex. Mar. 14, 2008)............................................ 2, 3
U.S. Steel Corp. v. United States,
730 F.2d 1465 (Fed. Cir. 1984)..................................................................................... 1, 12
RULES
Federal Rule of Civil Procedure 26 ................................................................................................ 9
Federal Rule of Civil Procedure 34 .............................................................................................. 15
Federal Rule of Civil Procedure 45(c)(2)(B) .................................................................................. 9

ii

Pursuant to the Discovery Order entered in this case (Dkt. No. 63), the parties hereby
jointly move the Court for entry of a Protective Order.
The parties have extensively conferred and narrowed their disputes, but they have not
been able to completely reach an agreement regarding some of the specific provisions in an
Agreed Protective Order for the above case.
Attached hereto for the Court’s consideration are the parties’ proposed Protective Orders.
Specifically, attached as “Exhibit 1” is a consolidated version of the proposed Protective Order,
wherein the text that is agreed upon is not highlighted, the text proposed by Plaintiff but objected
to by Defendants is highlighted in blue, and the text proposed by Defendants but objected to by
Plaintiff is highlighted in yellow. The parties have also attached Plaintiff’s proposed Protective
Order as “Exhibit 2” and Defendants’ proposed Protective Order as “Exhibit 3.” The parties’
positions on the remaining issues are as set forth below.
A.

Whether In-House Counsel Or Other Individuals Should Be Permitted Access To
Highly Confidential Financial Information (Section 5 of the Proposed Protective
Order)
1.

Plaintiff’s Position

The in-house counsel for Plaintiff Wireless Recognition Technologies LLC (“WRT”) has
responsibility for making decisions dealing directly with this litigation and also assists outside
counsel with the present action. Accordingly, WRT seeks to permit its in-house counsel access
to Defendants’ financial information relating to the Accused Instrumentalities, in order that he
may make decisions and engage in meaningful settlement negotiations.
WRT’s position is entirely proper. First, the “competitive decision-making” test is the
standard for determining whether in-house counsel should see sensitive or confidential
information. U.S. Steel Corp. v. United States, 730 F.2d 1465 (Fed. Cir. 1984). It is not a matter
of dispute that Plaintiff WRT is a non-practicing entity. Therefore, WRT does not compete with
Defendants, and there could be no possible competitive harm from WRT’s in-house counsel
seeing financial information for purposes of case supervision and settlement.

1

Secondly, this Court has already decided the issue under a similar if not an identical set
of facts in favor of plaintiff. Light Transformation Techs. LLC v. Anderson Custom Elecs., Inc.,
Order, Case No. 2:09-cv-354 (E.D. Tex. Mar. 30, 2011).1 There, the non-practicing entity was
Light Transformation Technologies LLC, whose parent was Acacia Research Corporation,2 the
same parent entity as that of the present Plaintiff WRT. The scope of language used there was
also the same as that offered presently by WRT, given the context of the Protective Order.3
2.

Defendants’ Position

Defendants object to Plaintiff’s proposal to allow its in-house counsel, who is a
competitive decision maker, access to Defendants’ highly confidential financial information.
Plaintiff’s counsel, Brad Botsch, who is responsible for managing this litigation is a business
development executive of Plaintiff’s parent, Acacia Research Group, a patent acquisition and
licensing entity. Mr. Botsch advises and participates in business decisions relating to licensing
and enforcement of patents acquired by Acacia, including patents acquired by its subsidiary,
Plaintiff WRT. (See Dkt. No. 78-1 (Botsch Decl.) at ¶¶ 2-5.) This Court has held that when a
company’s “entire business model with [its] patent-holding companies … revolves around the
acquisition, enforcement (through litigation), and licensing of patent …, it is difficult to argue
that someone such as [its in-house counsel], who is heavily involved in these aspects of the
business, is somehow not a competitive decisionmaker.” See, e.g., ST Sales Tech Holdings, LLC
v. Daimler Chrysler Co., 2008 U.S. Dist. LEXIS 107096, *22-26 (E.D. Tex. Mar. 14, 2008)
(granting protective order denying access to counsel for patent licensing entity).4 Thus, based on
Plaintiff/Acacia’s business model, all of its in-house counsel are competitive decision makers.

1

Ex. 4 (Dkt. No. 241).

2

Ex. 5 (Dkt. No. 169 at ¶ 4, 3).

3

Ex. 6 (Dkt. No. 169-1 at ¶ 9, 6).

4

Ex. 7.

2

Furthermore, under the balancing test of U.S. Steel, the substantial and potentially
dangerous risk of inadvertent disclosure outweighs any need that in-house counsel may have for
such information.

Plaintiff/Acacia could use Defendants’ highly confidential financial

information to their detriment in determining which patents to acquire or assert and in pricing its
patent licenses with other companies.

However, in-house counsel managing litigation for

Plaintiff does not need access to Defendants’ highly confidential financial information to
prosecute or settle Plaintiff’s claims in the litigation. Plaintiff’s outside counsel and independent
financial experts will have access to such information, and like other competitors and investors
who must make financial decisions, Plaintiff’s in-house counsel can make decisions about
settlement based on its outside counsel’s advise and publicly available information.
Compounding the problem are the facts that Plaintiff has filed several suits against the
Defendants already on the same products, and continues to prosecute additional patents in the
Patent Office. (Dkt. No. 68-2 (Yudell Decl.) at ¶¶ 1, 4.) Plaintiff seeks to provide its in-house
counsel access to highly confidential financial information about Defendants’ products and
unfettered ability to participate in prosecution of Plaintiff’s patents, thereby allowing Plaintiff to
steer the patents in directions where Defendants’ highly confidential financial information might
project sales to be most critical. See ST Sales Tech Holdings, 2008 U.S. Dist. LEXIS 107096 at
*18-20.
Thus, Plaintiff’s proposal to permit in-house counsel or other undefined in-house
individuals access to Defendants’ highly confidential financial information must be rejected.
B.

Adequate Procedures To Protect Defendants’ Highly Confidential Source Code And
Plaintiff’s Ability To Access The Same (Sections 6(b)(i), 6(b)(ix) and 6(b)(xi-xv) of
the Proposed Protective Order)
1.

Plaintiff’s Position

It is with reluctance that Plaintiff WRT requests the Court’s intervention on the issue of
treatment of source code and spends the Court’s valuable energy on such matter. While the
present Defendants, like all Defendants, seek to protect their source code, WRT requires

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sufficient access to the source code to enable its technical experts to support its infringement
case.
Starting with the entirety of the Protective Order, itself, the nearly forty-page draft was
originally drafted by Defendants. As Defendants’ production will likely outweigh WRT’s, they
are obviously motivated to devise as complicated and oppressive a set of terms and conditions as
possible, and even a cursory review of the document illustrates they that have done just that.
In the source code paragraph itself, WRT requested a few concessions from Defendants
who have refused to budge away from their original language.
WRT has reasonably requested that its expert be able to use an electronic storage device
(e.g., flash drive) under the strict provisions of the ten-page paragraph – under a stand-alone,
non-networked personal computer with no peripheral devices – and that Defendants ensure the
source code works with software utilities under their harshly imposed conditions.5 Defendants
deny the former storage request and would permit the latter only at their option and WRT’s
expense. Despite that the code review is at Defendants’ facilities, on their computer with their
restrictions, Defendants have refused to offer technical help in operating the source code if
WRT’s expert requires it.6
Defendants have provided strict conditions on the number of pages to be printed, the
number of blocks of code, the security conditions of the printed pages, and requirement of an
access log to the pages identifying who, when and how long they are viewed.7 They would
prohibit printed copies of the source code, other than attached to sealed court filings, expert
reports and the like.8 They would prohibit electronic copies even where reasonably necessary,
and prohibit character recognition needed by experts in sifting through thousands of lines of
5

See Ex. 1, § 6(b)(i).

6

Id.

7

See Ex. 1, § 6(b)(ix).

8

See Ex. 1, § 6(b)(xi).

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code.9 They would deny any type of storage of the code that WRT’s expert may need to get its
job done in a reasonable and efficient manner.10
Defendants’ set of conditions imposes a veritable mine field of requirements making the
activities of WRT’s expert extremely difficult to accomplish and therefore unduly expensive for
its client. Moreover, the conditions are moot since source code is to be treated as highly
confidential,11 and WRT’s expert must agree to and acknowledge the provisions of the
Protective Order under the provisions of Exhibit A.12
That Defendants seek to force this onerous, ten-page set of rules on Plaintiff WRT, with
little or no room for compromise, is a notable illustration of WRT’s challenge in resolving
disputes with the Defendants.
2.

Defendants’ Position

The parties agree that the Defendants’ Highly Confidential Source Code should be
afforded additional protections beyond those provided for other Confidential Information.
Defendants’ proposed provisions acknowledge the highly sensitive nature of the respective
parties’ Source Code and outline specific procedures that provide reasonable restrictions on
access and safeguards to prevent unauthorized dissemination and use of such material.
Plaintiff’s proposed provisions, on the other hand, attempt to circumvent the requirements for
inspecting the Source Code at a secure site and do not provide much heightened security beyond
what is required for Highly Confidential - Outside Counsel Only. Plaintiff also objects to many
of Defendants’ provisions based on the purported inconvenience to its outside counsel.
Defendants insist that there should be reasonable restrictions on any copies made of the
Source Code reviewed at the secure site. In particular, Defendants’ provisions prohibit making
9

See Ex. 1, § 6(b)(xii).

10

See Ex. 1, § 6(b)(xiii).

11

See Ex. 1, § 6(a).

12

See Ex. 1, § 6(b)(vii).

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any paper copies or electronic images of the Source Code except to the extent relevant and
necessary for any pleading, exhibits, expert reports, depositions, or other court documents. (See
Ex. 1, § 6(b)(xi) and (xii).) This prohibition does not impede Plaintiff’s access to the Source
Code or litigation of its case. Furthermore, Defendants insist that paper copies may not be
scanned using OCR or converted into a text-searchable format, which would otherwise obviate
the requirement that access to searchable copies of the Source Code be limited to the secure site.
Plaintiff’s counter-proposals for these provisions that prohibit copies “except as may be
reasonably necessary in the litigation of this action” fails to articulate the specific type of
activities that would permitted. Absent this type of clarity, the producing party loses control
over what copies can be made, and subsequently where they may end up, and the parties will be
left to debate later whether a copy was “reasonably necessary.” Defendants’ proposal avoids this
ambiguity.
Defendants’ proposal also defines specific limits on the amount of Source Code that may
be printed at any given time (e.g., no more than 10% or 500 pages) as well as other reasonable
steps to maintain the security and confidentiality of the Source Code (e.g., copies kept in secure
locked area). (See Ex. 1, § 6(b)(ix).) Without these restrictions, Plaintiff would be free to print
the entirety of Source Code files, including portions not needed for its case. Defendants also
expect the receiving party to maintain an access log of all copies of the Source Code in its
possession, which will be produced upon request, that identifies who received copies of the
Source Code and when it was provided, as well as a certification at the end of case that all copies
of the Source Code have been returned. (See Ex. 1, § 6(b)(xiv).) The purpose of the log is to
provide the producing party with a record of all individuals that accessed the material in case a
breach in confidentiality is discovered later. Plaintiff objects to making the log available and
certifying the return of Source Code because it would be burdensome on its counsel, but the
security of the Source Code should be paramount and the alleged burdens on Plaintiff are

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minimal. The parties also disagree on whether additional peripheral devices may be connected
to the Source Code Computer13 or brought into the secure site. (See Ex. 1, § 6(b)(i) and (xiii).)
Again, these provisions do not hinder Plaintiff’s ability to review the Source Code and are meant
to ensure that copies of the Source Code are not taken from or communicated electronically
outside of the secure site. Plaintiff’s proposal to permit a flash drive to store copies of the
Source Code (§ 6(b)(i)), which can then be taken and reviewed elsewhere, flies in the face of
requiring the Source Code be inspected at the secure site. In addition, the parties dispute whether
the cost of providing any additional tools or software utilities should be borne by the receiving
party. (Id.) Defendants assert that since these programs are not essential for accessing the
Source Code but rather merely aid in its review, they should be provided at the receiving party’s
expense. Furthermore, Plaintiff’s requirement that Defendants provide “the help of personnel
with appropriate technical expertise” to assist in its review of the Source Code goes beyond the
requirements of providing instructions on how to operate the Source Code Computer in the
Court’s standard protective order, which Defendants have already agreed to provide.
Finally, Defendants seek further assurance that any experts or consultants retained by the
parties that access the Source Code will agree to not perform software development work for
commercial purposes related to the functionality covered by the Source Code reviewed for a
period of one year after substantive involvement in this litigation. (Ex. 1, § 6(b)(xv).) The
rationale for this provision is to help ensure that an expert does not improperly utilize any portion
of the Source Code it reviewed, since it is hard to separate the knowledge of the source code
from one’s memory. Plaintiff’s stated opposition is that an expert will have already signed the
Protective Order, but the potential for inadvertent use in this instance greatly exceeds the limited
restriction placed on a potential expert.

13

The parties do not dispute that a printer may be connected to the Source Code Computer to
print copies of the Source Code on watermarked pre-Bates numbered paper, which is separately
addressed in § 6(b)(ix) of Exhibit 1.

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C.

Treatment Of Subpoenas Or Court Orders To Compel Protected Documents
(Section 14 of the Proposed Protective Order)
1.

Plaintiff’s Position

In reference to subpoenas or court orders to compel protected documents served on a
receiving party, the parties agree that the receiving party is to notify the producing party
promptly.
After such notice, Plaintiff departs company from Defendants’ draft. As the information
sought belongs to the producing party, Plaintiff has the receiving party tender notice to the
producing party, who will attend to the matter accordingly and bear the corresponding duties and
obligations. As the producing party has a vested interest in preserving the protected status of its
own information, it is in the best position to assume such duties as well as to absorb the
associated costs.
On the contrary, Defendants’ draft imposes a set of conditions on the receiving party,
including the type of notice to the producing party, the type of notice to the party causing the
subpoena to be issued, and on the party in the other action that caused the subpoena to issue.
Like Plaintiff’s proposal, the fees are absorbed by the producing party. These actions are clearly
designed to have the receiving party inform all necessary parties about the protected status of the
producing party’s information. However, Plaintiff WRT’s position is more logical as it places
the burden on the party whose information is sought – namely, the producing party – and does
not have the receiving party perform actions whose fees are absorbed by the producing party.
2.

Defendants’ Position

Consistent with the purposes of a protective order, Defendants’ proposed language gives
a party that produces confidential information in this case an opportunity to ensure that such
confidentiality is protected if the information in the possession of the receiving party is the
subject of a third party subpoena. Plaintiff, on the other hand, seeks to absolve the receiving
party of any responsibility for responding to such a subpoena by shifting that responsibility to the
party from which it obtained the information in discovery. Plaintiff would even require the

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producing party to indemnify the receiving party. Plaintiff’s proposal turns the purpose of a
protective order under Federal Rule of Civil Procedure 26 on its head: rather than protecting a
party producing discovery in this case, it exposes that party to liability.
Furthermore, Plaintiff’s proposal imposes duties and obligations on a producing party and
its counsel that they may not be able to meet. For any subpoena or court order directed to a
receiving party that would require disclosure of a producing party’s designated highly
confidential information, Plaintiff’s proposal would allow the receiving party to shift
responsibility to the producing party’s counsel “to attend to all matters associated with such
subpoena or court order on behalf of receiving party,” and provides that “the producing party
shall bear all duties and obligations relating to the matter, including without limitation
indemnification of receiving party in regard thereto” (emphasis added). Thus, if the subpoena or
court order sought any information designated as highly confidential by a producing party,
regardless of whether it sought other information as well, Plaintiff’s proposal would allow the
subpoenaed receiving party to simply wash its hands of the whole matter by giving notice to the
producing party. However, the producing party’s counsel may have conflicts that prevent it from
acting on behalf of the receiving party in any capacity, especially as to aspects of a subpoena
going beyond the confidential information of the producing party.

Moreover, only the

subpoenaed party can serve objections under Federal Rule of Civil Procedure 45(c)(2)(B), such
that the producing party could not respond in such a manner, and would be limited to the more
expensive option of moving to quash or modify the subpoena. If the subpoena commands
production of more than the producing party’s highly confidential information, the producing
party may not have standing to make such a motion. Brown v. Braddick, 595 F.2d 961 (5th Cir.
1979) (no standing where the movant lacks personal right or privilege with respect to the
materials subpoenaed).

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D.

Patent Prosecution Bar (Section 23 of the Proposed Protective Order)
1.

Plaintiff’s Position

Plaintiff WRT is willing to impose upon itself a patent prosecution bar, just not one so
open ended and extreme in its language as set forth by Defendants.
WRT’s proposed language prohibits counsel who receives confidential information from
providing advice or opinions to facilitate patent prosecution.

The language makes two

exceptions. The first is that counsel may take part in reexamination proceedings, which is fair in
that if Defendants’ counsel may challenge the validity of the patents-in-suit, then Plaintiff’s
counsel should be able to challenge them. Secondly, it also excludes confidential financial
information, which rightfully does not belong in a prosecution bar. In re Deutsche Bank Trust
Co. Ams., 605 F.3d 1373, 1381 (Fed. Cir. 2010) (“[F]inancial data and other sensitive business
information, even if deemed confidential, would not normally be relevant to a patent application
and thus would not normally be expected to trigger a patent prosecution bar.”). Accordingly, it
achieves the Federal Circuit’s balancing test between the risk of inadvertent use of Defendants’
confidential information and harm to Plaintiff in its choice of counsel.14
On the other hand, Defendants propose barring virtually any prosecution activity,
including preparing, prosecuting, drafting, editing, and/or amending of patent applications,
specifications, claims, and/or responses to office actions. Their proposed bar prohibits work on
reissues, where the specification may be amended for clarification purposes, and claims may be
amended to further narrow them, none of which activities could adversely impact Defendants.

14

Id. “[A] patent prosecution bar must show on a counsel-by-counsel basis: (1) that counsel’s
representation of the client in matters before the PTO does not and is not likely to implicate
competitive decisionmaking related to the subject matter of the litigation so as to give rise to a
risk of inadvertent use of confidential information learned in litigation, and (2) that the potential
injury to the moving party from restrictions imposed on its choice of litigation and prosecution
counsel outweighs the potential injury to the opposing party caused by such inadvertent use.”

10

While seemingly offering to permit WRT’s counsel to participate in reexaminations,
Defendants’ offering is indeed empty and riddled with inconsistencies. Defendants’ offered
language states that counsel is not precluded from taking part in reexaminations, but only where
the validity of claims is challenged, except that counsel may not craft the claims. It also states
that counsel may not participate, either directly or indirectly in the proceedings either. Exactly
how WRT’s counsel may participate in reexaminations in a meaningful way for its client is a
mystery.

Despite Defendants’ de facto prohibition of participation in reexaminations,

Defendants’ litigation counsel, themselves, may institute such reexaminations; in other words,
Defendants’ counsel may attack the validity of Plaintiff WRT’s claims before the U.S. Patent and
Trademark Office, yet Plaintiff WRT’s own counsel may not defend against such action without
likely violating Defendants’ propounded language.
Defendants’ proposed over-reach even extends to three years beyond the final resolution
of the cases in the action. Accordingly, despite that all claims may be settled with all Defendants
in the present action, Defendants would like to bar Plaintiff WRT’s own counsel for another
three years after that. That counsel most knowledgeable about WRT’s patent portfolio would be
prohibited from serving their client for years after the present action, at no disadvantage to the
present Defendants, can hardly be considered a fair offering by Defendants.
Accordingly, rather than balancing their interests with Plaintiff WRT’s interest in its
choice of counsel, Defendants ignore WRT’s interests altogether. Id. (“[T]he court should
consider . . . the potential difficulty the client might face if forced to rely on other counsel for the
pending litigation or engage other counsel to represent it before the PTO.”).
2.

Defendants’ Position

Defendants propose a patent prosecution bar that will permit the exchange of highly
confidential information in this litigation, including design and source code information for the
accused products, while removing the danger that such information could be used, even
inadvertently, during the prosecution of patents for Plaintiff or others. (See Ex. 1 at pp. 26-27
(yellow highlighting).) In evaluating the appropriateness of a protective order, a court must

11

consider the risk and potential danger of “inadvertent or accidental disclosure” and weigh it
against the potential burden and impairment the protective order may have on the other party.
U.S. Steel Corp., 730 F.2d at 1468.
In applying U.S. Steel to the evaluation of a proposed patent prosecution bar in Deutsche
Bank, the Federal Circuit instructed that the initial inquiry is whether the individuals that will be
subject to the bar are involved in “competitive decision making,” which included “making
strategic decisions on the type and scope of patent prosecution that might be available or worth
pursuing for such inventions, writing, reviewing, or approving new patent applications or
continuations-in-part of application to cover those inventions, or strategically amending or
surrendering claim scope during prosecution.” 605 F.3d at 1380. The Federal Circuit held that
when attorneys are involved in such patent prosecution activities, there is a risk of inadvertent
disclosure, and therefore such attorneys should not be exempted from a prosecution bar. Id. The
Federal Circuit then said that the risk of use or inadvertent disclosure should be balanced against
potential harm of the restriction, such as denying the patentee the right to continue using
prosecution counsel that has a history of representing the patentee. Id. at 1380-81.
Here, Defendants’ proposed patent prosecution bar is narrowly tailored to individuals
who obtain highly confidential information, which includes product design and source code
information. These individuals would pose a risk of inadvertent disclosure if they were allowed
to participate in the prohibited activities of “preparing, prosecuting, drafting, editing, and/or
amending of patent applications, specifications, claims, and/or responses to office actions . . .”
(See Ex. 1 at p. 27.) Thus, the individuals that would be subject to Defendants’ proposed patent
prosecution bar satisfy the initial “competitive decision making” portion of the analysis recited in
Deutsche Bank. 605 F.3d at 1380.
The second portion of the Deutsche Bank analysis is also satisfied because Plaintiff will
not be unduly prejudiced by Defendants’ proposal. Plaintiff’s litigation counsel does not have a
history of representing Plaintiff in patent prosecution matters. For several years, Plaintiff has
used Craig Yudell as its prosecution counsel. Mr. Yudell has been involved with the prosecution

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of Plaintiff’s patents since early 2009, and he is counsel of record for: the patent-in-suit, the
related ‘474 patent asserted in a separate litigation against the same Defendants and products, the
reexamination proceedings regarding the ‘474 patent that were instigated by a third party, and
the prosecution of a patent application that is a continuation of the application that led to the
patent-in-suit. (See, e.g., Ex. 8.) Thus, Plaintiff is well represented and will not be unduly
prejudiced if its litigation counsel is subject to Defendants’ proposed patent prosecution bar.
By contrast, Plaintiff’s proposed “patent prosecution bar” is not a bar of any type.
Plaintiff’s proposal merely states that a receiving party may not use any of the confidential
information produced in this case during patent prosecution activities. (Ex. 1 at p. 26 (blue
highlighting).) That proposal would allow individuals receiving Defendants’ highly confidential
information, including source code for the accused products, to participate in patent prosecution
for anyone, including Plaintiff, on subject matter identical to that at issue in this litigation.
Plaintiff’s proposal fails to address the danger of inadvertent use, which the Federal Circuit has
recognized as almost inevitable for someone in a competitive decision making position. See
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.”) (citing FTC v. Exxon Corp., 636 F.2d 1336, 1350 (D.C. Cir. 1980)). And given
that Plaintiff continues to prosecute continuation applications, as well as a reexamination of a
related patent asserted by Plaintiff against Defendants in a separate litigation, there is great
danger that Plaintiff would make inadvertent use of Defendants’ highly confidential information.
Therefore, Plaintiff’s proposal is inadequate and must be rejected.
E.

Whether The Parties Must OCR Documents Before Producing Them, And If So,
Whether The OCR Costs Should Be Split Between The Parties (Section 31 of the
Proposed Protective Order)
1.

Plaintiff’s Position

The sole contention before the Court is whether Defendants must perform optical
character recognition (“OCR”) of their electronically produced documents.

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Defendants’ refusal to OCR the documents before they are produced is respectfully not
understood. It hardly bears mentioning that Defendants will likely produce many thousands of
pages of documents in response to Plaintiff WRT’s requests for production, or that it would be
much easier and cost effective for the owners of the documents to perform the OCR before they
are transmitted to WRT. It also bears little mention that the Defendants, most notably Google,
are some of the largest holders and purveyors of information facilities in the entire world. That
Defendants would not comply with the simple request is emblematic of Defendants’ inflexibility
in resolving issues with WRT and preserving the Court’s valuable time and resources.
2.

Defendants’ Position

The final dispute between the parties concerns the format of documents produced in this
litigation. (See Ex. 1 at p. 31, § 31.) To be clear, this issue does not concern the format for
production of electronically stored information, such as email or source code, which by its very
natures is already in an electronically searchable format. Rather, this dispute concerns the format
for the production of paper documents that are imaged for electronic production, as well as other
electronic documents that are not electronically searchable.

Plaintiff proposes that, for all

documents that are not electronically searchable, the producing party must perform optical
character recognition (“OCR”) so that the receiving party can more easily search those
documents. (See id. (blue highlighting).)
While Plaintiff’s proposal is made in neutral terms such that the OCR burden is placed on
the producing party, this will impose Plaintiff’s litigation costs onto Defendants because accused
infringers produce the majority of documents in a patent litigation. In re Genentech, Inc., 566
F.3d 1338, 1345 (Fed. Cir. 2009) (“In patent infringement cases, the bulk of the relevant
evidence usually comes from the accused infringer.”). Thus, through the guise of the Proposed
Protective Order, Plaintiff attempts to transfer a portion of its anticipated litigation costs onto
Defendants by requiring Defendants to OCR all electronically produced files. Id. Plaintiff,
however, can show no good cause to transfer this OCR burden and cost to Defendants, and
therefore Plaintiff’s proposal should be rejected. Instead, the parties should simply be required

14

to comply with Rule 34 of the Federal Rules of Civil Procedure and produce “documents as they
are kept in the usual course of business . . .”

WHEREFORE PREMISES CONSIDERED, Plaintiff and Defendants respectfully
request the Court to make a determination and enter an Protective Order in this matter as
submitted by the parties.

Dated: August 18, 2011

Respectfully submitted,
By:

/s/ Cameron H. Tousi
Cameron H. Tousi (admitted pro hac vice)
Virginia State Bar No.: 43668
David M. Farnum (admitted pro hac vice)
Ralph P. Albrecht (admitted pro hac vice)
ALBRECHT TOUSI & FARNUM, PLLC
1701 Pennsylvania Avenue, NW, Suite 300
Washington, DC 20006
Telephone: [phone]
Facsimile: 202.318.8788
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
William E. Davis, III
Texas State Bar No. 24047416
THE DAVIS FIRM, P.C.
111 W. Tyler Street
Longview, TX 75601
Telephone: [phone]
Facsimile: 903.230.9661
E-mail: [e-mail]
Attorneys for Plaintiff and Counterdefendant
WIRELESS RECOGNITION
TECHNOLOGIES LLC

15

By:

/s/ Daniel T. Shvodian
James F. Valentine (admitted pro hac vice)
California State Bar No. 149269
Daniel T. Shvodian (admitted pro hac vice)
California State Bar No. 184576
PERKINS COIE LLP
3150 Porter Drive
Palo Alto, CA 94304-1212
Telephone: [phone]
Facsimile: 650.838.4350
E-mail: [e-mail]
E-mail: [e-mail]
Michael C. Smith
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
E-mail: [e-mail]
Attorneys for Defendants and Counterclaimants
A9.COM, INC., AMAZON.COM, INC., and
GOOGLE INC.

By:

/s/ Michael C. Smith
Michael C. Smith
Texas State Bar No. 18650410
SIEBMAN, BURG, PHILLIPS & SMITH, LLP
P.O. Box 1556
Marshall, TX 75671-1556
Telephone: [phone]
Facsimile: 972.767.4620
E-mail: [e-mail]
Robert F. Perry (admitted pro hac vice)
Allison H. Altersohn (admitted pro hac vice)
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: 212.556.2222

16

E-mail: [e-mail]
E-mail: [e-mail]
Attorneys for Defendant
NOKIA INC.

By:

/s/ Michael E. Jones
Michael E. Jones
Texas State Bar No. 18650410
Allen Franklin Gardner
POTTER MINTON P.C.
110 N. College, Suite 500
P.O. Box 359
Tyler, TX 75710-0359
Telephone: [phone]
Facsimile: 903.593.0846
E-mail: [e-mail]
E-mail: [e-mail]
Mark D. Rowland (admitted pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Telephone: [phone]
Facsimile: 650.566.4144
Email: [e-mail]
Attorneys for Defendant and Counterclaimant
RICOH INNOVATIONS, INC.

17

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R.
Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
consented to electronic service were served with a true and correct copy of the foregoing by
email, on this 18th day of August, 2011.
/s/ Daniel T. Shvodian
Daniel T. Shvodian

09234-0001/LEGAL21565012.1