Rockstar Consortium US LP et al v. Google Inc

Filing 80

Joint MOTION for Protective Order by Google Inc, NetStar Technologies LLC, Rockstar Consortium US LP. (Attachments: # 1 Exhibit A Proposed Protective Order, # 2 Exhibit B Plaintiffs' Brief, # 3 Exhibit C Defendant's Brief)(Blackburn, Shawn)

Exhibit B
Plaintiffs Rockstar Consortium US LP and
Netstar Technologies LLC’s Briefing in
Support of Entry of a Protective Order

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Exhibit B: Rockstar’s Briefing on Disputed Protective Order Issues

Both parties agree that a protective order is appropriate in this case. Rockstar views the
Court’s Model Protective Order as adequate to protect each party’s interests and confidential
information while Defendant has asked for pages and pages of additional protections. Even
though Rockstar is generally of the opinion that Defendant’s additions to the Model Protective
Order are unnecessary, in the spirit of compromise Rockstar has agreed to the majority of
Defendant’s demands. However, Rockstar cannot agree to all of the additional provisions that
Defendant seeks. Not one of Defendant’s additional requested provisions is found in the Court’s
Model Protective Order. Moreover, these disputed provisions will burden legitimate discovery
efforts, increase the cost of this litigation, and engender additional motion practice.
In cases such as this, where the “parties to an action agree on entry of a protective order
but differ on the order’s terms, the party seeking to limit discovery bears the burden of
demonstrating that good cause exists for the protection of that information.” Document
Generation Corp. v. Allscripts, LLC, No. 6:08-CV-479, 2009 WL 1766096, at *2 (E.D. Tex.
June 23, 2009) (citations omitted). “The party attempting to establish good cause must
demonstrate ‘a clearly defined and serious injury to the party seeking closure.’” Id. (citing Pansy
v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994)). Accordingly, because Defendant
requests additional restrictions on discovery, it bears the burden to show good cause for each of
the restrictions it seeks to impose.
1. Paragraph 10: In-house Access to Designated Materials.
The Model Protective Order provides for in-house attorneys and up to three additional
designated representatives to have access to confidential information and for in-house attorneys
who exercise no competitive decision-making authority to have access to RESTRICTED –
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ATTORNEYS’ EYES ONLY materials. Defendant seeks restrictions on access to designated
materials far beyond those provided for in the Model Protective Order. Defendant requested (1)
that there be no designated representatives that receive confidential materials, (2) that access to
confidential materials be limited to a certain number of in-house attorneys, and (3) that no inhouse attorneys have access to RESTRICTED – ATTORNEYS’ EYES ONLY materials, as they
would be entitled to under the Model . Rockstar agreed to the first two departures from the
Model Protective Order, but cannot agree to the third.
Defendant suggests that Rockstar’s in-house counsel should be denied access to
RESTRICTED – ATTORNEYS’ EYES ONLY materials because Rockstar has failed to provide
Defendant with facts that would justify access. This is a half-truth. It is true that Rockstar has
provided no such facts, however, Defendant never asked for any such facts. In fact, Defendant
never once throughout the negotiation process made any indication that it was willing to
compromise on in-house access to RESTRICTED – ATTORNEYS’ EYES ONLY materials.
Defendant likewise fails to tell the Court the entire story when it contends that Rockstar
would not have its in-house counsel commit to refrain from competitive decision making. The
language quoted by Defendant pertained merely to CONFIDENTIAL materials and not
RESTRICTED – ATTORNEYS’ EYES ONLY materials. As mentioned above, Defendant was
never willing to negotiate in-house access to attorney’s eyes only materials. When defendant
insisted that Rockstar’s in-house counsel sign a document stating that they were not competitive
decision makers in order to have access to CONFIDENTIAL material, Rockstar pointed out that
the Model Protective Order provides access to such material without distinction as to decisionmaking status. At any rate, this concern must not have been too great, as Defendant eventually
dropped its demand with respect to in-house counsel who see CONFIDENTIAL material. See

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Paragraph 6(c) of the Proposed Protective Order. Notwithstanding Defendant’s allegations to the
contrary, Rockstar is and has always been willing to limit access in-house counsel to
RESTRICTED – ATTORNEYS’ EYES ONLY to attorneys who exercise no competitive
decision-making authority. Indeed, Rockstar’s proposed provision provides for exactly that. See
Paragraph 10 of the Proposed Protective Order.
Rockstar recognizes that defendants need to protect their confidential information from
their competitors, but in-house counsel with the responsibility of managing litigation need access
to both CONFIDENTIAL and RESTRICTED – ATTORNEYS’ EYES ONLY materials to
effectively and efficiently participate in the action. The Model Protective Order balances these
interests by allowing in-house attorneys responsible for the litigation to view RESTRICTED –
ATTORNEYS’ EYES ONLY materials only if they exercise no competitive decision-making
authority on behalf of the client. This allows the parties to prosecute their case effectively while
protecting the legitimate business interests of their adversary. Defendant cannot show that the
Model Protective Order provisions are insufficient in this case.
2. Paragraph 11(a): Use of Laptops during Source Code Review
The Model Protective Order contains provisions sufficient to protect Defendant’s source
code. Nonetheless, Rockstar has agreed to nearly all of Defendant’s additional burdensome
precautionary measures. In return, Rockstar sought one concession from Defendants as to source
code review—the ability to take notes on a laptop computer during the review. Defendant
refused to compromise.
Defendant seeks to impose an impractical restriction on technical discovery by barring
source code reviewers from bringing laptops into the source-code review room. Without laptop
computers, source code reviewers cannot take adequate notes, search their own materials for

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information, efficiently revise claim charts, and draft sections of reports. Courts in this District
have rejected attempts to seek such a limitation on source code review on several occasions. See
Bluebonnet Telecomms. LLC v. Sony Ericsson Mobile Communications (USA) Inc., No. 2:13-cv00505-JRG, Dkt. 224 (E.D. Tex., March 12, 2014) (rejecting defendant’s demand for a
prohibition on any electronics in the source code room); MicroUnity v. Acer, No. 2:10-cv-00091TJW, Dkt 244-2, 244-3, Dkt 304 (E.D. Tex., Aug. 23, 2011) (adopting protective order without
defendants’ proposed restriction on laptops); PersonalWeb Technologies, LLC v. NEC Corp. of
America, No. 6:11-CV-00655, Dkt 83, 87 (E.D. Tex., Aug. 7, 2012) (same).
Admittedly, Courts in this District have on two occasions denied a party the ability to use
laptops inside the source code room. See E-Contact Technologies, LLC v. Apple, Inc., No. 1:11CV-00426, Dkt 344 (E.D. Tex., June 19, 2012); see also Geotag Inc. v. Frontier Commc’ns
Corp., Case No. 10-0570 (E.D. Tex. Jan. 8, 2013). The rationale supporting the Court’s decision
in E-Contact, however, is inapplicable in this case.

In E-Contact, the court allowed the

defendant to bar laptops from the source code room because the defendant would allow the
plaintiff to “print the source code from the source code computer, take the printed pages to the
laptop, and then prepare charts, notes, or other work product.” Id. at *8. Likewise, in Geotag,
the source code review computers were “connected to a printer or printers,” allowing for ondemand printing of source code. Geotag Inc. v. Frontier Commc’ns Corp., Case No. 10-0570,
Dkt 593 (E.D. Tex. Jan. 18, 2013). Defendant in this case makes no such concession or
accommodation. Moreover, the undisputed portions of paragraphs 11(c) and (g) of the Proposed
Protective Order, which prevent on-demand printing of source code, make the E-Contact
solution unworkable here. Further, Defendant in the present case produced source code in
PersonalWeb and Superspeed, LLC, v. Google, Inc., No. 4:12-cv-01688, Dkt 38 (S.D. Tex.,

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January 10, 2013) under protective orders that allowed for the presence of a laptop in the source
code room. Defendant is unable to demonstrate that doing so resulted in any harm.
Finally, Rockstar notes that even though Defendant has agreed to provide two source
code review computers, those computers do not obviate an expert’s need for a laptop. The
source code review computers are non-networked and removable media is forbidden by the
terms of the Protective Order. As such, the source code review computers are not useable for
note taking and other tasks. Moreover, even if the source code review computers could be used
for this purpose, doing so would require Rockstar’s experts to produce privileged work product
on computers within the control of opposing counsel. That is obviously untenable. Accordingly,
the experts will be unable to use those computers for note taking and work product production.
In conclusion, Defendant’s proposed prohibition on laptops will drive up expenses for all
parties by forcing reviewers to spend more time taking handwritten notes with pen and paper.
Such a limitation, if adopted, will inevitably lead to more requests for the producing party to
print source code. By contrast, Rockstar’s proposal protects the producing party by barring
computers taken into the source code review room from being connected to any network and also
blocking separate recording and storage devices.1
3. Paragraph 11(g): Arbitrary Limit on Source Code Printing
Defendant proposes to limit Rockstar to printouts of source code of no more than 25
consecutive pages, and 500 total aggregate pages throughout the duration of this entire case.
Defendant’s demand is both unreasonable and arbitrary. This case involves seven patents and at
least a dozen accused instrumentalities, each of which may reflect numerous sets and versions of
source code. As Rockstar does not yet have access to any of Defendant’s source code, it is

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The laptop will, of course, not be used for the copying of source code. Such copying is expressly forbidden by the
terms of paragraph 11(c).

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impossible to predict how many printed pages will be necessary for Rockstar to properly prepare
its case.2 Nonetheless, Defendant insists that the court impose a hard cap on the number of pages
that may be printed. The Eastern District has rejected this demand on several occasions. See
Blue Calypso, Inc. v. Groupon, No. 6:12-cv-486, Dkt. 157, at 3 (E.D. Tex., Oct. 24, 2013)
("Without knowing the length or volume of the Source Code Materials that Yelp will be required
to produce, any page limitation that is chosen in a vacuum will be arbitrary."); see also
Bluebonnet Telecomms. L.L.C. v. Sony Ericsson Mobile Comms. (USA) Inc., No. 2:13-cv-505,
Dkt. 34, at 2–3 (E.D. Tex., Mar. 12, 2014) (denying request for page limitations on source code
printouts). The Court rejected these demands with good reason. An arbitrary cap will ensure
only one thing: more motion practice over the production of additional printed pages of source
code. Rockstar’s proposal will allow source code discovery to proceed efficiently and securely.
Moreover, the undisputed provisions of the protective order already limit Rockstar to printing a
“reasonable” amount of code, and allow Defendant to challenge the printing of code (and
withhold the pages in question), if they deem the printing to be unreasonable.
Finally, this Defendant has been subject to non-numerical source code printing limits in
at least two other cases in this District. See PersonalWeb Technologies, LLC v. NEC Corp. of
America, case 6:11-CV-00655, Dkt 89, slip op. at 9 (E.D. Tex., Aug. 9, 2012); Eolas Techs. Inc.
v, Adobe Sys. Inc., Case No. 6:09-cv-00446-LED, Dkt. No. 423, slip op. at 20-21 (E.D. Tex.,
Sept. 10, 2010). Defendant is unable to show that it was harmed in those cases and there is no
reason to believe that it will be harmed in this case. Conversely, the imposition of Defendant’s

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It is true that Defendant offered to allow Rockstar to cap the total number of pages at 500 and trade in pages that it
no longer needed in exchange for additional pages. It is, however, not true that Rockstar rejected this offer. Rather,
Rockstar stated that it lacked sufficient information to decide whether that offer was workable. In the hopes of
determining whether the cap and trade proposal could work, Rockstar asked Defendant to provide Rockstar with an
idea of how many lines of code would be produced with respect to each accused instrumentality so that an
agreement could be reached. Defendant never responded.

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arbitrary cap will likely both hinder Rockstar’s legitimate discovery efforts and consume the
Court’s time and resources.
4. Paragraph 11(j): Responsibility for Source Code
The parties agree that paper copies of source code shall be allowed to be stored or viewed
at the five locations listed in paragraph 11(j). The parties part ways when it comes to how the
printed pages will be treated when moving between locations. There is no dispute that the
printed pages of source code can and must be transported between these locations. In order for
Rockstar’s experts to perform their duties they will have to receive the source code pages at their
offices. Given that under the Protective Order there will be only three copies of the printed
source code pages and up to five experts plus outside counsel will need access to those pages,
Rockstar team members will inevitably have to share sets of printed pages of source code.
In order for Rockstar and its experts to operate efficiently, they must be able to ship the
source code pages between locations.

Under Defendant’s proposal, Rockstar’s counsel or

experts would have to transport the source code pages personally by hand between offices.
Rockstar’s counsel has neither the intention nor the ability to hand-deliver the printed pages to
Rockstar’s experts around the country each and every time additional printed pages are
requested. Defendant’s proposal would not only be outrageously expensive but also wildly
impractical. Defendant suggests in its briefing—for the very first time—that it does not require
hand-delivery by counsel, but that a courier will suffice. Indeed, the proposed language of
paragraph 11(j) contains no such suggestion. At any rate, a hand-delivery courier service will
likewise greatly increase the cost and difficulty to Rockstar as source code pages will likely need
to be shipped numerous times over the course of this litigation due to the additional restrictions
requested by Defendant mentioned above. Should the Court decide that a courier service is the

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proper course of action, Rockstar suggests that Defendant bear the cost. This approach would
both alleviate Defendant’s concerns about control over source code pages and Rockstar’s
concerns regarding costs.3
Finally, while Defendant’s source code—like every defendant’s source code—is secret
and valuable, Rockstar is not proposing to ship the entire set of source code. Rather, Rockstar
merely asks that it be able to ship certain excerpted pages that it requires to prosecute its case.
Rockstar’s proposed language allows the transport of source code pages by conventional, secure,
and trackable means and would limit the requirement of direct control by counsel or experts to
situations where the source code is actually in their possession. This requirement, along with the
other requirements of paragraph 11(j), is more than adequate to protect Defendant’s source code.
Defendant cannot show that the language proposed by Rockstar is unworkable. Nor can
Defendant show good cause for burdening Rockstar with such impractical and expensive
transportation requirements.
5. Paragraph 12: Third-Party Attorney Protective Order Refusal.
Defendant proposed to add this provision in order to prevent the disclosure of
confidential information by certain third parties. Rockstar largely agrees to this provision, but
objects on one narrow issue. In the event that an attorney representing a third party refuses to
sign a protective order prior to a deposition at which confidential information is to be shown to
the third party, Defendant seeks a provision forcing all parties to jointly seek a protective order
prohibiting the attorney from disclosing protective information.

Rockstar understands

Defendant’s need to protect its own protected information from disclosure just as Rockstar has a
need to protect its own confidential information. However, Rockstar’s proposed provision
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That Defendant prefers to have its source code ferried in the back of a sedan or in a cyclist’s backpack rather than
shipped with FedEx tracking numbers that allow remote monitoring of the package’s whereabouts confirms that its
hand-delivery request is nothing more than an attempt to needlessly increase the cost of litigation.

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adequately serves that need by allowing either party to seek a protective order from the Court
prohibiting the attorney from disclosing the confidential information. By contrast, Defendant
asks the Court to preemptively take away Rockstar’s ability to oppose any such motion,
regardless of its merit, and force Rockstar to join any such motion.

In Rockstar’s view,

Defendant’s proposal is not only inappropriate, but also prematurely decides issues that likely
will not arise.
6. Paragraph 13: Overly Broad Prosecution Bar
The parties agree that there should be a patent prosecution bar, but disagree on the scope.
Rockstar’s proposed prosecution bar is faithful to the bar found in the Model Protective Order,
but with a few additions. Rockstar’s provision clarifies the prosecution bar’s application to
reexaminations and post-grant proceedings. This additional language merely makes express
what this Court has already held—that the bar does not prohibit an attorney from assisting in
reexaminations or post-grant proceedings, except that persons subject to the prosecution bar
“may not directly or indirectly assist in drafting, amending or proposing for substitution patent
claims in” reexamination or any post-grant proceedings. Achates Reference Publ'g, Inc. v.
Symantec Corp., No. 2:11-cv-294 (RSP), Dkt. 447, at 1–2 (E.D. Tex. Aug. 20, 2013). The
addition of this language will serve to prevent future disputes between the parties should
Defendant choose to institute a reexamination or post-grant proceeding.
Defendant seeks a prosecution bar with restrictions that far exceed both those provided in
the Model Protective Order and what is necessary to protect Defendant’s interests. Both the
Model Protective Order and Rockstar’s proposed provision limit the prosecution bar to
prosecution activity done on behalf of the receiving party or its successor or other affiliate.
Defendant’s proposal is not so limited.

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Defendant proposes that the prosecution bar apply to broad range of activity done on
behalf of any patentee for any patent including providing advice, counsel, or suggestions
regarding, or in any other way influencing claim scope and/or language so long as the patent
involves technology related to the patents-in-suit. Thus, under Defendant’s provision, the
prosecution bar would prevent an attorney from advising an unrelated client on an unrelated
matter against an unrelated defendant so long as that matter involved technology similar to that
of the patents-in-suit. Defendant has not proposed that its prosecution bar apply to those cases
where Defendant is a current or potential defendant, but rather seeks to prevent Rockstar’s
attorneys from advising in unrelated cases against unrelated defendants.
There is no justification for such a restrictive provision, and Defendant cannot show
otherwise. Defendant’s concern in how its confidential material will be used is of course
legitimate.

What is not legitimate, however, is Defendant’s attempt to prevent Rockstar’s

attorneys from working on unrelated cases against unrelated defendants in unrelated matters
simply because there may be an overlap in technology.
Finally, it bears mention that Rockstar is bound by law to “not use [Defendant]'s
confidential information for any purpose other than this litigation.” Achates, No. 2:11-cv-294,
Dkt. 447, at 2. Defendant’s unjustified concern that the Protective Order will be violated is not
sufficient to hinder Rockstar’s counsel’s ability to work on other unrelated matters. Rockstar’s
proposed provision, like that of the Model Protective Order, properly balances Defendant’s
interest in not having its confidential information used against itself while protecting the rights of
those attorneys subject to the prosecution bar. Defendant’s provision protects only itself.
7. Paragraph 14: Unwarranted Acquisition Bar
Defendant seeks to impose a so-called “acquisition bar.” This acquisition bar does not

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serve the same purposes or share the justification of a prosecution bar as it does not prevent any
potential harm to the producing party with respect to new patent rights. To the contrary, the
proposed acquisition bar is merely an attempt by the Defendant to escape potential infringement
allegations with respect to pre-existing property rights. Defendant has no legitimate interest in
continued infringement of these rights.
Moreover, just like any other purchaser of intellectual property, Defendant has the ability
to avoid the infringement of pre-existing patent rights by purchasing or licensing any patents
they infringe or practice. In fact, Defendant placed a competing bid for the very patent portfolio
from which the patents-in-suit originated. The proposed acquisition bar would serve only to
create a court-sanctioned prohibition against competing with Defendant in the market for patents.
As Defendant has no legitimate interest in infringing existing patent rights or in the stifling of
competition in the market for patents, Defendant cannot show good cause for the acquisition bar
request, and it should not be included in the protective order.
8. Paragraph 33 (and 6(f)): The Ability to Conduct a Mock Trial
Defendant sought and received from Rockstar protections for its confidential information
far beyond those provided for in the Model Protective Order. In return, Rockstar asked for the
ability to conduct a mock trial—subject to extensive measures to protect Defendant’s
information. Defendant flatly refused.
In the experience of Rockstar’s counsel, mock jury trials not only assist in preparation for
trial, but also promote settlement by allowing the parties to evaluate their case. With this in
mind, Rockstar proposes the mock jury provision to the Protective Order. Rockstar is, of course,
cognizant of the need to protect Defendant’s designated material from disclosure and Rockstar’s
proposed provision takes extraordinary steps to do so while still allowing Rockstar to prepare its

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case.

In fact, Rockstar’s proposal expressly prohibits the viewing or receipt of any of

Defendant’s designated materials, and in no event will mock jurors see Source Code Material.
This will ensure that Defendant’s materials are protected. Rockstar merely requests that it be
able to show mock jurors presentations, summaries or documents derived from designated
materials.

Without the ability to show these derivative materials, it will be completely

impossible for Rockstar to conduct a mock trial.
Rockstar will also provide Defendant’s designated material with further protections such
as excluding any potential mock juror affiliated with a party or their direct competitor and
requiring that mock jurors agree in writing to be bound by confidentiality and not to disclose the
content or substance of any such derivative materials to any other person outside the mock trial
exercise. These extensive security measures are more than sufficient to protect Defendant’s
designated materials. Finally, Defendant has in the past agreed to a similar, yet even less
protective provision, which allowed for the use of actual confidential information in a mock trial
exercise. See PersonalWeb Technologies, LLC v. NEC Corp. of America, case 6:11-CV-00655,
Dkt 89, slip op. at 6 (E.D. Tex., Aug. 9, 2012) (allowing mock jurors to view confidential
information). Defendant cannot show why the even more protective provision suggested in this
case is insufficient to protect its designated material.

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