WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 205

AGREED PROTECTIVE ORDER. Signed by Judge Leonard Davis on 06/25/12. cc:attys 6-25-12(mll, )

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

WI–LAN INC.,
Plaintiff,
v.

CIVIL ACTION NO. 6:10–CV–521–LED

ALCATEL–LUCENT USA INC., et al.,

JURY TRIAL DEMANDED

Defendants.

STIPULATION FOR SUPPLEMENTAL PROTECTIVE ORDER BETWEEN WI-LAN,
INC., NON-PARTY QUALCOMM INC., SONY MOBILE COMMUNICATIONS AB
AND SONY MOBILE COMMUNICATIONS (USA) INC.
WHEREAS, Leonard Davis, United States District Judge, entered a Protective Order to
govern discovery in the above-referenced action (“this action”) on December 19, 2011
(“December 19, 2011 Protective Order”); and
WHEREAS, Plaintiff Wi-LAN, Inc. (“Wi-LAN”), wishes to review source code and
other documents action that include or incorporate confidential information belonging to
QUALCOMM Incorporated (“QUALCOMM”), including QUALCOMM confidential source
code incorporated into, modified or customized for the accused products of one or more
defendants in this action;
WHEREAS for which Wi-LAN, Sony Mobile Communications AB and Sony Mobile
Communications (USA) Inc. (collectively, “Sony Mobile”) and QUALCOMM have agreed to
additional provisions to protect against misuse or disclosure of such QUALCOMM Confidential
Information;

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Wi-LAN, Sony Mobile, and QUALCOMM, by the signatures of counsel below,
HEREBY STIPULATE AND AGREE that source code or documents that incorporate
QUALCOMM Confidential Information produced in connection with the above-captioned
matter that are designated as “QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” and
“QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY — SOURCE CODE” shall be
subject to the following restrictions:
A.

Definitions
1.

“QUALCOMM Material”: all information, documents, testimony, and things

produced, served, or otherwise provided in this action by any Party or by non-party
QUALCOMM, that include or incorporate QUALCOMM Confidential Information.
2.

“QUALCOMM

—

OUTSIDE

ATTORNEYS

EYES

ONLY”

material:

information, documents, and things that include or incorporate non-Party QUALCOMM’s
confidential information.
3.

“Wi-LAN” means plaintiff Wi-LAN, Inc., including all of its officers, directors,

and employees.
4.

“Personnel Retained by Wi-LAN in this Action” means any consultants, experts,

or outside counsel (including their support staff) that have been and continue to be retained by
Wi-LAN in this action. For the sake of clarity, any person who was retained by Wi-LAN in this
action will no longer fall under this definition if that person ceases to be retained by Wi-LAN in
this action.
5.

“Party” shall have the same meaning ascribed to it in the December 19, 2011.

6.

“Producing Party” and “Receiving Party” shall have the same meanings as

ascribed to those terms in the December 19, 2011 Protective Order, except that both definitions
as used herein shall also extend to “Designated QUALCOMM Material” as defined herein.

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7.

“Authorized

Reviewer(s)”

shall

mean

persons

authorized

to

review

“QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” and “QUALCOMM — OUTSIDE
ATTORNEYS EYES ONLY — SOURCE CODE” material in accordance with this Order and
the December 19, 2011 Protective Order.
8.

For purposes of this Order, “Source Code” includes human-readable

programming language text that defines software or firmware (collectively “software source
code”). Text files containing source code shall hereinafter be referred to as “source code files.”
Software source code files include, but are not limited to files containing source code in “C”,
“C++”, assembler, and digital signal processor (DSP) programming languages. Software source
code files further include “.include files,” “make” files, “link” files, and other human-readable
text files used in the generation and/or building of software directly executed on a
microprocessor, micro-controller, or DSP.
9.

“QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE

CODE” material: source code that the Producing Party believes in good faith includes or
incorporates Non-Party QUALCOMM’s confidential information that is not generally known to
others, and has significant competitive value such that unrestricted disclosure to others would
create a substantial risk of serious injury, and that Non-Party QUALCOMM would not normally
reveal to third parties except in confidence, or has undertaken with others to maintain in
confidence. This includes source code in the Producing Party’s possession, custody, or control,
and made available for inspection by the Producing Party.
10.

“Designated QUALCOMM Material”: material that is designated “QUALCOMM

— OUTSIDE ATTORNEYS’ EYES ONLY,” or “QUALCOMM — OUTSIDE ATTORNEYS’
EYES ONLY — SOURCE CODE” under this Order.

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11.

“Counsel of Record”: (i) outside counsel who appears on the pleadings, or have

entered an appearance in this action, as counsel for a Party, (ii) partners, principals, counsel,
associates, employees and contract attorneys of such outside counsel to whom it is reasonably
necessary to disclose the information for this litigation, including supporting personnel employed
by the attorneys, such as paralegals, legal translators, legal secretaries, legal clerks and shorthand
reporters, and/or (iii) independent legal translators retained to translate in connection with this
action, or independent shorthand reporters retained to record and transcribe testimony in
connection with this action.
12.

“Outside Consultant”: a person with specialized knowledge or experience in a

matter pertinent to the litigation who has been retained by Counsel of Record to serve as an
expert witness or a litigation consultant in this action (including any necessary support personnel
of such person to whom disclosure is reasonably necessary for this litigation), and who is not a
current employee of a Party or of a competitor of a Party and who, at the time of retention, is not
anticipated to become an employee of, or a non-litigation consultant of: 1) a Party, 2) a
competitor of a Party, or 3) a competitor of Non-Party QUALCOMM.
13.

“Professional Vendors”: persons or entities that provide litigation support services

(e.g., photocopying; videotaping; translating; designing and preparing exhibits, graphics, or
demonstrations; organizing, storing, retrieving data in any form or medium; etc.) and their
employees and subcontractors who have been retained by Counsel of Record in this action, and
who are not current employees of a Party or of a competitor of a Party and who, at the time of
retention, are not anticipated to become employees of: 1) a Party, 2) a competitor of a Party, or
3) a competitor of Non-Party QUALCOMM. This definition includes ESI vendors, and
professional jury or trial consultants retained in connection with this litigation to assist a Party,

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Counsel of Record, or any Outside Consultant in their work. Professional vendors do not include
consultants who fall within the definition of Outside Consultant.
B.

Relationship to December 19, 2011 Protective Order
14.

This Order shall not diminish any existing restriction with respect to Designated

QUALCOMM Material. Wi-LAN and Sony Mobile acknowledge and agree that this Order is a
supplement to the December 19, 2011 Protective Order entered in this action as ECF No. 145.
The December 19, 2011 Protective Order applies to all material designated pursuant to this
Order. To the extent that any provisions in this Order and the December 19, 2011 Protective
Order conflict or otherwise differ, the provisions providing the higher level of protection to
documents and information shall govern.
15.

In addition to the restrictions outlined in this Order, material designated as

“QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE” shall be
subject to obligations with respect to “CONFIDENTIAL — OUTSIDE COUNSEL
RESTRICTED — SOURCE CODE” materials outlined in the December 19, 2011 Protective
Order.
16.

In addition to the restrictions outlined in this Order, material designated as

“QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY” shall be subject to obligations
with respect to “CONFIDENTIAL — ATTORNEYS’ EYES ONLY” material outlined in the
December 19, 2011 Protective Order.
C.

Scope
17.

The protections conferred by this Order cover not only Designated QUALCOMM

Material (as defined above), but also any information copied or extracted therefrom, as well as
all copies, excerpts, summaries, or compilations thereof.

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18.

This Order shall not prevent a disclosure to which Non-Party QUALCOMM

consents in writing before that disclosure takes place.
19.

This Order shall apply to all QUALCOMM source code that is produced or

provided for inspection in this action, including all QUALCOMM source code that is in the
possession, custody or control of QUALCOMM or any Party in this action, or that is otherwise
relevant to this action.
D.

Access To Designated QUALCOMM Material
20.

Access to “QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” material

and “QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE” material:
Unless otherwise ordered by the Court or permitted in writing by Non-Party QUALCOMM,
WiLAN may disclose any information, document or thing designated “QUALCOMM —
OUTSIDE ATTORNEYS’ EYES ONLY” or “QUALCOMM — OUTSIDE ATTORNEYS’
EYES ONLY — SOURCE CODE” only to:
a.

Persons who appear on the face of Designated QUALCOMM Material as
an author, addressee or recipient thereof, or persons who have been
designated under FRCP 30(b)(6) to provide testimony of behalf of a
Producing Party or Qualcomm regarding the same;

b.

Counsel of Record;

c.

Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
acknowledgement form annexed to the December 19, 2011 Protective
Order as Exhibit A, the “Acknowledgement and Agreement To Be Bound
By Supplemental Protective Order” attached hereto as Exhibit A, and the
“Certification Of Consultant” attached hereto as Exhibit B;

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d.

Any designated arbitrator or mediator who is assigned to hear this matter
or who has been selected by the Parties, and his or her staff;

e.

Court reporters and videographers employed in connection with this case;
and

f.

Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the acknowledgement
form annexed to the December 19, 2011 Protective Order as Exhibit A,
and the “Acknowledgement and Agreement To Be Bound By
Supplemental Protective Order” attached hereto as Exhibit A.

21.

Absent a court order or agreement of the Producing Party, Designated

QUALCOMM Material may not be disclosed to employees of a Receiving Party, including its
in-house attorneys and support staff.
22.

The Parties acknowledge that Designated QUALCOMM Material also may be

subject to the US government export control and economic sanctions laws, including the Export
Administration Regulations (“EAR”, 15 CFR 730 et seq., http://www.bis.doc.gov/) administered
by the Department of Commerce, Bureau of Industry and Security, and the Foreign Asset
Control Regulations (31 CFR 500 et seq, http://www.treas.gov/offices/enforcement/ofac/)
administered by the Department of Treasury, Office of Foreign Assets Control (“OFAC”).
Receiving Parties may not directly or indirectly export, re-export, transfer or release
(collectively, “Export”) any Designated QUALCOMM Material to any destination, person,
entity or end use prohibited or restricted under US law without prior US government
authorization to the extent required by regulation. The US government maintains embargoes and
sanctions against the countries listed in Country Groups E:1/2 of the EAR (Supplement 1 to part

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740), currently Cuba, Iran, Libya, North Korea, North Sudan and Syria but any amendments to
these lists shall apply.
23.

Absent written permission from Non-Party QUALCOMM, persons not permitted

access to Designated QUALCOMM Material under the terms of this Supplemental Protective
Order shall not be present at depositions while Designated QUALCOMM Material is discussed
or otherwise disclosed. Pre-trial and trial proceedings shall be conducted in a manner, subject to
the supervision of the Court, to protect Designated QUALCOMM Material from disclosure to
persons not authorized to have access to such Designated QUALCOMM Material. Any Party
intending to disclose or discuss Designated QUALCOMM Material at pretrial or trial
proceedings must give advance notice to the Producing Party to assure the implementation of the
terms of this Supplemental Protective Order.
E.

Access By Outside Consultants
24.

Notice.

If a Receiving Party wishes to disclose Designated QUALCOMM

Material produced by another Party to any Outside Consultant, Receiving Party must, prior to the
Outside Consultant being granted access to any Designated QUALCOMM Material, provide
notice to counsel for Non-Party QUALCOMM, which notice shall include: (a) the individual’s
name and business title; (b) business address; (c) business or profession; (d) the individual’s CV;
(e) any previous or current relationship (personal or professional) with any of the parties; (f) a
list of other cases in which the individual has testified (at trial or deposition) within the last six
years; (g) a list of all companies with which the individual has consulted or by which the
individual has been employed within the last four years, the dates of the consultancy or
employment, a brief description of the subject matter of the consultancy or employment, and (1)
a copy of the acknowledgement form annexed to the December 19, 2011 Protective Order as
Exhibit A that has been signed by that Outside Consultant; and (2) copies of the

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“Acknowledgement and Agreement To Be Bound By Supplemental Protective Order” attached
as Exhibit A, and the “Certification Of Consultant” attached hereto as Exhibit B, that have both
been signed by that Outside Consultant. QUALCOMM shall have five business days to raise any
objections for good cause to those Outside Consultants, starting from the first business day
following the date upon which Receiving Party expressly notifies QUALCOMM of that expert,
whereby such express notification shall be provided to QUALCOMM directly by Receiving
Party.
25.

Notwithstanding the December 19, 2011 Protective Order, unless otherwise

ordered or agreed in writing by Producing Party, Designated QUALCOMM Material may not be
disclosed to mock jurors.
26.

Notwithstanding the December 19, 2011 Protective Order, unless otherwise

ordered or agreed in writing by Producing Party, Designated QUALCOMM Material may not be
disclosed to any in-house counsel for the Receiving Party, including in the 60 days prior to
mediations(s) and in the 60 days prior to trial.
27.

Objections. With respect to Outside Consultants that have not been previously

disclosed to Non-Party QUALCOMM, Non-Party QUALCOMM shall have five (5) business
days from receipt of the notice specified in Paragraph 24 to object for good cause in writing to
such disclosure (plus three (3) extra days if notice is given in any manner other than by hand
delivery, e-mail delivery or facsimile transmission). After the expiration of the 5-day (plus 3days, if appropriate) period, if no objection for good cause has been asserted by QUALCOMM,
then Designated QUALCOMM Material may be disclosed to the Outside Consultant pursuant to
the terms of this Supplemental Protective Order. Any objection by Non-Party QUALCOMM
must be made for good cause, and must set forth in detail the grounds on which it is based.

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Should Wi-LAN disagree with the basis for the objection(s), Wi-LAN must first attempt to
resolve the objection(s) informally with Non-Party QUALCOMM. If the informal efforts do not
resolve the dispute within five (5) business days from the date upon which Wi-LAN was first
notified of any objection for good cause by Non-Party QUALCOMM, Wi-LAN may file a
motion requesting that the objection(s) be quashed after that five (5) day period has passed.
NonParty Qualcomm shall have the burden of proof by a preponderance of the evidence on the
issue of the sufficiency of the objection(s). Pending a ruling by the Court upon any such
objection(s), or the subsequent resolution of the objection for good cause by Wi-LAN and NonParty QUALCOMM, the discovery material shall not be disclosed to the person objected to by
NonParty QUALCOMM.
F.

Production of QUALCOMM — ATTORNEYS’ EYES ONLY — SOURCE CODE
Material
28.

QUALCOMM source code:
a.

To the extent that a Producing Party makes “QUALCOMM — OUTSIDE
ATTORNEYS’ EYES ONLY — SOURCE CODE material available for
inspection, the Producing Party shall make such source code available
electronically and in text searchable form in a secure room at a secure
facility selected by the Producing Party. The Producing Party shall make
the source code available for inspection on a stand-alone, non-networked
personal computer running a reasonably current version of the Microsoft
Windows operating system (“Source Code Computer”). The Source Code
Computer shall be configured to permit review of the source code through
a password-protected account having read-only access. The Authorized
Reviewer(s) may use appropriate tool software on the Source Code

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Computer, which shall be installed by Producing Party, specifically
including Cygwin and Understand for C++. Should it be necessary, other
mutually agreed upon tools may be used. Licensed copies of other
mutually agreed upon tool software shall be installed on the Source Code
Computer by Non-Party QUALCOMM, and paid for by the Receiving
Party.
b.

The Source Code Computer shall be equipped to print copies of the source
code on watermarked pre-Bates numbered paper, which shall be provided
by the Producing Party. Under no circumstances are original printouts of
the source code to be made except for directly onto the watermarked and
numbered sides of the paper provided by the Producing Party.
Additionally, Authorized Reviewer(s) may not print any continuous block
of source code that results in more than 30 consecutive printed pages,
except that Authorized Reviewer(s) may request the printing of a
continuous block of more than 30 pages, which request shall not be
unreasonably denied by the Producing Party. Counsel for the Producing
Party will keep the original printouts, and shall provide copies of such
original printouts to counsel for the Receiving Party within three (3)
business days of (1) any request by Wi-LAN, or (2) otherwise being
notified that such original printouts have been made. Counsel of Record
for Wi-LAN may request up to 10 copies of each original printout of
source code. No more than 10% or 500 pages of the total source code (not
including copies of original printouts), whichever is greater, for any

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software release may be in printed form at any one time, and all printed
source code shall be logged by Wi-LAN’s Counsel of Record and/or other
Personnel Retained by Wi-LAN in this Action as noted in Paragraph
F.28.h below. If necessary, Wi-LAN may request to print additional pages
in excess of 10% of the total source code or 500 pages (whichever is
greater) of total source code for a software release, which request the
Producing Party shall not unreasonably deny. No additional electronic
copies of the source code shall be provided by the Producing Party. Hard
copies of the source code also may not be converted into an electronic
document, and may not be scanned using optical character recognition
(“OCR’) technology.
c.

Authorized Reviewer(s) in this Action shall not print source code which
has not been reviewed on the computer, or in order to review the source
code elsewhere in the first instance, i.e., as an alternative to reviewing that
source code electronically on the Source Code Computer, as Wi-LAN,
QUALCOMM, and SONY MOBILE acknowledge and agree that the
purpose of the protections herein would be frustrated by such actions.

d.

Authorized Reviewer(s) are prohibited from bringing outside electronic
devices, including but not limited to laptops, floppy drives, zip drives, or
other hardware into the secure room. Nor shall any cellular telephones,
personal digital assistants (PDAs), Blackberries, cameras, voice recorders,
Dictaphones, external or portable telephone jacks or other outside
electronic devices be permitted inside the secure room, except for medical

12

devices, implants, or equipment reasonably necessary for any legitimate
medical reason.
e.

If any Authorized Reviewer(s) seeks to take notes, all such notes will be
taken on bound (spiral or other type of permanently bound) notebooks. No
loose paper or other paper that can be used in a printer may be brought
into the secure room.

f.

Where absolutely necessary or required by the Court, Wi-LAN and the
Producing Party may make further copies of original source code printouts
in the form required to be included in pleadings filed under seal, to be
included as exhibits in expert reports, or to be used as exhibits in
depositions or at trial, where such pleadings, expert reports, and transcripts
from such depositions or trial are designated “QUALCOMM —
OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE”. In the
event copies of source code printouts are used as exhibits in a deposition,
the printouts shall not be provided to the court reporter, and the further
copies of the original source code printouts made for the deposition or trial
shall be destroyed at the conclusion of the deposition or trial.

g.

In addition to other reasonable steps to maintain the security and
confidentiality of Non-Party QUALCOMM’s source code, printed copies
of the source code maintained by the Authorized Reviewer(s) must be kept
in a locked storage container when not being actively reviewed or
otherwise being transferred as permitted by Paragraph G.2(e)(B) of the

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December 29, 2011 Protective Order and/or this Supplemental Protective
Order.
h.

Wi-LAN’s Counsel of Record shall keep a log that records the identity of
each individual beyond Counsel of Record to whom each hard copy of
each Reviewing Party’s source code was provided and when it was
provided to that person. Sony Mobile’s Counsel of Record may request in
writing (including email) Wi-LAN’s Counsel of Record to serve this log
relating to source code produced by Sony Mobile upon Sony Mobile’s
Counsel of Record at any time after the issuance of a final, non-appealable
decision resolving all issues in this case, and Wi-LAN’s Counsel of
Record must serve the log upon Sony Mobile’s Counsel of Record within
thirty (30) days of any such written request from Sony Mobile’s Counsel
of Record. Non-Party QUALCOMM or its outside counsel may request in
writing (including email) Wi-LAN’s Counsel of Record to serve this log
relating to source code produced by non-Party QUALCOMM upon
QUALCOMM or its outside counsel at any time after the issuance of a
final, non-appealable decision resolving all issues in this case, and WiLAN’s Counsel of Record must serve the log as requested within thirty
(30) days of any such written request from Sony Mobile’s Counsel of
Record. In addition, at any time after the issuance of a final, nonappealable decision resolving all issues in this case, Sony Mobile’s
Counsel of Record may also request any Outside Consultants of the
Authorized Reviewer(s) to whom the paper copies of the source code were

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provided to certify in writing that all copies of the source code were
returned to the counsel who provided them the information and that they
will make no use of the source code or of any knowledge gained from the
source code in any future endeavor, whereupon such certification shall be
provided to Sony Mobile’s Counsel of Record within thirty (30) days of
that request.
G.

Prosecution and Development Bar
29.

Unless otherwise permitted in writing between Producing Party and Receiving

Party, any individual who personally receives, other than on behalf of Producing Party, any
material designated “QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” or
“QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE” shall not
participate in amending or drafting patent specifications or claims before a Patent Office of any
patent or patent application substantially related to the particular technology or information
disclosed in the Designated QUALCOMM Material, from the time of receipt of such material
through the time the individual person(s) cease to have access to materials designated
“QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” or “QUALCOMM — OUTSIDE
ATTORNEYS’ EYES ONLY — SOURCE CODE,” as well as any materials that contain or
disclose Qualcomm Material so designated. This provision shall not apply to post-grant
adversarial proceedings, including reexamination or opposition proceedings filed in relation to
the patents-in-suit or foreign counterparts.
30.

Unless otherwise permitted in writing between Producing Party and Receiving

Party, any Outside Consultant retained on behalf of Receiving Party who is to be given access to
documents or source code designated as “QUALCOMM — OUTSIDE ATTORNEYS EYES
ONLY” or “QUALCOMM — OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE”

15

produced by another Party must agree in writing not to perform hardware or software
development work or product development work intended for commercial purposes substantially
related to the particular technology or information disclosed in the Designated QUALCOMM
Material from the time of first receipt of such material through the date the Outside Consultant
ceases to have access to any material designated “QUALCOMM — OUTSIDE ATTORNEYS
EYES ONLY” or “QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY — SOURCE
CODE,” as well as any materials that contain or disclose Qualcomm Material so designated.
H.

Protected Material Subpoenaed or Ordered Produced In Other Litigation
31.

If a Receiving Party is served with a subpoena or a court order that would compel

disclosure of any information, documents or things designated in this action as “QUALCOMM
— OUTSIDE ATTORNEYS EYES ONLY” or “QUALCOMM —OUTSIDE ATTORNEYS’
EYES ONLY — SOURCE CODE”, Receiving Party must endeavor to so notify the Producing
Party of such information, documents or things, in writing (by fax and email) promptly, and in
no event more than ten (10) calendar days after receiving the subpoena or order. Such
notification must include a copy of the subpoena or order. Receiving Party also must
immediately inform, in writing, the party who caused the subpoena or order to issue that some or
all of the material covered by the subpoena or order is subject to this Supplemental Protective
Order and the December 19, 2011 Protective Order. In addition, the Receiving Party must
provide a copy of this Supplemental Protective Order and the December 19, 2011 Protective
Order promptly to the party in the other action that caused the subpoena or order to issue. The
purpose of imposing these duties is to alert the interested parties to the existence of this
Supplemental Protective Order and the December 19, 2011 Order, and to afford the Party whose
Designated QUALCOMM Material in this case, is at issue in the other case, an opportunity to try
to protect its confidentiality interests in the court from which the subpoena or order issued.

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Producing Party shall bear the burdens and the expenses of seeking protection in that court of its
Designated QUALCOMM Material. Nothing in these provisions should be construed as
authorizing or encouraging any Authorized Reviewer(s) in this action to disobey a lawful
directive from another court.
I.

Unauthorized Disclosure Of Designated QUALCOMM Material
32.

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

Designated QUALCOMM Material to any person or in any circumstance not authorized under
this Order, the Receiving Party must immediately (a) notify in writing Producing Party of the
unauthorized disclosures, (b) use its best efforts to retrieve all copies of the Designated
QUALCOMM Material, (c) inform the person or persons to whom unauthorized disclosures
were made of all the terms of this Order, and (d) request such person or persons to execute the
acknowledgement form annexed to the December 19, 2011 Protective Order as Exhibit A, and
the “Acknowledgment and Agreement to Be Bound” that is attached hereto as Exhibit A.
Nothing in these provisions should be construed as limiting any Producing Party’s rights to seek
remedies for a violation of this Order.
J.

Duration
33.

Even after the termination of this action, the confidentiality obligations imposed

by this Order shall remain in effect for two (2) years following the termination of this action, or
until Non-Party QUALCOMM agrees otherwise in writing or a court order otherwise directs.
K.

Final Disposition
34.

Section M.4 of the December 19, 2011 Protective Order shall not apply to

Designated QUALCOMM Material. Unless otherwise ordered or agreed in writing by Producing
Party, within sixty (60) days of the termination of all of this action, whether through settlement
or final judgment (including any and all appeals therefrom), each Receiving Party, including

17

outside counsel for each Receiving Party, will destroy all Designated QUALCOMM Material
produced by any other Party in this action, as well as all work product, pleadings, motion papers,
legal memoranda, correspondence, trial transcripts and trial exhibits admitted into evidence
containing information from such Designated QUALCOMM Material (“derivations”) and all
copies thereof, with the exception of copies stored on back up tapes or other disaster recovery
media. Within sixty (60) days of the date of settlement or final judgment, each Receiving Party
shall serve Producing Party with a certification stating that it, including its outside counsel, has
complied with its obligations under this paragraph. With respect to any copy of Designated
QUALCOMM Material or derivation thereof that remains on back-up tapes and other disaster
storage media of an Authorized Reviewer(s), neither the Authorized Reviewer(s) nor its
consultants, experts, counsel or other party acting on its behalf shall make copies of any such
information available to any person for any purpose other than backup or disaster recovery
unless compelled by law and, in that event, only after thirty (30) days prior notice to Producing
Party or such shorter period as required by court order, subpoena, or applicable law.
L.

Effective Date
35.

Wi-LAN, Sony Mobile, and QUALCOMM agree that this Supplemental

Protective Order will be legally binding from the date upon which it is submitted to the Court for
entry, in the form that it is submitted to the Court. The parties acknowledge that this is a
reasonable measure to allow for the review of Sony Mobile’s Source Code to proceed
immediately, even if the Court has not yet formally entered this Supplemental Protective Order
at that time.

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So ORDERED and SIGNED this 25th day of June, 2012.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

19

EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY SUPPLEMENTAL
PROTECTIVE ORDER GOVERNING DISCOVERY FROM SONY MOBILE AND
NON-PARTY QUALCOMM IN THIS CASE
I, _________________________________________ [print or type full name], state: My
business address is _________________________________________________________;
1.

My present employer is _______________________________________________;

2.

My present occupation or job description is _______________________________;

3.

I have been informed of and have reviewed the Supplemental Protective Order Governing

Discovery From Non-Party QUALCOMM In This Case (“Supplemental Protective Order)
entered in this case, and understand and agree to abide by its terms. I agree to keep confidential
all information provided to me in the matter of Wi-LAN Inc. v. Alcatel-Lucent USA, Inc., et al.,
Civil Action No. 6:10-cv-521-LED in the United States District Court for the Eastern District of
Texas, Tyler Division, in accordance with the restrictions in the Supplemental Protective Order,
and to be subject to the authority of that Court in the event of any violation or dispute related to
this Supplemental Protective Order.
4.

I state under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct.

Executed On ___________________________.

[Printed Name]

[Signature]

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EXHIBIT B
CERTIFICATION OF CONSULTANT RE SUPPLEMENTAL PROTECTIVE ORDER
GOVERNING DISCOVERY FROM SONY MOBILE AND
NON-PARTY QUALCOMM IN THIS CASE
I,

_________________________________________

[print

or

type

full

name],

of

___________________________________ am not an employee of the Party who retained
me or of a competitor of any Party or Non-Party QUALCOMM and will not use any
information, documents, or things that are subject to the Supplemental Protective Order
Governing Discovery From Non-Party QUALCOMM In This Case in the matter of Wi-LAN Inc.
Alcatel-Lucent USA, Inc., et al., Civil Action No. 6:10-cv-521-LED (E.D. Tex.) for any purpose
other than this litigation. I agree not to perform hardware or software development work or
product development work intended for commercial purposes relating to the particular
technology or information disclosed in the Designated QUALCOMM Material, from the time of
receipt of such material through and including the first to occur of: (i) the date that I cease to
represent the Party who retained me; or (ii) the date that I cease to have access to any material
designated “QUALCOMM — OUTSIDE ATTORNEYS EYES ONLY” or “QUALCOMM —
OUTSIDE ATTORNEYS’ EYES ONLY — SOURCE CODE.”
I state under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct.

Executed On ___________________________.

[Printed Name]

[Signature]
508322 000010 DALLAS 2880067.1

US 1459469v.1

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