joint motion for entry of protective order
TRANSCRIPT
JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER - PAGE 1 Dallas 279637v1
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WI-LAN, INC. v. ACER, INC., et al. WI-LAN, INC. v. WESTELL TECHNOLOGIES, INC., et al.
§§§§§§§§§§§§§
CIVIL ACTION NO. 2:07-CV-473[TJW] CONSOLIDATED WITH: CIVIL ACTION NO. 2:07-CV-474[TJW]
JURY TRIAL REQUESTED
JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER
Plaintiff Wi-LAN, Inc. and Defendants jointly request that the Court enter a Stipulated
Protective Order in this case. The parties have spent considerable time discussing the provisions
of the attached order and have compromised and resolved all disputes but one, that is, Wi-LAN's
proposed "Employee Bar" provision, which concerns whether Defendants' in-house attorneys
may have access to Wi-LAN's documents relating to Wi-LAN's ongoing research and
development and its current and future business plans and strategies. Wi-LAN's proposed draft
of the Protective Order is attached as Exhibit A. Defendants' proposed draft of the Protective
Order is attached as Exhibit B. For the Court's convenience, a blacklined comparison of the two
versions is attached as Exhibit C. For the Court's consideration, the parties submit below the two
portions of the protective order where this one remaining issue arises, and have highlighted in
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bold the text that Wi-LAN seeks to retain, but that Defendants seek to delete.1 Following these
two portions are Wi-LAN's and Defendants' arguments in support of their respective positions.
7. "ATTORNEYS' EYES ONLY – SUBJECT TO EMPLOYEE BAR" OR "SUBJECT TO PROSECUTION BAR": these designations may be used only for ATTORNEYS' EYES ONLY information, documents, and things the Designating Party believes in good faith would create a substantial risk of serious injury if known to in-house attorneys or other employees of a Receiving Party, including, but not limited to, among the following categories of documents:
(a) a Designating Party's source code and other technical documents describing the structure and operation of the Designating Party's products;
(b) a Designating Party's research and development activities; and (c) a Designating party's business planning, development, and strategy
documents. These designations, however, shall not be used for a Designating Party's sales records regarding its products, license agreements or related communications with parties to the agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE BAR” designation shall not be used for any document created prior to January 1, 2006.
~ and ~
16. "ATTORNEYS' EYES ONLY" Material and "ATTORNEYS' EYES ONLY – SOURCE CODE" Material: Unless otherwise ordered by the Court or permitted in writing by the Designating Party, a Receiving Party may disclose any information, documents or things designated "ATTORNEYS' EYES ONLY" or "ATTORNEYS' EYES ONLY – SOURCE CODE" Material only to the following, in addition to those identified in Paragraphs 27-28 below regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author, addressee or recipient thereof;
(b) Counsel of Record;
(c) For "ATTORNEYS' EYES ONLY" material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house foreign patent attorneys) of each Receiving Party or their respective parent companies, and necessary secretarial staff, having responsibility for providing oversight of or assistance in the litigation, provided that each such attorney must
1 The parties have also highlighted surrounding text that would have to be modified should the Court agree with Defendants.
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keep all such documents and information in segregated files access to which is restricted to the designated attorney and necessary secretarial staff. The designated in-house attorneys will not have access to any information about any Defendant Producing Party's current or future products that are not accused of infringement in this case and further provided that Defendants' Receiving Party attorneys shall be allowed to review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no circumstances shall Defendants' in-house attorneys or employees be permitted access to or be allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant, unless so authorized by the Producing Party. Nothing in this section restricts designated in-house attorneys' access to information concerning their own companies' current or future products. The "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance in the litigation, who have signed the "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material. The substituted employees shall have the same duties and obligations of in-house counsel who are designated under this paragraph. Defendants Sony Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two (2) employees of their parent companies and their necessary secretarial staff having responsibility for providing oversight of or assistance in the litigation, who have signed the "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material. The substituted employees shall have the same duties and obligations of in-house counsel who are designated under this paragraph;
With respect to Designated Material from third parties or for which third party permission is required for production, absent a court order or agreement of the third party, such Designated Material may not be disclosed to employees of a Receiving Party;
This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE CODE," "ATTORNEYS' EYES ONLY – SUBJECT TO EMPLOYEE BAR" OR "SUBJECT TO PROSECUTION BAR."
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I. Wi-LAN's Argument in Support of Its Proposal
The parties have agreed to a Protective Order with an ATTORNEYS' EYES ONLY
designation that limits access to a party’s confidential documents to outside counsel and up to
three in-house counsel for Wi-LAN and for each of the nineteen defendants. See Exhibit A, ¶¶ 5,
16. In addition, as reflected in the above-quoted portions of the Protective Order, Wi-LAN has
also agreed to place certain further restrictions on its in-house counsel, preventing access to (i)
Defendants’ source code and other technical documents describing the structure and operation of
Defendants’ products, (ii) Defendants’ research and development activities, and (iii) Defendants’
business plans and strategies, including for its products and intellectual property. See, e.g., ¶¶ 7
(a), (b), and (c) (an "ATTORNEYS' EYES ONLY - PROSECUTION BAR" designation). Wi-
LAN agreed to these restrictions to facilitate entry of a protective order and to address
Defendants concern that such information could potentially be used (even inadvertently) to
further strengthen Wi-LAN’s intellectual property position with respect to Defendants. Wi-LAN
agreed to these additional restrictions, however, with the expectation that Defendants would
reciprocate by similarly limiting their in-house counsel’s access to Wi-LAN’s confidential
documents that could be used (even inadvertently) to strengthen Defendants’ intellectual
property position with respect to Wi-LAN, including its ability to defend against, settle, or
otherwise compete with Wi-LAN’s current and any future intellectual property claims.
The remaining dispute between the parties is thus focused on whether defendants' in-
house counsel should be permitted access to Wi-LAN's current and future research and
development activities and its current and future business plans and strategies, while Wi-LAN’s
in-house counsel are denied that same level of access to Defendants’ documents. What is good
for the goose, should be good for the gander. While Defendants may contend otherwise, the
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reality is that such information is as sensitive to Wi-LAN as it is to Defendants because it can be
used (even inadvertently) to enhance Defendants’ ability to defend against, settle, or otherwise
compete with Wi-LAN’s current and future intellectual property rights. Specifically, Wi-LAN
seeks the inclusion of a designation "ATTORNEYS' EYES ONLY - SUBJECT TO EMPLOYEE
BAR" in paragraphs 7 (a definitional section) and 16(c) to make it clear -- as it is for the
"ATTORNEYS' EYES ONLY - PROSECUTION BAR" designation (which applies only to Wi-
LAN’s in-house counsel and other employees) -- that each defendant’s three in-house attorneys
permitted to see Wi-LAN’s "ATTORNEYS' EYES ONLY" designated materials not be
permitted access to this particularly sensitive Wi-LAN information. Wi-LAN thus does not seek
an “absolute ban” on in-house counsel receiving documents, or the creation of a per se
distinction between in-house and outside counsel, as Defendants suggest below.2
Rather, Wi-LAN seeks a limited and reciprocal exception to protect access to its
documents that reflect its current and future research and development activities as well as its
current and future business plans and strategies. These narrowly defined Wi-LAN documents
are not relevant to the substance of the ongoing dispute and a limitation on access to these
documents by in-house attorneys would not prejudice Defendants' ability to prosecute this
litigation or engage in meaningful settlement discussions. Other than these documents,
Defendants' in-house counsel would have complete and unfettered access to Wi-LAN's
documents – and indisputably have access to everything they could possibly need to manage the
2 Defendants seek to distract the Court from the issue by quarrelling over whether it is appropriate to treat in-house and outside counsel differently. Defendants themselves have already agreed that such disparate treatment is appropriate in these circumstances. See, e.g., Exh. B, ¶7 (limiting definition of SUBJECT TO PROSECUTION BAR “to in-house attorneys or other employees of a Receiving Party”).
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litigation and make appropriate settlement determinations regarding the matters being litigated in
this suit.3
By contrast, as discussed above, the Protective Order already provides Defendants with
broader protections against access by Wi-LAN's in-house counsel than Wi-LAN seeks to impose
on defendants' in-house counsel. Because of the nature of its business, each of Wi-LAN's in-
house attorneys managing this litigation are arguably involved in some manner in the
prosecution of its patent applications. As such, while the literal words of the Protective Order
appear to permit access by Wi-LAN’s in-house counsel to defendants' ATTORNEYS' EYES
ONLY information (just like defendants), as Defendants well know (because of the nature of Wi-
LAN’s current business) the "ATTORNEYS' EYES ONLY – SUBJECT TO PROSECUTION
BAR" designation takes that access away, preventing access by Wi-LAN's in-house attorneys to
Defendants' documents relating to their research and development efforts, as well as their past,
present and future business plans and strategies, not just Defendants’ source code and other
documents describing the structure and operation of Defendants’ products.
Federal Rule of Civil Procedure 26(c) authorizes courts to protect parties from "undue
burden or expense" by ordering "that a trade secret or other confidential research, development,
or commercial information not be disclosed or be disclosed only in a designated way." See also
Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992) (affirming district
court's denial of access by in-house counsel to its adversary's information). In evaluating this
issue, courts apply a balancing test that weighs the risk of inadvertent disclosure (such as the
potential for irreparable harm to the disclosing party and the potential for inadvertent disclosure) 3 Wi-LAN does not understand how Defendants can claim, as they do, that this limitation could be used to prevent Defendants’ in-house attorneys from reviewing litigation briefs.
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against the risk of impairing the litigation by denying access to in-house counsel (including the
party's need for in-house access to the information). See id. at 1470-71. In addition to these
risks, courts evaluate whether the people receiving the information are involved in related
scientific research or in competitive decisionmaking4, the timing of the remedy and its scope.
See ST Sales Tech Holdings, LLC v. Daimler Chrysler Co., LLC., 2008 WL 5634214, *2 (E.D.
Tex. March 14, 2008) (citing U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 n.3 (Fed.
Cir.1984) and Infosint S .A. v. H. Lundbeck A.S., 2007 WL 1467784, at *3 (S.D.N.Y. 2007)).
Thus, while courts may not favor across-the-board restrictions on access by in-house counsel,
see, e.g., U.S. Steel, 730 F.2d at 1468, they evaluate the propriety of such per se restrictions to
certain information on a case-by-case basis within the context of the protections and distinctions
already negotiated by the parties to protect their competing interests. Id.
The fact that the parties in this case are not product competitors in the traditional sense
does not change the balancing test because the documents nonetheless reflect competitive
information. Indeed, the parties compete for the right to control use of the wireless technologies
at issue in this litigation. Thus, discovery of Wi-LAN’s business plans and strategies for
strengthening its intellectual protection in these areas or related areas through ongoing and future
research activities, and through the development and acquisition of additional intellectual
property rights, is information that indisputably could be used by defendants to undermine or
otherwise compete with these efforts by Wi-LAN. Indeed, in-house counsel responsible for 4 Although determining whether the in-house counsel is a competitive decisionmaker is one factor in denying access, see ST Sales, 2008 WL 5634214 *3 (“the oft-cited most critical factor weighing in favor of denial of access”) (emphasis added)), it is not the sole inquiry, id. at n.5, as Defendants would have this Court believe. Although the ST Sales court notes that plaintiff is “in the business of acquiring, licensing, and enforcing patents” (id. at *1), its analysis as to who can be a competitor, or whether the opposing party’s in-house counsel can be a competitive decisionmaker such that disclosure creates the potential for damaging use, does not turn on plaintiff’s business model.
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managing the defense and settlement of Wi-LAN’s intellectual property claims in this litigation
(because of the very nature of their role in the company and in this litigation) are in a competitive
decision making position vis a vis Wi-LAN and its intellectual property as it is their job to see
that the company is successful in competing with Wi-LAN regarding intellectual property rights.
In this district, Magistrate Judge Love explained that competition over intellectual property
rights is sufficient to make two parties competitors:
Moreover, it is somewhat disingenuous to argue Sales Tech is not Defendants' competitor simply because Sales Tech is in the business of acquiring and enforcing patents, while Defendants manufacture and design automobiles. Plaintiff and Defendants all seek to utilize, in one manner or another, intellectual property as part of a business model for pecuniary gain. The fact that Sales Tech is before the Court seeking to enforce its attained intellectual property, and has sued on similar patents against these same Defendants on the same systems many times before, indicates Sales Tech views Defendants as competitors for the rights to use the accused systems. To the extent Sales Tech and Defendants are not direct competitors in the traditional understanding of the term, competitor status is not the sole relevant inquiry, and it certainly is not determinative of the matter. See MGP Ingredients, Inc. v. Mars, Inc., 245 F.R.D. 497, 500-01 (D. Kan. 2007).
ST Sales, 2008 WL 5634214, *6.5
A. The Risks Resulting From Disclosure Are Too High in This Case
Wi-LAN is a pioneer in the design and development of wireless technologies and
products. In the early 1990s, its founders invented the basic technology that makes possible the
Wi-Fi and Wi-MAX capabilities in notebooks, routers, and handsets: wideband orthogonal
frequency division multiplexing ("wideband OFDM"). In exchange for disclosing its' inventions
to the public, Wi-LAN sought and was granted patent protection. Wi-LAN also introduced the
5 Regardless, parties need not be competitors for there to be a competitive decisionmaker who should be denied access. See, e.g., R.R. Donnelley & Sons Co. v. Quark, Inc., 2007 WL 61885, at *2 n. 2 (D. Del. 2007) (rejecting the notion that the parties must be "direct competitors" for the sensitive information to have value and access to be denied).
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first ever product incorporating this technology in the 1990s and a series of follow-on products
that popularized W-OFDM as the choice for all existing and future wireless data networks
(which it indisputably has now become). Wi-LAN also worked to obtain FCC permission for the
use of such technology in the United States, enabling the markets for Wi-Fi and Wi-Max markets
from which defendants now profit. (See Intel White Paper: WiMAX and Wi-Fi Together:
Synergies for Next-Generation Broadband, DI# 191-16 at 3-4: “The IEEE 802.11 and IEEE
802.16 standards are referred to as Wi-Fi and WiMAX, respectively…. The most widespread
Wi-Fi technology being shipped today is IEEE 802.11g, which is based on orthogonal frequency
division multiplexing (OFDM) …. Common underlying technologies of OFDM and MIMO
between WiMAX and Wi-Fi technologies enables the sharing of silicon blocks ….”)
In 2006, Wi-LAN focused its business on developing and licensing its patented
inventions and it maintains ongoing technology research and development activities. To date,
Wi-LAN has licensed 65 companies to use its patented wireless technologies for building Wi-Fi
and Wi-MAX products, including large brand-named companies such as Cisco, Fujitsu,
Matsushita, and Nokia. Because Defendants use, but have chosen not to pay to license Wi-
LAN's patented technologies, Wi-LAN reluctantly (after several years of licensing efforts) has
been forced to adopt a business strategy that includes litigation to protect its' property rights as
well as the on-going value of its existing licenses. As a result, Wi-LAN's on-going business
planning and strategy documents are focused on its intellectual property development,
acquisition, licensing, and litigation strategies, and its research and development activities.
These documents evaluate the legal, technical and financial issues between the various
companies from competitive perspectives. These documents reflect highly sensitive information
in the same way that a product manufacturer would have documents reflecting future product
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designs, customer plans and marketing strategies, and less restricted access to them will
undoubtedly help Defendants to better compete against Wi-LAN or its licensees.
Wi-LAN does not want these documents to find their way into the hands of its
competitors, so as not to educate its litigation opponents about its on-going and future
intellectual property business plans and its litigation strategy. Similarly, Wi-LAN does not want
documents reflecting its on-going research and development efforts to find their way into the
hands of the very same litigants who have demonstrated that they are willing to use Wi-LAN's
technology without proper compensation.
In this case, the parties desire to have their in-house counsel who are managing this
litigation see a much broader group of documents than those that would be available to them
under a standard ATTORNEYS' EYES ONLY designation. Thus, the parties have rejected a
single tiered protective order, in favor of multiple tiers, to protect against the risks from
disclosure of trade secrets and other highly confidential information – thus distinguishing this
case from MGP Ingredients v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007) (multi-tier protective
order designed to permit in house technical staff access to certain technical documents), and
Turic v. Yamah Motor Corp., 121 F.R.D. 32, 35 (S.D.N.Y. 1988) (concerning disclosure to
opposing party of documents generally).6 To protect against other risks from disclosure of
confidential information, Wi-LAN has agreed to certain general restrictions on its in-house
attorneys. However, Defendants refuse to address Wi-LAN’s concern that Defendants' own in-
house attorneys do not have reciprocal restrictions and may use, even if inadvertently,
6 Similarly, this case is even further afield from Defendant’s cited cases Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 n.16 (1981) (concerning speech between parties and potential class members); In Re Terra Int'l, Inc., 134 F.3d 302, 306 (5th Cir. 1998) (concerning prejudice from fact witnesses having access to disclosed information); and United States v. Exxon Corp., 94 F.R.D. 250, 251 (D.D.C. 1981) (concerning disclosure to the public).
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knowledge of Wi-LAN’s research activities and its intellectual property business planning and
strategies when advising their respective employers about continued litigation of this matter,
settlement,7 and ways to defend against/undermine Wi-LAN’s current and future intellectual
property claims. This is not a case where Wi-LAN is arguing that Defendants’ in-house lawyers
are more likely to breach the protective order than Defendants’ outside attorneys, as Defendants
suggest. Wi-LAN merely seeks to protect a narrowly-focused group of sensitive documents
using restrictions parallel to those Defendants have already argued should be applied to Wi-LAN
and for exactly the same reasons.
Given the nature of this case, Wi-LAN does not believe it is possible for Defendants’
attorneys to erect a wall within their own minds, such that they can use certain of Wi-LAN's
information while evaluating the merits of this action and advising management regarding
settlement, but not use Wi-LAN’s business plans and strategies regarding this litigation,
settlement, and growing and strengthening its research activities and intellectual property
licensing business to improve their settlement position or to defend against, undermine, or
otherwise compete against Wi-LAN’s current and future intellectual property claims (which is
the reason that Wi-LAN agreed to defendants' request to prevent the similar access to Wi-LAN's
in-house counsel of a much broader scope). Courts have approved such restrictions in exactly
these circumstances. See Brown Bag, 960 F2d at 1470; U.S. Steel Corp. v. United States, 730
F.2d 1465, 1467-68 (Fed. Cir. 1984) ("It is humanly impossible to control the inadvertent
disclosure of some of this information in any prolonged working relationship."). In a case
7 While Wi-LAN favors access to documents that aid in realistic appraisals of the case or that better inform settlements, see infra at 22, such access should not include a party’s own strategy, appraisals, or plans for settlement. If it did, such access would most appropriately be reciprocal.
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involving one of the defendants in this case, the court found that if Intel’s in-house counsel
obtained confidential information, she would be in the impossible position of having to refuse
her employer legal advice so that she did not risk improperly or indirectly revealing the
defendant's trade secrets. Intel Corp. v. Via Technologies, Inc., 198 F.R.D. 525, 531 (N.D. Cal.
2000) ("good intentions are insufficient to prevent inadvertent disclosure of confidential
information because it is not possible for counsel to 'lock-up trade secrets in [her] mind,' as the
Court in Brown Bag, observed"). Thus, although not the only factor weighed by the courts,
where in-house counsel is involved in "competitive decisionmaking" the risk of disclosure may
outweigh the need for confidential information. See Brown Bag, 960 F.2d at 1470; U.S. Steel,
730 F.2d at 1468; and Intel, 198 F.R.D. at 529.
Because Wi-LAN is in the business of developing and enforcing its intellectual property
rights, and does not currently manufacture competing products offered for sale, in this particular
case Defendants' in-house lawyers are more directly a part of their companies' competitive
decisionmaking process than they would be in the typical litigation, such as Intel v. Via, and
those referenced by Defendants in Exhibits D and E. Here, Defendants must rely more heavily
on the litigation advice and understanding of their in-house litigation counsel in making
competitive decisions regarding the continued use of Wi-LAN’s intellectual property or how to
minimize the risk of future claims by Wi-LAN, because they better – and perhaps uniquely
within their companies – understand the legal and financial considerations and motivations
underlying Wi-LAN's particular decisionmaking. Should Defendants' in-house attorneys have an
understanding of Wi-LAN's current internal patent litigation, licensing, and settlement strategies
from Wi-LAN's own recent documents, it will be impossible for these in-house attorneys to
avoid even inadvertent disclosure of such confidential information in developing their own
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business plans and strategies, which are focused on defending against, undermining, and
otherwise competing against Wi-LAN’s claims. The circumstances of this case thus warrant
broader protections than Intel v. Via, which involved product competitors, where the Northern
District of California denied Intel's in-house counsel access to certain of VIA's documents as
follows:
In her declaration, Ms. Fu states that in her role as Senior Counsel in the Intel litigation group, she manages "intellectual property litigation as well as other general commercial litigation and legal disputes." Her involvement in intellectual property licensing is limited to "the extent that it resolves litigation or a legal dispute." At the evidentiary hearing, however, it became evident that Ms. Fu is involved in types of decisionmaking that create an unacceptable risk of disclosure.
Ms. Fu's involvement in licensing through litigation constitutes competitive decisionmaking, because her advice and counsel necessarily affect licensing decisions. Ms. Fu testified that as Senior Counsel she is actively involved in negotiating the terms of licensing agreements as part of settling lawsuits. Ms. Fu estimates that two-thirds of intellectual property suits brought by Intel settle with licensing agreements as part of the settlement. In evaluating these agreements, Ms. Fu testified she evaluates the strength of the patent, Intel's products implicated by the patent, and competitors' products implicated by the patent. Ms. Fu further also testified that licensing agreements reached as part of settlements directly affected Intel's competitiveness in the market by affecting Intel's ability to sell products.
These activities would put Ms. Fu in the untenable position of having either to refuse to offer crucial legal advice at times or risk disclosing protected information. See Brown Bag, 960 F.2d at 1472…. Confidential information in this case may provide Intel a competitive advantage in negotiating related licenses in the future.
Intel, 198 F.R.D. at 530-31 (internal declaration citations omitted).
Here, as in Intel, "even a seemingly insignificant risk of disclosure cannot be ignored due
to the threat of significant potential injury," namely the injury arising from Defendants' ability to
interfere with Wi-LAN’s business plans and strategies intended to further strengthen its current
and future intellectual property position with respect to defendants, and thereby gain a
competitive advantage in the marketplace and the litigation. See Intel, 198 F.R.D. at 531. Such
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harm would be irreparable, as it would be impossible for the in-house attorney to unlearn the
knowledge before it is used (especially where it is used inadvertently), and it would be
impossible to restore the market or the litigation to the condition that existed prior to improper
use of the confidential information.
B. There Is No Need For Defendants’ In-House Counsel to Have Access to This Information
In contrast to these substantial risks, Defendants cannot establish a need for their in-house
counsel to access these documents. In assessing a party's need for access to a document by its in-
house attorney, courts evaluate whether protecting the document actually prejudices presentation
of the party's case, not whether it merely makes managing the litigation more difficult. See Intel,
198 F.R.D. at 528, 529 (quoting A. Hirsh Inc., 657 F. Supp. at 1305 ("in view of retained
counsel's competence, it is not clear how plaintiff’s position will be prejudiced by excluding [in-
house] counsel from access")); see also Brown Bag, 960 F.2d at 1471 (holding party's contention
that in-house counsel needed access to information to manage the case was not sufficient to
overcome the risk of inadvertent disclosure). Here, Defendants are all well represented by
competent outside counsel, thus it is difficult to see how Defendants will be prejudiced. See ST
Sales Tech Holdings, LLC v. Daimler Chrysler Co., LLC, 2008 WL 5634214, *8 (E.D. Tex.
2008). This is not an instance where outside counsel cannot handle the specialized technical
nature of the case, see, e.g., MGP Ingredients v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007)
(rejecting two tier protective order to permit in house technical staff to evaluate technology);
Carpenter Technology Corp. v. Armco, Inc., 132 F.R.D. 24, 28 (E.D. Pa. 1990), where outside
counsel lack experience, see, e.g., Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187
F.R.D. 240, 242-43 (E.D. Va. 1999), or where counsel have changed late in the litigation, see,
e.g., U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). In fact, the Brown
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Bag court specifically rejected a party's contention that its in-house attorney needed access to
confidential information in part because its outside counsel had withdrawn from the litigation.
Brown Bag, 960 F.2d at 1471 (the protective order provided access to these documents through
an "independent consultant, legal or otherwise").
Providing the reciprocal restriction that Wi-LAN seeks is unlikely to hinder efficient and
effective representation of the Defendants. By the terms of paragraph 7 of the Protective Order,
the employee bar would be limited such that it "shall not be used for a Designating Party's sales
records regarding its products, license agreements or related communications with parties to the
agreements." 8 See Exhibit A, ¶ 7. Thus, the provision is not unduly broad. Further, the parties
have also agreed that Wi-LAN would not use this designation for documents prior to 2006,
thereby not withholding access by Defendants' in-house counsel to Wi-LAN's materials from
time periods relevant to the substantive issues in this litigation.
It is difficult to see how Wi-LAN's on-going research and development documents or its
recent business and strategy related documents (from 2006 to present) are relevant to the subject
matter of the present litigation, let alone are so material that Defendants' in-house counsel need
to see these documents to present their case effectively.9 Defendants have not articulated any
reason why its in-house counsel need access to these documents – other than to insinuate that
Wi-LAN could potentially use the Protective Order to wall-off in-house counsel from litigation 8 This language would provide Defendants' in-house counsel with external communications and license agreements between Wi-LAN and other companies, but it would not provide them with access to Wi-LAN's own internal business planning and strategy documents related to licensing and settlement efforts, which could be used to alter -- in Defendants' favor -- the very same strategic circumstances they were intended to help Wi-LAN navigate.
9 Certainly even with this additional designation Defendants' in-house counsel will have access to a broader range of documents than will Wi-LAN's in-house counsel due to the "ATTORNEYS' EYES ONLY – SUBJECT TO PROSECUTION BAR" designation.
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briefs. In contrast and as described above, the risk of improper use of this limited category of
confidential and highly sensitive information, even if inadvertent, strongly weighs in favor of
providing a provision in the Protective Order to limit such risk.
C. Conclusion
For the foregoing reasons, Wi-LAN respectfully request that the Court enter its version of
the proposed Protective Order attached as Exhibit A, and deny Defendants’ request for the Court
to enter Defendants’ "Employee Bar" provision presented in their version of the Protective Order
attached as Exhibit B.
II. Defendants' Argument in Support of Defendants' Proposal
Defendants respectfully request that the Court enter Defendants' version of the proposed
Protective Order attached as Exhibit B, and deny Wi-LAN's request for entry of its version of the
Protective Order with its proposed "Employee Bar" provision.
The parties negotiated the terms of the proposed Protective Order for over a year without
Wi-LAN even once raising its "Employee Bar" provision, or, for that matter, any concerns over
the documents it now contends must be withheld from defendants' in-house counsel. Now, with
all other terms agreed upon, Wi-LAN inserts an "Employee Bar" restriction, arguing that in-
house access to non-privileged documents concerning its core business, patent acquisition and
licensing, would interfere with Wi-LAN's efforts to license Defendants in this lawsuit and
potential future enforcement activities. But such a "per se" restriction on all in-house counsel
would jeopardize in-house counsel's ability to effectively manage this litigation, an ability that
the Federal Circuit explicitly preserved in U.S. Steel Corp. v. United States by prohibiting such
per se bans on in-house counsel's access to sensitive information exchanged in litigation. U.S.
Steel Corp. v. United States, 730 F.2d 1465, 1469 (Fed. Cir. 1984). Rather, U.S. Steel requires
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courts to examine the specific duties of particular counsel sought to be excluded by looking
specifically at "the factual circumstances surrounding each individual counsel's activities,
association, and relationship with a party" and placing the burden on the disclosing party to
demonstrate that individual counsel could not be entrusted with confidential material. See id.; ST
Sales Tech v. Daimler Chrysler Co., 2008 WL 564214 at *2 (E.D. Tex.) (quoting U.S. Steel at
1468 n.3). The issue is not solely whether the materials to be disclosed are sensitive, but rather
whether the recipient's particular role at the company creates a risk of inadvertent disclosure.
Wi-LAN focuses on the former, without any analysis of defendants' in-house counsel or their
respective responsibilities.
Instead of the particularized analysis required under U.S. Steel, Wi-LAN attempts to
globally cast Defendants' in-house counsel as "competitors" because information concerning Wi-
LAN's licensing practices would permit Defendants to "enhance Defendants' ability to defend
against, settle, or otherwise compete with Wi-LAN's current and future intellectual property
rights."10 Supra at 5. But defending against patent infringement claims and participating in
settlement discussions alone does not justify barring in-house counsel from access. Wi-LAN's
broad-brush proposal would exclude defendants' in-house counsel whose job responsibilities are
limited to pure litigation management roles within their respective companies, a category of
attorneys to which courts routinely grant access to confidential information, even with respect to
direct, head-to-head competitors in the marketplace. In fact, at least one such in-house attorney
in this litigation has already been deemed by two courts, including this one, not to be a
10 Although Wi-LAN broadly surmises that defendants' in-house counsel will likely disclose information that will enable defendants to compete against it, Wi-LAN fails to set forth particular facts demonstrating a likelihood of inadvertent disclosure or provide examples of "competitive" situations where disclosures might occur beyond defending or settling litigation.
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"competitive decision-maker" under particularized and detailed U.S. Steel analyses. As Wi-LAN
would have it, Defendants' in-house counsel who have been permitted access to competitor
documents by two federal courts would be unable to access information from Wi-LAN, a patent
development and enforcement entity with no products business. Wi-LAN nonetheless goes so
far as to argue that its posture as a non-practicing patent plaintiff "warrant[s] broader
protections" than in cases where the parties are direct competitors. Supra at 13. Yet, Wi-LAN is
unable to explain how in-house counsel pose any greater risk of injury than outside counsel, who
also participate in the defense and settlement activities, as well as patent licensing. Wi-LAN's
hypothetical injury is unsupported by any precedent whatsoever, and cannot support Wi-LAN's
request for heightened protection to its information that even head-to-head competitors of
Defendants would be unable to attain. Infosint S.A., v. Lundbeck¸ 2007 WL 1467784, *2
(S.D.N.Y.) ("More than broad allegations of harm unsubstantiated by specific examples or
articulated reasoning, good cause requires the moving party [to] demonstrate that disclosure will
work a clearly defined and very serious injury.") (internal quotations and citations omitted).
Contrary to Wi-LAN's assertions, Wi-LAN's "Employee Bar" restriction will
unnecessarily impede Defendants' in-house counsel from meaningfully participating in and
managing this case. By its own admission, Wi-LAN seeks to restrict access to documents which
would enhance the ability of defendants' in-house counsel to defend and settle this action. Supra
at 5. However, these are precisely the documents that should be provided to in-house counsel,
who, with their unique, specialized knowledge concerning the interworkings of their companies
in relation to the pending litigation are best apt to evaluate the issues and fulfill their function as
litigation managers.
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Wi-LAN attempts to justify its "Employee Bar" by arguing for reciprocity in view of the
"Prosecution Bar" provision agreed to by the parties which precludes Wi-LAN's in-house
counsel involved in patent prosecution from having access to Defendants' confidential
documents concerning their products. However, as Wi-LAN recognized in agreeing that the
"Prosecution Bar" should only apply to Wi-LAN and not Defendants, there is no reciprocal risk
of injury to Wi-LAN, as Wi-LAN does not make or sell products. The fact that the "Prosecution
Bar" only applies one-way in this case merely reflects Wi-LAN's status as a pure patent licensing
company, and does not itself justify Wi-LAN's separate "Employee Bar" restriction.
At bottom, Wi-LAN does not provide the required analysis for the broad "Employee Bar"
restriction it seeks to impose. In fact, the parties negotiated the terms of this protective order for
over a year without Wi-LAN even mentioning such a provision. During that period, Wi-LAN
agreed that the prosecution bar provision should only apply to Wi-LAN, acknowledging that
there are unique disclosure risks associated with Wi-LAN's status as a patent licensing company.
Wi-LAN's late attempt to change the protective order without providing the necessary case-
specific analysis should not be adopted.
A. Wi-LAN's Per Se Ban On In-House Counsel Without Regard To The Specific Facts Concerning Each Party Is Improper
In seeking to restrict the use and/or disclosure of information in this matter, Wi-LAN
bears the burden of demonstrating that good cause exists for its proposed "Employee Bar"
restriction. See, e.g., In Re Terra Int'l, Inc., 134 F.3d 302, 306 (5th Cir. 1998); MGP Ingredients
v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007) ("It is well settled that defendants have the burden
of proving the competitive harm that would befall them by virtue of plaintiff's disclosure to in-
house personnel and outside consultants.") (citations omitted). The party seeking to restrict
disclosure is required to make "a particular and specific demonstration of fact, as distinguished
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from stereotyped and conclusory statements." Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 (1981)
n.16; see also Turic v. Yamah Motor Corp., 121 F.R.D. 32, 35 (S.D.N.Y. 1988) (movant must
demonstrate a "clearly defined and very serious injury"); United States v. Exxon Corp., 94 F.R.D.
250, 251 (D.D.C. 1981)("To establish cause under Rule 26(c) the courts have generally required
a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory
statements."(quoting 8 Wright & Miller, Federal Practice and Procedure § 2035 at 265 (1970))).
The "particular and specific demonstration of fact" required must include a case-by-case
factual analysis of the "circumstances surrounding each counsel's actual activity and relationship
with the party represented, without regard to whether a particular counsel is in-house or
retained." US Steel, 730 F.2d at 1468-69 (denial of in-house counsel access to another party's
sensitive information "cannot rest on a general assumption that one group of lawyers are more
likely or less likely inadvertently to breach their duty under a protective order."); see also
Infosint, 2007 WL 1467784 at *3 ("When conducing an inquiry, courts have adopted a case-by-
case analysis, rather than a category-based exclusion policy.").11
Here, Wi-LAN broadly concludes that each in-house counsel managing this litigation
from twenty Defendants are "competitive decision makers" without offering specific analysis
tailored to a particular person or position. Without qualification, Wi-LAN's proposed "Employee
Bar" applies to "in-house attorneys or other employees of a Receiving party" across all
Defendants, improperly denying access to all in-house counsel, even those whose job duties 11 In U.S. Steel, the Federal Circuit reversed a lower court's denial of access to confidential documents for in-house counsel because the lower court had assumed that in-house counsel was more likely to inadvertently disclose confidential information. The Federal Circuit held that denial or grant of access, "cannot rest on a general assumption that one group of lawyers are more likely or less likely inadvertently to breach their duty under a protective order." Id. at 1469. Instead, courts "must" grant or deny access depending on the "circumstances surrounding each counsel's actual activity and relationship with the party represented, without regard to whether a particular counsel is in-house or retained." Id. at 1468-69.
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entail serving in a pure litigation advisory capacity. See R.R. Donnelly & Sons Company v.
Quark, Inc., 2007 WL 61885 (D. Del.) at *1 ("A party's designation as 'in-house counsel' cannot
serve to automatically deny that party access to information deemed confidential."). Such a
categorical restriction violates U.S. Steel and sidesteps the required factual analysis of the
particular roles of in-house counsel and their relationships to the parties. See, e.g., Brown Bag
Software v. Symantec Corp., 960 F.2d 1465, 1471 (9th Cir. 1992) ("examining factually all the
risks and safeguards surrounding inadvertent disclosure by any counsel, whether in-house or
retained" and affirming the magistrate's investigation into "counsel's responsibilities as Brown
Bag's sole legal advisor and personnel manager"); R.R. Donnelley & Sons Co. v. Quark, Inc.,
2007 WL 61885 (D. Del. 2007) (inquiring into Chief Patent Counsel's role in "legal decision
making" and whether such counsel would "report directly to any business person with direct
responsibility for competitive decision-making."); see also Intel Corp v. VIA Technologies, Inc.,
198 F.R.D. 525, 529-531 (N.D. Cal. 2000); ST Sales Tech v. Daimler Chrysler Co., 2008 WL
5634214, at *3-*8 (E.D. Tex. 2008).
B. Wi-LAN Fails To Establish Good Cause For Its Proposed "Employee Bar" Provision
1. Wi-LAN Has Not Established That Defendants' In-House Counsel Are Competitive Decision-Makers
Wi-LAN admits that its Employee Bar would achieve "broader protections" than parties
would otherwise have in "the typical litigation" involving head-to-head competitors, (supra at
19), but Wi-LAN fails to meet its burden to demonstrate that any of defendants' in-house counsel
are in fact competitive decision-makers so as to merit such abnormal protection. See, e.g., US
Steel, 730 F.2d at 1468-69. Wi-LAN merely argues that Defendants' in-house council "are in a
competitive decision making position vis a vis Wi-LAN and its intellectual property" (supra at
8), and that somehow because Wi-LAN is a non-practicing entity, "Defendants' in-house lawyers
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are more directly a part of their companies' competitive decision making process" than in normal
patent cases. Supra at 12. But Wi-LAN's conclusory assumption is not supported by any hard
facts, but rather the proposition is that in-house counsel are "competitive" in the sense that they
may be involved in managing and settling this case. Supra at 12-13. If Wi-LAN's unsupported
argument were accepted, virtually any party could argue that in-house (or outside counsel for
that matter) should be barred access to its confidential information because it could be used in a
settlement discussion. Nonetheless, courts commonly allow in-house access to sensitive
business strategy information, despite the fact that such cases may of course at some point settle.
See, e.g. Intervet, Inc. v. Merial Ltd., 241 F.R.D. 55, 55-59 (D.D.C. 2007) ("there is simply no
evidence before me that [the head of intellectual property for the competitor] is a competitive
decision-maker"); Glaxo Inc. v. Genpharm Pharm., Inc., 796 F.Supp. 872, 876 (E.D. N.C. 1992)
(it was improper to preclude in-house counsel from access to confidential information because he
gave no advice to his client about competitive decisions such as pricing, scientific research,
sales, or marketing); Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187 F.R.D. 240, 243-
44 (E.D. Va. 1999) (it was in-house counsel's responsibility to supervise outside counsel in
handling the litigation and she should be granted access to adversary's confidential information
under protective order because she needed the access to effectively supervise outside counsel).
In fact, one purpose of discovery is to encourage settlement. See, e.g., 3Com Corp. v. D-Link
Systems, Inc., 2007 WL 949596 at *4, (N.D. Cal.) ("[D]iscovery of a defendant's financial
situation may facilitate settlement of the action, which is one of the purposes behind the broad
federal discovery rules."); Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 286 (C.D. Cal.
1998) (discovery "is valuable in assisting both sides in making a realistic appraisal of the case,
and may lead to settlement and avoid protracted litigation"); Memry Corp. v. Kentucky Oil
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Technology, N.V., 2007 WL 39373 at *5 (N.D. Cal.) (efficient discovery is "needed in most
cases to prepare for trial or make an informed decision about settlement").
Wi-LAN's proposal would also conflict with a prior opinion in this District, in which the
Court permitted one of defendants' in-house counsel (in the present case) access to confidential
information. The court reached this conclusion even though it found the opposing party was a
direct competitor and the in-house counsel testified that as part of her job "she gave [an Intel
business manager] information that would enable him to determine whether the company should
settle the case." Ex. D Broadcom Corp., Order at 5. Similarly, another court allowed the same
Intel counsel access to confidential documents even though she was the "key [plaintiff] decision
maker for this litigation," and permitted her to share "as needed, the contents of confidential
documents" with her superiors. Ex. E, Level One Communications, Inc., Order at 3.
Wi-LAN quotes heavily from Intel Corp v. VIA Technologies for its argument that any
in-house access to Wi-LAN's business strategies will make it "impossible for [Defendants'] in-
house attorneys to avoid even inadvertent disclosure of Wi-LAN's confidential information."
Supra at 12. But Wi-LAN misinterprets that case. In VIA, the defendant (VIA) was Intel's direct
products competitor and, indeed, the "only unlicensed competitor of Intel for chipsets." Id. at
531. As a result, Intel's in-house counsel's work in the area evaluating patents and products and
advising the company on licensing agreements could further Intel's ability to compete against
VIA in the products markets, since VIA was also subject to licensing activities as a products
company.12 Id.
12 Additionally, in the VIA case, unlike here, the party seeking access to confidential documents sought to modify an existing protective order, and thus had the burden to justify access. By contrast, here, Wi-LAN bears the burden of establishing good cause for its proposed "Employee Bar" restriction. In Re Terra Int'l, Inc., 134 F.3d at 306.
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2. Wi-LAN Has Not Set Forth a Clearly-Defined Likelihood of Disclosure and Injury
Wi-LAN states that in-house counsel access to its information "will undoubtedly help
Defendants to better compete against Wi-LAN or its licensees." Supra at 10. Wi-LAN provides
no details on how it believes defendants would accomplish this, let alone why in-house counsel
for defendants are likely to inadvertently disclose such information, and thus Wi-LAN does not
meet the requirement of "a particular and specific demonstration of fact, as distinguished from
stereotyped and conclusory statements." Gulf Oil Co., 452 U.S. at 102 n.16; see also Infosint
S.A., v. Lundbeck, 2007 WL 1467784 (S.D.N.Y) at *2 ("More than broad allegations of harm
unsubstantiated by specific examples or articulated reasoning, good cause requires the moving
party to demonstrate that disclosure will work a clearly defined and very serious injury." (citing
Uniroyal Chem. Co. v. Syngenta Crop Prot., 224 F.R.D. 53, 56 (D. Conn. 2004)); MGP
Ingredients, 245 F.R.D. at 501 ("[D]efendants made categorical arguments that they would be
harmed by the disclosure but they really did not discuss in any meaningful detail how they would
suffer the nature or degree of harm that would warrant forcing on plaintiff the far more
cumbersome discovery process that they propose.").
To the contrary, there is little risk of any injury to Wi-LAN for several reasons. First, as
Wi-LAN's Senior Director for Wireless Technologies, Christian Dubuc, testified during
deposition, Wi-LAN offers no devices of any kind. Dubuc Deposition Tr. 119:8-10. With
respect to ongoing design efforts, Mr. Dubuc testified that Wi-LAN's only effort is in the "white
space field," which, as opposed to the accused products in this case, "relates to air waves which
have been made available from the t.v. broadcast channels." Id. at 119:17-120:7. With respect to
the technologies that are at issue in this litigation, Mr. Dubuc testified that Wi-LAN is not
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involved in any technology development whatsoever. Id. at 120:22- 121:1 ("Q. Are you
developing any Wi-Fi, WiMAX, or Bluetooth prototypes? A. No").
Second, the parties have agreed that in-house counsel must execute an undertaking that
requires them to abide by the terms of the protective order. See Ex. B, Proposed Protective
Order at Ex. B. The parties further crafted a specific "use" provision prohibiting counsel from
using confidential information for purposes beyond the litigation, including "patent licensing."
Id. at p. 30 § T. In-house counsel are members of the court, and are frequently entrusted to abide
by the terms of protective orders or face heavy consequences under the ethical rules. ST Sales
Tech, 2008 WL 5634214 (E.D. Tex.) at *2.
Third, Wi-LAN has not demonstrated that any particular in-house counsel for defendants
engage in activities that would pose a competitive threat to Wi-LAN. Rather, Courts typically
allow in-house access. Glaxo Inc. v. Genpharm Pharmaceuticals, Inc, 796 F. Supp. 872, 874
(E.D. N.C. 1992) (allowing in-house counsel access to competitor's confidential information
when in-house counsel had "no involvement in and gives no advice to [company] about
competitive decisions such as pricing, scientific research, sales or marketing"); R.R. Donnelley &
Sons Co., 2007 WL 61885 at *1-*2 (D. Del.) (allowing Chief Patent Counsel access to
"attorneys' eyes only" documents when Chief Patent Counsel's role was strictly to "supervise the
legal decision-making related to . . . intellectual property portfolio and its enforcement" and
where Counsel's position does not "report directly to any business person with direct
responsibility for competitive decision-making").
In applying these principles, a court in this District previously held that in-house counsel
for Intel in this case did not engage in "competitive decisionmaking." Ex. D, Broadcom Corp. at
5-6 (Craven, J.) ("She is not a board member or office of the company, and she does not give
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business advice. Instead, she is a litigation attorney who advises and participates in issues
regarding litigation. In the Court's opinion, this does not rise to the level necessary to satisfy the
test and definition of 'competitive decisionmaking' outlined above."). In Broadcom, Intel's in-
house counsel would have had access to some of the same types of non-privileged Broadcom
information to which Wi-LAN seeks to restrict access to here. Id. Wi-LAN provides no
justification for why its risk of injury should ban Intel's in-house counsel from access to Wi-LAN
documents whereas Broadcom – a product supplier – was not entitled to similar protection.13
Contrary to Wi-LAN's assertions, ST Sales Tech, 2008 WL 5634214, does not support
Wi-LAN's position. In ST Sales Tech, the plaintiff was a non-practicing entity associated with
other patent-holding companies with a history of suing the defendants for patent infringement
"over and over as they acquire new patents." Id. at *5. Because plaintiff was in the business of
"acquiring and enforcing patents," the Court was concerned about the "ultimate potential for
damaging use of the [defendant's] confidential information" by using defendants' confidential
product information to develop or acquire intellectual property and use it against the defendants
"through continued litigation." Id. at *7. Thus, the focus in ST Sales Tech was on the plaintiff-
licensing company's use of defendants' confidential information to acquire new patents to assert
against defendants. In stating that "competitor status is not the sole relevant inquiry" under the
13 Wi-LAN asserts that it is unfair for defendants' in-house counsel to have access to Wi-LAN confidential information given that it has agreed to not access certain of defendants' confidential information under the "Prosecution Bar." Supra at 4. But Wi-LAN's complaint is unpersuasive. In instances such as this where the plaintiff in a patent case is involved in developing and/or enforcing patents that are related to the defendant's business, federal courts routinely unilaterally limit the plaintiff's access to the defendant's technical trade secrets. See e.g., Northbrook Digital, LLC v. Vendio Services, Inc., No. 07-CV-2250, 2008 WL 2390737 (D. Minn. Jun. 9, 2008); Motorola v. Interdigitial Tech. Corp., 1994 WL 16189689,*4 (D. Del.); Vardon Golf Co. v. BBMG Golf, Ltd., 1991 WL 222258 (N.D. Ill.). Wi-LAN offers no case support for the notion that such restrictions should necessarily be reciprocal. Here, because of Wi-LAN's business model, unique risks of harm to defendants exist that do not apply to Wi-LAN. Wi-LAN essentially concedes this point, as it agreed that the patent prosecution bar should only apply to Wi-LAN, and not defendants.
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particular facts present in ST Sales Tech, the Court understandably acknowledged the substantial
risks associated with disclosure of confidential information, such as future product and
marketing plans, to a non-practicing entity who focuses on patent acquisition and assertion. Id.
Nothing in the Court's opinion, however, suggests that a products company's in-house attorneys
may be deemed "competitive decision-makers" in such circumstances.14
C. Wi-LAN's "Employee Bar" Provision Will Unnecessarily Impede Defendants' In-House Counsel Ability To Oversee And Manage This Litigation
In this case, in addition to issues concerning the alleged infringement, invalidity and
unenforceability of the patents-in-suit, numerous other legal and factual issues will be litigated,
including issues regarding technical standards, corporate conduct in standards-setting
organizations, and corporate promises to license on fair, reasonable and non-discriminatory
("FRAND") terms. In circumstances such as these, full participation by defendants' in-house
counsel is routinely permitted. Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187
F.R.D. 240, 243-44 (E.D. Va. 1999) (holding that it was in-house counsel's responsibility to
supervise outside counsel in handling the litigation would be granted access to adversary's
confidential information under protective order because she did not engage in corporation's
competitive decision making and was needed the access to effectively supervise outside
counsel); Intervet, Inc. v. Merial Limited, 241 F.R.D. 55 (D.D.C. 2007) (ruling that accused
infringer's in-house intellectual property counsel would be granted access to confidential
information under protective order where the counsel was an active member of the trial team and 14 Wi-LAN's reliance in note 5 on R.R. Donnelley & Sons Co. v. Quark, Inc., 2007 WL 61885 (D.Del.), is similarly improper. In R.R. Donnelley, the Chief Patent Counsel and the President of Corporate Strategic Initiatives for a non-practicing entity in the business of patent development and licensing were restricted from access to a defendant's confidential information. Nothing in the opinion suggests that defendants' in-house attorneys may be deemed "competitive decision-makers" in such circumstances.
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involved in litigation strategy decisions for the case and drafting of briefs). The specialized
mixture of experience and knowledge these attorneys have about both litigation and their inter-
workings of their respective companies make them irreplaceable, including by outside counsel.
Carpenter Technology Corp. v. Armco, Inc., 132 F.R.D. 24, 28 (E.D. Pa. 1990) (allowing access
to confidential information for in-house counsel because "the advice of in-house counsel with
specialized knowledge . . . could be essential to the proper handling of this litigation by outside
counsel"); Volvo Penta of the Americas, Inc., 187 F.R.D. at 242-43 (noting the need for in-house
counsel to provide outside counsel with input and experience "to help make quick tactical
decisions in the instant case").
D. Conclusion
For the foregoing reasons, Defendants respectfully request that the Court enter
Defendants' version of the proposed Protective Order attached as Exhibit B, and deny Wi-LAN's
request for the Court to enter its to its "Employee Bar" provision.
Dated: June 9, 2009 Respectfully submitted,
/s/__Robert M. Parker (w/permission SB)_____
Robert M. Parker (State Bar No. 15498000) PARKER, BUNT & AINSWORTH, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 T: 903.531.3535 F: 903.533.9687 [email protected] ATTORNEYS FOR DEFENDANT INTEL CORPORATION AND BEHALF OF ALL DEFENDANTS
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/s/___Sam Baxter__________________________
Samuel Franklin Baxter MCKOOL SMITH P O Box O 104 East Houston St., Suite 300 Marshall, Texas 75670 Telephone: (903) 923-9000 Facsimile: (903) 923-9099 [email protected] Robert A Cote, Jr. MCKOOL SMITH 399 Park Avenue, Suite 3200 New York, New York 10022 Telephone: (212) 402-9495 Facsimile: (212) 402 9444 [email protected] ATTORNEYS FOR PLAINTIFF Wi-LAN INC.
CERTIFICATE OF SERVICE
I hereby certify that a copy of the foregoing Motion was electronically filed in
compliance with Local Rule CV-5(a) and served upon all counsel of record on June 9, 2009.
/s/ Robert A. Cote
Case 2:07-cv-00473-TJW Document 322 Filed 06/09/2009 Page 29 of 29
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION WI-LAN, INC.
v.
ACER, INC., et al.
WI-LAN, INC.
v.
WESTELL TECHNOLOGIES, INC., et al.
§ § § § § § § § § § §
CIVIL ACTION NO. 2:07-CV-473 [TJW]
CONSOLIDATED WITH:
CIVIL ACTION NO. 2:07-CV-474 [TJW]
JURY TRIAL REQUESTED
PROTECTIVE ORDER
To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
over confidentiality of discovery materials, to adequately protect information the parties are
entitled to keep confidential, to ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and to ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
A. Definitions
1. “Party”: any party to this action, including all of its officers, directors, employees,
consultants, retained experts, and outside counsel (and their support staff).
2. “Material”: all information, documents, testimony, and things produced, served or
otherwise provided in this action by the Parties or by non-parties.
3. “Designating Party”: a Party or non-party that designates information, documents,
or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,
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“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or
“SUBJECT TO PROSECUTION BAR.”
4. “CONFIDENTIAL” Material: information, documents, and things the
Designating Party believes in good faith is not generally known to others, and that the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a
right to privacy under federal or state law, or any other applicable privilege or right related to
confidentiality or privacy.
5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things
the Designating Party believes in good faith 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 the Designating Party (i) would not normally reveal to third parties
except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in
good faith is significantly sensitive and protected by a right to privacy under federal or state law
or any other applicable privilege or right related to confidentiality or privacy.
6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or
other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in
good faith 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 the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly
sensitive and protected by a right to privacy under federal or state law, or any other applicable
privilege or right related to confidentiality or privacy. Any document designated as
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“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated
“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.
7. “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR
“SUBJECT TO PROSECUTION BAR”: these designations may be used only for
ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party believes
in good faith would create a substantial risk of serious injury if known to in-house attorneys or
other employees of a Receiving Party, including. but not limited to, among the following
categories of documents:
(a) a Designating Party’s source code and other technical documents
describing the structure and operation of the Designating Party’s products;
(b) a Designating Party’s research and development activities; and
(c) a Designating party’s business planning, development, and strategy
documents.
These designations, however, shall not be used for a Designating Party’s sales records
regarding its products, license agreements or related communications with parties to the
agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE
BAR” designation shall not be used for any document created prior to January 1, 2006.
8. “Producing Party”: a Party or non-party that produces Material in this action.
9. “Receiving Party”: a Party that receives Material from a Producing Party.
10. “Designated Material”: Material that is designated “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under
this Order.
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11. “Counsel of Record”: (i) outside counsel who appears on the pleadings 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 as a consultant in this action, 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 a Party or of a competitor of a Party.
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 a Party or of a competitor of a Party. This
definition includes ESI vendors, professional jury or trial consultants retained in connection with
this litigation, and mock jurors retained by such consultants to assist them in their work.
Professional vendors do not include consultants who fall within the definition of Outside
Consultant.
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B. Scope
14. The protections conferred by this Order cover not only Designated Material (as
defined above), but also any information copied or extracted therefrom, as well as all copies,
excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided
in the Docket Control Order and Discovery Order. Identification of any individual pursuant to
this Protective Order does not make that individual available for deposition, or any other form of
discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the
Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District
Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in
the Docket Control Order and Discovery Order.
C. Access To Designated Material
15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted
in writing by the Designating Party, a Receiving Party may disclose any information, document
or thing designated “CONFIDENTIAL” only to:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) Up to three (3) employees of a Receiving Party (including a parent
company of a Receiving Party), and necessary secretarial staff, who are
responsible for providing oversight of or assistance in the litigation, who
have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed
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copy to all Parties prior to receiving Designated Material, however, as to
Designated Material from third parties, absent a court order or agreement
of the third party, Designated Material from third parties may not be
disclosed to employees of a Receiving Party;
(d) If any Receiving Party believes that more than three (3) employees require
access to confidential material, that party may negotiate the issue directly
with the Producing Party;
(e) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(f) Witnesses at deposition and/or trial, provided that such witnesses may not
retain copies of Designated Material unless permitted by other provisions
of this Order;
(g) The Court and its personnel;
(h) 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, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(i) Court reporters and videographers employed in connection with this case;
and
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(j) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose any information, documents or things
designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE
CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below
regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) For "ATTORNEYS' EYES ONLY" material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house
foreign patent attorneys) of each Receiving Party or their respective parent companies, and
necessary secretarial staff, having responsibility for providing oversight of or assistance in the
litigation, provided that each such attorney must keep all such documents and information in
segregated files access to which is restricted to the designated attorney and necessary secretarial
staff. The designated in-house attorneys will not have access to any information about any
Defendant Producing Party’s current or future products that are not accused of infringement in
this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to
review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no
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circumstances shall Defendants' in-house attorneys or employees be permitted access to or be
allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant,
unless so authorized by the Producing Party. Nothing in this section restricts designated in-
house attorneys' access to information concerning their own companies' current or future
products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to
receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have
in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of
Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance
in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior
to receiving Designated Material. The substituted employees shall have the same duties and
obligations of in-house counsel who are designated under this paragraph. Defendants Sony
Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two
(2) employees of their parent companies and their necessary secretarial staff having
responsibility for providing oversight of or assistance in the litigation, who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.
The substituted employees shall have the same duties and obligations of in-house counsel who
are designated under this paragraph;
With respect to Designated Material from third parties or for which third party
permission is required for production, absent a court order or agreement of the third party, such
Designated Material may not be disclosed to employees of a Receiving Party;
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This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE
CODE," “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR “SUBJECT
TO PROSECUTION BAR.”
(a) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(b) The Court and its personnel;
(c) Any designated arbitrator or mediator who is assigned to hear this matter,
or who has been selected by the Parties, and his or her staffs, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(d) Court reporters and videographers employed in connection with this case;
and
(e) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the
firewall of a firm representing the Receiving Party, or outside the system of a professional ESI
Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”
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Material also cannot be sent or transmitted to any person, location, or vendor outside of the
United States except to Counsel of Record and Outside Consultants designated in subparagraph
(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or
to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of
the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic
format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.
17. Each person to whom Designated Material may be disclosed, and who is required
to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as
Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.
Counsel for a Party who makes any disclosure of Designated Material shall retain each original
executed certificate and, upon written request, shall provide copies to counsel to all other Parties
at the termination of this action.
18. At the request of the Designating Party, persons not permitted access to
Designated Material under the terms of this Protective Order shall not be present at depositions
while the Designating Party’s Designated 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 Material from disclosure to persons not authorized to have access to such
Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
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D. Access By Outside Consultants
19. Notice. If a Receiving Party wishes to disclose another Party’s Designated
Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the
Designating Party, 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; and (h) a signed copy of the “Acknowledgement and
Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B.
20. Objections. The Designating Party shall have five (5) business days from receipt
of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra
days if notice is given other than by hand delivery, e-mail transmission or facsimile
transmission). Any such objection must set forth in detail the grounds on which it is based. After
the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,
then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of
this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if
appropriate) period, the Receiving Party may not disclose Designated Material to the challenged
individual absent resolution of the dispute or Court Order. In the event the Designating Party
makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter
by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)
business days following the meet and confer, file a motion for a protective order preventing
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disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the
objecting party fails to file a motion for protective order within the prescribed period, any
objection to the Outside Consultant is waived, and Designated Material may thereafter be
disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound
By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion
for a protective order, Designated Material shall not be disclosed to the challenged individual
until and unless a final ruling allowing such disclosure is made by this Court, or by the consent
of the Objecting party, whichever occurs first.
E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material
21. Source code.
(a) Unless otherwise agreed to in writing between the Producing Party and the
Receiving Party or otherwise produced by the Producing Party directly to
the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’
EYES ONLY - SOURCE CODE” is to be made available for inspection,
SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –
SOURCE CODE” shall only be provided, upon request, on at least three
stand-alone computers (that is, computers not connected to a network,
Internet or a peripheral device) at secure locations, to be made available
during regular business hours (9:00 am to 5:00 pm, local time) on
reasonable notice of at least two business days, absent exigent
circumstances or otherwise agreed to by the Producing Party. The parties
agree to provide access from 5:00 p.m. through midnight local time on
weekdays and will meet and confer individually in good faith to provide
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such access. Upon reasonable notice, the parties agree to provide
reasonable access to secure locations on Saturdays and Sundays and will
meet and confer individually in good faith to provide such access. The
Receiving Party is expected and agrees to make reasonable efforts to
restrict its access to normal business hours except where necessary to
accommodate the work schedules of its source code reviewers. The
Producing Party is expected and agrees to reasonably permit after hours
and weekend access to accommodate such circumstances. At the
Producing Party’s selection, the secure locations will be either in
California, Texas, and/or New York. The secure locations will be at the
offices of Counsel of Record, the offices of the producing party, or an
escrow facility. If the production of source code is at an escrow facility,
all reasonable costs associated therewith will be shared equally between
the Receiving Party and the Producing Party other than costs associated
with software for reviewing the source code which shall be paid for by the
party requesting such software. If the production of source code is at a
location other than an escrow facility, the costs associated with software
for reviewing the SOURCE CODE shall be paid for by the party
requesting such software. Upon written request by the Receiving Party,
beginning one week prior to the beginning of trial and continuing through
the end of trial, access to the source code must be provided under the same
conditions and with the same limitations and restrictions as provided in
this Paragraph in Marshall, Texas.
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(b) The Receiving Party (including all experts, consultants, lawyers retained
by the Receiving Party who may review the source code under this
Protective Order) may use and, to the extent necessary, load onto the
secure computer(s) searching or analytical tools for inspection of the
source code, so long as the searching or other analytical tools for
inspection of the source code is disclosed by the Requesting Party at least
two (2) business days in advance of the inspection, providing however that
the Producing Party reserves all objections to any such searching or
analytical tools. The Receiving Party may create a back-up copy of the
source code on the stand-alone computer(s). The searching or analytical
tools may annotate, number the lines of, and label the pages of, the back-
up copy of the code. Any back-up copies will remain on the stand-alone
computer(s) and be subject to all of the provisions of this Protective Order.
The Receiving Party is permitted to use a laptop computer to take notes,
record observations, etc., so long as the laptop computer is never
connected to the stand-alone computer(s) and is not used to record the
source code itself.
(c) The Producing Party must enable the Receiving Party to print paper copies
of code at the time of inspection by the Receiving Party. Furthermore, the
parties will also exchange (by hand delivery or overnight delivery) copies
of the paper copies of source code to be used as exhibits for court
proceedings, expert reports, and at depositions, when so used. These
additional copies will be treated the same as the original print outs.
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22. The Producing Party will produce source code in computer searchable format at
the secure location in the manner described above in Paragraph 20, but need not produce
executable code, unless requested by the Receiving Party. The Producing Party also need not
produce prior versions of the source code, unless requested by the Receiving Party. All source
code produced shall be organized in one or more separate directories corresponding to accused
product(s) and/or accused model numbers or in the same directory structure as the source code is
kept and/or compiled in the ordinary course of business. Further, to the extent files for one
particular version of source code are grouped together in a single folder in the ordinary course of
the Producing Party's business, the Producing Party shall produce the source code in that manner.
If, for any reasons, source code files are not produced for review, but, in the Receiving Party’s
sole determination, such missing source code is deemed to be necessary to understand the
operation of the accused products, the parties agree to promptly meet and confer over the
production of any and all missing source code files requested by the Receiving Party in a timely
manner in the format described above. The Producing Party shall not undertake any effort to
determine which pages or portions of source code have been reviewed. The Producing Party
shall not videotape the actual review of the source code by the Receiving Party. The Producing
Party is permitted to audit the review of the source code by the Receiving Party from time to
time with reasonable advance notice (e.g., a knock on the door of the room at the secure
location), but will not interfere with any work-product or listen to other private communications
between the Receiving Party reviewing the source code.
23. The Producing Party will enable the Receiving Party to print paper copies of
specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE
CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take
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when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access
Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the
secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date
and time of access; (3) the length of time of access; and (4) whether any hard copies of any
portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly
Bates label the printed portions of the code and provide a copy to the Receiving Party. The
Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire
code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall
maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE
designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number
and confidentiality labels when printed. The Receiving Party or Outside Consultants of the
Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of
the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also
temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to
the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the
Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a
hotel prior to a deposition).
F. Financial Summaries
24. For the mutual convenience of the parties, a Producing Party may generate certain
financial summaries for the purpose of this litigation. To the extent a Producing Party produces
such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the
extent a Receiving Party puts any such financial summary or the information from any such
financial summary into a document in a digital format, the Receiving Party shall password
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protect that document on an encrypted media. To the extent that any such financial summaries
are transmitted from or to authorized recipients outside of the Receiving Party’s Outside
Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal
Express), or by encrypted electronic means.
G. Prosecution Bar
25. Unless otherwise agreed to in writing between a Producing Party and a Receiving
Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who
personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”
or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the
Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or
prosecution before a Patent Office of any patent, patent application, or for drafting or revising
patent claims (excluding such activities conducted in the context of post-grant adversarial
proceedings including reexamination or opposition proceedings filed in relation to the patents-in-
suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,
semiconductors, microchips or microprocessors of any type, or products incorporating those
items, from the time of receipt of such material through and including one (1) year following the
first to occur of (i) the complete resolution of this case through entry of a final non-appealable
judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims
against the Producing Party in this action; or (iii) the individual person(s) cease to represent the
Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any
obligations or restrictions set forth in Paragraph 25 below.
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H. Use Of Designated Material
26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the
Court, or agreed to in writing by the Parties, all Designated Material, and all information derived
therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not
be used in any other way, or for any other purpose, including the acquisition, preparation or
prosecution before the Patent Office of any patent, patent application, for drafting or revising
patent claims, or in connection with patent licensing. Information contained or reflected in
Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,
in court or in other settings that might reveal Designated Material, except in accordance with the
terms of this Order.
27. Use Of Designated Material By Designating Party. Nothing in this Order shall
limit any Designating Party’s use of its own documents and information, nor shall it prevent the
Designating Party from disclosing its own confidential information, documents or things to any
person. Such disclosure shall not affect any designations made pursuant to the terms of this
Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the
confidentiality of the information.
28. Use of Designated Material at Depositions. Except as may be otherwise ordered
by the Court, any person may be examined as a witness at depositions and trial, and may testify
concerning all Designated Material of which such person has prior knowledge, without in any
way limiting the generality of the following
(a) A present director, officer, employee, designated Rule 30(6)(b) witness,
and/or Outside Consultant of a Producing Party may be examined, and
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may testify concerning all Designated Material that has been produced by
that party;
(b) A former director, officer, agent and/or employee of a Producing Party
may be interviewed, examined and may testify concerning all Designated
Material of which he or she has prior knowledge, including any
Designated Material that refers to matters of which the witness has
personal knowledge, that has been produced by that Party and that pertains
to the period or periods of his or her employment; and
(c) Non-parties may be examined or may testify concerning any document
containing Designated Material of a Producing Party that appears on its
face, or from other documents or testimony, to have been received from,
or communicated to, the non-party as a result of any contact or
relationship with the Producing Party, or a representative of such
Producing Party. Any person other than the witness, his or her attorney(s),
and any person qualified to receive Designated Material under this Order,
shall be excluded from the portion of the examination concerning such
information, unless the Producing Party consents to persons other than
qualified recipients being present at the examination. If the witness is
represented by an attorney who is not qualified under this Order to receive
such information, then prior to the examination, the attorney shall be
requested to sign the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached as Exhibit A. In the event that such attorney
declines to sign the Acknowledgement and Agreement To Be Bound By
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Protective Order prior to the examination, the parties, by their attorneys,
shall jointly seek a protective order from the Court prohibiting such
attorney from disclosing such Designated Material.
29. A witness who previously had access to a document designated “ATTORNEYS’
EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a
present non-disclosure agreement with the Producing Party that covers that document, may be
shown the document if the witness is advised on the record of the existence of the Protective
Order and that the protective order requires the parties to keep confidential any questions,
testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,
take notes on or retain copies of any Designated Material used or reviewed at the deposition. The
witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The
Producing Party of any Designated Material used at the deposition may also require that the
transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of
the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the
witness in the offices of one of the counsel representing a party in this case (or another firm
acting for one of the counsel representing a party in this case and under the supervision of one of
the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply
only to a witness who is not subject to this Order.
I. Procedure for Designating Materials
30. Subject to the limitations set forth in this Order, a Designating Party may:
designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,
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meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”
information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;
designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in
good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO
PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth
in Paragraph 24 above.
31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES
ONLY – SOURCE CODE” Material, any material (including physical objects) made available
for initial inspection by counsel for the Receiving Party prior to producing copies of selected
items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”
information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten
(10) calendar days from the inspection to review and designate the appropriate documents as
“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION
BAR” prior to furnishing copies to the Receiving Party.
32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,
Material that qualifies for protection under this Order must be designated in accordance with this
Section I before the Material is disclosed or produced.
33. Designation in conformity with this Order shall be made as follows:
(a) For information in documentary form (apart from transcripts of
depositions, or other pretrial or trial proceedings), the Producing Party
shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if
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appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that
contains Designated Material.
(b) For testimony given in deposition, or in other pretrial or trial proceedings,
the Designating Party shall specify any portions of the testimony that it
wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of
depositions, the Designating Party may also designate any portion of a
deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES
ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR” by informing the
reporter, and opposing Parties, in writing within thirty (30) calendar days
of completion of the deposition of the designations to be applied. All
deposition transcripts not marked at least “CONFIDENTIAL” during the
deposition will nonetheless be treated as “CONFIDENTIAL” until the
thirty (30) day period has expired. Transcript pages containing Designated
Material must be separately bound by the court reporter, who must affix to
the top of each such page the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION
BAR,” as instructed by the Designating Party.
(c) For information produced in some form other than documentary, and for
any other tangible items, the Producing Party shall affix in a prominent
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place on the exterior of the container or containers in which the
information or thing is stored the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION
BAR”.
(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents
produced in native format. For documents produced in native format, the
parties shall provide written notice to the Receiving Party of any
confidentiality designations at the time of production.
J. No Waiver of Privilege
34. Subject to the provisions of Federal Rule of Evidence 502, inspection or
production of documents (including physical objects) shall not constitute a waiver of the
attorney-client privilege, work product immunity, or any other applicable privilege or immunity,
if, after the Producing Party becomes aware of any such disclosure, the Producing Party
designates any such documents as within the attorney-client privilege, work product immunity or
any other applicable privilege or immunity, and requests in writing return of such documents to
the Producing Party. Upon request by the Producing Party, the Receiving Party shall
immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the
Receiving Party from challenging the propriety of the attorney-client privilege, work product
immunity or other applicable privilege or immunity designation by submitting a written
challenge to the Court; provided, however, that such challenge shall not assert as a ground for
challenge the fact of the initial production or inspection of the documents later designated as
attorney-client privileged, work product, or subject to another applicable privilege or immunity.
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K. Inadvertent Failure To Designate
35. An inadvertent failure to designate qualified information, documents or things as
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –
SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive
the Designating Party’s right to secure protection under this Order for such material. Upon
discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving
Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’
EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,
“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must
make reasonable efforts to assure that the material is treated in accordance with the terms of this
Order, subject to the right to challenge the propriety of such designation(s). The Producing Party
shall provide substitute copies of documents bearing the confidentiality designation.
L. Filing Designated Material
36. Without written permission from the Designating Party or a Court Order secured
after appropriate notice to all interested persons, a Party may not file in the public record in this
action any Designated Material, but must file such Designated Material under seal in
conformance with the Court’s rules and procedures. Material filed under seal shall bear the title
of this matter, an indication of the nature of the contents of such sealed filing, the words
“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’
EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES
ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as
appropriate, and a statement substantially in the following form:
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This filing contains confidential information filed in this case by (name of party) and its
contents shall not be displayed or revealed except by order of the Court presiding over this
matter.
M. Challenges to Confidentiality Designations
37. The Parties will use reasonable care when designating documents or information
as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall
prevent a Receiving Party from contending that any or all documents or information designated
as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’
EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”
Material have been improperly designated. A Receiving Party may, at any time, request that the
Producing Party cancel or modify the confidentiality designation with respect to any document
or information contained therein.
38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and
“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so
shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be
served on counsel for the Producing Party, and shall identify particularly the documents or
information that the Receiving Party contends should be differently designated. The parties shall
use their best efforts to resolve promptly and informally such disputes in accordance with all
applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party
shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES
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ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT
TO PROSECUTION BAR” designation.
N. Protected Material Subpoenaed or Ordered Produced In Other Litigation
39. 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
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, the Receiving Party must so notify the Designating Party, 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. The
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
Protective Order. In addition, the Receiving Party must deliver a copy of this 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 Protective Order
and to afford the Designating Party in this case an opportunity to try to protect its confidentiality
interests in the court from which the subpoena or order issued. The Designating Party shall bear
the burdens and the expenses of seeking protection in that court of its Designated Material.
Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party
in this action to disobey a lawful directive from another court.
O. Unauthorized Disclosure Of Designated Material
40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Designated Material to any person or in any circumstance not authorized under this Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
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disclosures, (b) use its best efforts to retrieve all copies of the Designated 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 “Acknowledgment and Agreement to Be
Bound” that is attached hereto as Exhibit A.
P. Non-Party Use of this Protective Order
41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a
court order, may designate such Material in the same manner, and shall receive the same level of
protection under this Protective Order, as any Party to this lawsuit.
42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material produced by any Party in this case.
Q. Discovery from Outside Consultants
43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be
subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that
the testifying expert prepared in other cases be subject to discovery in this case.
44. Discovery of materials provided to testifying experts shall be limited to those
materials, facts, consulting expert opinions, and other matters actually relied upon by the
testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in
this case. No discovery can be taken from any consulting expert who does not testify, except to
the extent that consulting expert has provided information, opinions or other materials to a
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testifying expert, who then relies upon such information, opinions or other materials in forming
his or her final report, trial or deposition testimony or any opinion in this case.
45. No conversations or communications between Counsel of Record and any
testifying or consulting expert will be subject to discovery unless the conversations or
communications are relied upon by such experts in formulating opinions that are presented in
reports, trial or deposition testimony in this case.
46. Materials, communications (including email) and other information exempt from
discovery under the foregoing Paragraphs shall be treated as attorney-work product for the
purposes of this litigation and Protective Order.
R. Communications between Party and Counsel of Record
47. The parties agree that the following privileged or protected communications
occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or
produced in this case except as required under Patent Local Rule 3-7:
(a) communications solely between Wi-LAN and its outside or in-house
counsel regarding litigation or potential litigation over the patents-in-suit
in which Wi-LAN became a party, or litigation or potential litigation over
any other patents allegedly owned or asserted by Wi-LAN; and
(b) communications solely
(1) between a Defendant (or its respective parent company) and its outside counsel;
(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or
(3) among in-house or outside counsel for Defendants (or their respective parent companies);
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regarding litigation or potential litigation over the patents-in-suit in which the communicating
Defendants became parties, or litigation or potential litigation over any other patents allegedly
owned or asserted by Wi-LAN.
The above agreements are without prejudice to any party’s ability to make a
particularized request for a limited log relating to specific documents, upon an appropriate
showing of potential discoverability of the documents over privilege or protection objections.
S. Duration
48. Even after the termination of this action, the confidentiality obligations imposed
by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
court order otherwise directs.
T. Final Disposition
49. Unless otherwise ordered or agreed in writing by the Producing Party, within
sixty (60) calendar days after the final termination of this action, each Receiving Party must
destroy or return, at the Producing Party’s request, all Designated Material to the Producing
Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,
compilations, summaries or any other form of reproducing or capturing any of the Designated
Material. The Receiving Party must submit a written confirmation of the return or destruction to
the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-
day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of
all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other
proceedings (including exhibits), expert reports (including exhibits), discovery requests and
responses (including exhibits), exhibits offered or introduced into evidence at trial, legal
memoranda, correspondence or attorney work product, even if such materials contain Designated
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Material. Any such archival copies that contain or constitute Designated Material remain subject
to this Protective Order as set forth in Section R (Duration), above.
U. Miscellaneous
50. Any of the notice requirements herein may be waived, in whole or in part, but
only by a writing signed by the Counsel of Record for the Party against whom such waiver will
be effective.
51. This Order is entered without prejudice to the right of any Party to apply to the
Court at any time for modification of this Order, when convenience or necessity requires.
Nothing in this Order abridges the right of any person to seek to assert other objections. No Party
waives any right it otherwise would have to object to disclosing or producing any information,
documents, or things on any ground not addressed in this Protective Order. Similarly, no Party
waives any right to object on any ground to the use in evidence of any of the material covered by
this Protective Order. The Court shall take appropriate measures to protect Designated Material
at trial and any hearing in this case.
52. This Order shall not diminish any existing obligation or right with respect to
Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in
writing before the disclosure takes place.
53. The United States District Court for the Eastern District of Texas, Marshall
Division, is responsible for the interpretation and enforcement of this Protective Order. All
disputes concerning Designated Material produced under the protection of this Protective Order
shall be resolved by the United States District Court for the Eastern District of Texas, Marshall
Division. Every individual who receives any Designated Material agrees to subject himself or
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herself to the jurisdiction of this Court for the purpose of any proceedings related to performance
under, compliance with, or violation of this Order.
SIGNED this ___ day of ______, 2009.
________________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE
PROTECTIVE ORDER 31 Dallas 279576v1
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EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, __________________________________________ [print or type full name], state:
1. My business address is ;
2. My present employer is ;
3. My present occupation or job description is ;
4. I agree to keep confidential all information provided to me in the matter of Wi-
LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States
District Court for the Eastern District of Texas, Marshall Division, in accordance with the
restrictions in the Protective Order, and to be subject to the authority of that Court in the event of
any violation or dispute related to this Protective Order.
5. I have been informed of and have reviewed the Protective Order entered in this
case, and I will not divulge any information, documents or things that are subject to the
Protective Order except in accordance with the provisions of the Order;
6. 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]
PROTECTIVE ORDER, Exhibit A Dallas 279576v1
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EXHIBIT B
CERTIFICATION OF CONSULTANT
I, _______________________________________________ [print or type full name], of
_____________________________________________ am not an employee of the Party who
retained me or of a competitor of the opposing Party and will not use any information,
documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.
Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this
litigation. If at any time after I execute this Certificate of Consultant and during the pendency of
the Action and my retention, I decide to accept employment by a competitor of the opposing
Party, I will promptly (before I become employed) inform the counsel for the party who retained
me in the Action and the opposing party, and I will not thereafter review any Designated
Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the
Parties agree or the Court orders otherwise.
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]
PROTECTIVE ORDER, Exhibit B Dallas 279576v1
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WI-LAN, INC.
v.
ACER, INC., et al.
WI-LAN, INC.
v.
WESTELL TECHNOLOGIES, INC., et al.
§ § § § § § § § § § §
CIVIL ACTION NO. 2:07-CV-473 [TJW]
CONSOLIDATED WITH:
CIVIL ACTION NO. 2:07-CV-474 [TJW]
JURY TRIAL REQUESTED
PROTECTIVE ORDER
To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
over confidentiality of discovery materials, to adequately protect information the parties are
entitled to keep confidential, to ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and to ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
A. Definitions
1. “Party”: any party to this action, including all of its officers, directors, employees,
consultants, retained experts, and outside counsel (and their support staff).
2. “Material”: all information, documents, testimony, and things produced, served or
otherwise provided in this action by the Parties or by non-parties.
3. “Designating Party”: a Party or non-party that designates information, documents,
or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,
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“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or
“SUBJECT TO PROSECUTION BAR.”
4. “CONFIDENTIAL” Material: information, documents, and things the
Designating Party believes in good faith is not generally known to others, and that the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a
right to privacy under federal or state law, or any other applicable privilege or right related to
confidentiality or privacy.
5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things
the Designating Party believes in good faith 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 the Designating Party (i) would not normally reveal to third parties
except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in
good faith is significantly sensitive and protected by a right to privacy under federal or state law
or any other applicable privilege or right related to confidentiality or privacy.
6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or
other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in
good faith 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 the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly
sensitive and protected by a right to privacy under federal or state law, or any other applicable
privilege or right related to confidentiality or privacy. Any document designated as
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“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated
“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.
7. “SUBJECT TO PROSECUTION BAR”: this designation may be used only for
ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party believes
in good faith would create a substantial risk of serious injury if known to in-house attorneys or
other employees of a Receiving Party, including. but not limited to, among the following
categories of documents:
(a) a Designating Party’s source code and other technical documents
describing the structure and operation of the Designating Party’s products;
(b) a Designating Party’s research and development activities; and
(c) a Designating party’s business planning, development, and strategy
documents. This designations, however, shall not be used for a
Designating Party’s sales records regarding its products,license
agreements or related communications with parties to the agreements.
8. “Producing Party”: a Party or non-party that produces Material in this action.
9. “Receiving Party”: a Party that receives Material from a Producing Party.
10. “Designated Material”: Material that is designated “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under
this Order.
11. “Counsel of Record”: (i) outside counsel who appears on the pleadings 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,
PROTECTIVE ORDER 3 Dallas 279575v1
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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 as a consultant in this action, 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 a Party or of a competitor of a Party.
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 a Party or of a competitor of a Party. This
definition includes ESI vendors, professional jury or trial consultants retained in connection with
this litigation, and mock jurors retained by such consultants to assist them in their work.
Professional vendors do not include consultants who fall within the definition of Outside
Consultant.
B. Scope
14. The protections conferred by this Order cover not only Designated Material (as
defined above), but also any information copied or extracted therefrom, as well as all copies,
excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided
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in the Docket Control Order and Discovery Order. Identification of any individual pursuant to
this Protective Order does not make that individual available for deposition, or any other form of
discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the
Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District
Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in
the Docket Control Order and Discovery Order.
C. Access To Designated Material
15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted
in writing by the Designating Party, a Receiving Party may disclose any information, document
or thing designated “CONFIDENTIAL” only to:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) Up to three (3) employees of a Receiving Party (including a parent
company of a Receiving Party), and necessary secretarial staff, who are
responsible for providing oversight of or assistance in the litigation, who
have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed
copy to all Parties prior to receiving Designated Material, however, as to
Designated Material from third parties, absent a court order or agreement
of the third party, Designated Material from third parties may not be
disclosed to employees of a Receiving Party;
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(d) If any Receiving Party believes that more than three (3) employees require
access to confidential material, that party may negotiate the issue directly
with the Producing Party;
(e) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(f) Witnesses at deposition and/or trial, provided that such witnesses may not
retain copies of Designated Material unless permitted by other provisions
of this Order;
(g) The Court and its personnel;
(h) 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, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(i) Court reporters and videographers employed in connection with this case;
and
(j) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
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16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose any information, documents or things
designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE
CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below
regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) For “ATTORNEYS’ EYES ONLY” material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house
foreign patent attorneys) of each Receiving Party or their respective parent companies, and
necessary secretarial staff, having responsibility for providing oversight of or assistance in the
litigation, provided that each such attorney must keep all such documents and information in
segregated files access to which is restricted to the designated attorney and necessary secretarial
staff. The designated in-house attorneys will not have access to any information about any
Defendant Producing Party’s current or future products that are not accused of infringement in
this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to
review only ATTORNEYS’ EYES ONLY information produced by Wi-LAN and that under no
circumstances shall Defendants’ in-house attorneys or employees be permitted access to or be
allowed to review ATTORNEYS’ EYES ONLY information produced by any other Defendant,
unless so authorized by the Producing Party. Nothing in this section restricts designated in-
house attorneys’ access to information concerning their own companies’ current or future
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products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to
receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have
in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of
Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance
in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior
to receiving Designated Material. The substituted employees shall have the same duties and
obligations of in-house counsel who are designated under this paragraph. Defendants Sony
Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two
(2) employees of their parent companies and their necessary secretarial staff having
responsibility for providing oversight of or assistance in the litigation, who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.
The substituted employees shall have the same duties and obligations of in-house counsel who
are designated under this paragraph;
With respect to Designated Material from third parties or for which third party
permission is required for production, absent a court order or agreement of the third party, such
Designated Material may not be disclosed to employees of a Receiving Party;
This subparagraph (c) does not apply to “ATTORNEYS’ EYES ONLY - SOURCE
CODE” material OR “SUBJECT TO PROSECUTION BAR.”
(a) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
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“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(b) The Court and its personnel;
(c) Any designated arbitrator or mediator who is assigned to hear this matter,
or who has been selected by the Parties, and his or her staffs, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(d) Court reporters and videographers employed in connection with this case;
and
(e) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the
firewall of a firm representing the Receiving Party, or outside the system of a professional ESI
Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”
Material also cannot be sent or transmitted to any person, location, or vendor outside of the
United States except to Counsel of Record and Outside Consultants designated in subparagraph
(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or
to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of
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the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic
format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.
17. Each person to whom Designated Material may be disclosed, and who is required
to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as
Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.
Counsel for a Party who makes any disclosure of Designated Material shall retain each original
executed certificate and, upon written request, shall provide copies to counsel to all other Parties
at the termination of this action.
18. At the request of the Designating Party, persons not permitted access to
Designated Material under the terms of this Protective Order shall not be present at depositions
while the Designating Party’s Designated 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 Material from disclosure to persons not authorized to have access to such
Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
D. Access By Outside Consultants
19. Notice. If a Receiving Party wishes to disclose another Party’s Designated
Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the
Designating Party, 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
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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; and (h) a signed copy of the “Acknowledgement and
Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B.
20. Objections. The Designating Party shall have five (5) business days from receipt
of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra
days if notice is given other than by hand delivery, e-mail transmission or facsimile
transmission). Any such objection must set forth in detail the grounds on which it is based. After
the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,
then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of
this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if
appropriate) period, the Receiving Party may not disclose Designated Material to the challenged
individual absent resolution of the dispute or Court Order. In the event the Designating Party
makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter
by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)
business days following the meet and confer, file a motion for a protective order preventing
disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the
objecting party fails to file a motion for protective order within the prescribed period, any
objection to the Outside Consultant is waived, and Designated Material may thereafter be
disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound
By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion
for a protective order, Designated Material shall not be disclosed to the challenged individual
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until and unless a final ruling allowing such disclosure is made by this Court, or by the consent
of the Objecting party, whichever occurs first.
E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material
21. Source code.
(a) Unless otherwise agreed to in writing between the Producing Party and the
Receiving Party or otherwise produced by the Producing Party directly to
the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’
EYES ONLY - SOURCE CODE” is to be made available for inspection,
SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –
SOURCE CODE” shall only be provided, upon request, on at least three
stand-alone computers (that is, computers not connected to a network,
Internet or a peripheral device) at secure locations, to be made available
during regular business hours (9:00 am to 5:00 pm, local time) on
reasonable notice of at least two business days, absent exigent
circumstances or otherwise agreed to by the Producing Party. The parties
agree to provide access from 5:00 p.m. through midnight local time on
weekdays and will meet and confer individually in good faith to provide
such access. Upon reasonable notice, the parties agree to provide
reasonable access to secure locations on Saturdays and Sundays and will
meet and confer individually in good faith to provide such access. The
Receiving Party is expected and agrees to make reasonable efforts to
restrict its access to normal business hours except where necessary to
accommodate the work schedules of its source code reviewers. The
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Producing Party is expected and agrees to reasonably permit after hours
and weekend access to accommodate such circumstances. At the
Producing Party’s selection, the secure locations will be either in
California, Texas, and/or New York. The secure locations will be at the
offices of Counsel of Record, the offices of the producing party, or an
escrow facility. If the production of source code is at an escrow facility,
all reasonable costs associated therewith will be shared equally between
the Receiving Party and the Producing Party other than costs associated
with software for reviewing the source code which shall be paid for by the
party requesting such software. If the production of source code is at a
location other than an escrow facility, the costs associated with software
for reviewing the SOURCE CODE shall be paid for by the party
requesting such software. Upon written request by the Receiving Party,
beginning one week prior to the beginning of trial and continuing through
the end of trial, access to the source code must be provided under the same
conditions and with the same limitations and restrictions as provided in
this Paragraph in Marshall, Texas.
(b) The Receiving Party (including all experts, consultants, lawyers retained
by the Receiving Party who may review the source code under this
Protective Order) may use and, to the extent necessary, load onto the
secure computer(s) searching or analytical tools for inspection of the
source code, so long as the searching or other analytical tools for
inspection of the source code is disclosed by the Requesting Party at least
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two (2) business days in advance of the inspection, providing however that
the Producing Party reserves all objections to any such searching or
analytical tools. The Receiving Party may create a back-up copy of the
source code on the stand-alone computer(s). The searching or analytical
tools may annotate, number the lines of, and label the pages of, the back-
up copy of the code. Any back-up copies will remain on the stand-alone
computer(s) and be subject to all of the provisions of this Protective Order.
The Receiving Party is permitted to use a laptop computer to take notes,
record observations, etc., so long as the laptop computer is never
connected to the stand-alone computer(s) and is not used to record the
source code itself.
(c) The Producing Party must enable the Receiving Party to print paper copies
of code at the time of inspection by the Receiving Party. Furthermore, the
parties will also exchange (by hand delivery or overnight delivery) copies
of the paper copies of source code to be used as exhibits for court
proceedings, expert reports, and at depositions, when so used. These
additional copies will be treated the same as the original print outs.
22. The Producing Party will produce source code in computer searchable format at
the secure location in the manner described above in Paragraph 20, but need not produce
executable code, unless requested by the Receiving Party. The Producing Party also need not
produce prior versions of the source code, unless requested by the Receiving Party. All source
code produced shall be organized in one or more separate directories corresponding to accused
product(s) and/or accused model numbers or in the same directory structure as the source code is
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kept and/or compiled in the ordinary course of business. Further, to the extent files for one
particular version of source code are grouped together in a single folder in the ordinary course of
the Producing Party’s business, the Producing Party shall produce the source code in that
manner. If, for any reasons, source code files are not produced for review, but, in the Receiving
Party’s sole determination, such missing source code is deemed to be necessary to understand the
operation of the accused products, the parties agree to promptly meet and confer over the
production of any and all missing source code files requested by the Receiving Party in a timely
manner in the format described above. The Producing Party shall not undertake any effort to
determine which pages or portions of source code have been reviewed. The Producing Party
shall not videotape the actual review of the source code by the Receiving Party. The Producing
Party is permitted to audit the review of the source code by the Receiving Party from time to
time with reasonable advance notice (e.g., a knock on the door of the room at the secure
location), but will not interfere with any work-product or listen to other private communications
between the Receiving Party reviewing the source code.
23. The Producing Party will enable the Receiving Party to print paper copies of
specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE
CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take
when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access
Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the
secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date
and time of access; (3) the length of time of access; and (4) whether any hard copies of any
portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly
Bates label the printed portions of the code and provide a copy to the Receiving Party. The
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Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire
code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall
maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE
designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number
and confidentiality labels when printed. The Receiving Party or Outside Consultants of the
Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of
the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also
temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to
the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the
Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a
hotel prior to a deposition).
F. Financial Summaries
24. For the mutual convenience of the parties, a Producing Party may generate certain
financial summaries for the purpose of this litigation. To the extent a Producing Party produces
such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the
extent a Receiving Party puts any such financial summary or the information from any such
financial summary into a document in a digital format, the Receiving Party shall password
protect that document on an encrypted media. To the extent that any such financial summaries
are transmitted from or to authorized recipients outside of the Receiving Party’s Outside
Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal
Express), or by encrypted electronic means.
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G. Prosecution Bar
25. Unless otherwise agreed to in writing between a Producing Party and a Receiving
Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who
personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”
or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the
Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or
prosecution before a Patent Office of any patent, patent application, or for drafting or revising
patent claims (excluding such activities conducted in the context of post-grant adversarial
proceedings including reexamination or opposition proceedings filed in relation to the patents-in-
suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,
semiconductors, microchips or microprocessors of any type, or products incorporating those
items, from the time of receipt of such material through and including one (1) year following the
first to occur of (i) the complete resolution of this case through entry of a final non-appealable
judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims
against the Producing Party in this action; or (iii) the individual person(s) cease to represent the
Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any
obligations or restrictions set forth in Paragraph 25 below.
H. Use Of Designated Material
26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the
Court, or agreed to in writing by the Parties, all Designated Material, and all information derived
therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not
be used in any other way, or for any other purpose, including the acquisition, preparation or
prosecution before the Patent Office of any patent, patent application, for drafting or revising
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patent claims, or in connection with patent licensing. Information contained or reflected in
Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,
in court or in other settings that might reveal Designated Material, except in accordance with the
terms of this Order.
27. Use Of Designated Material By Designating Party. Nothing in this Order shall
limit any Designating Party’s use of its own documents and information, nor shall it prevent the
Designating Party from disclosing its own confidential information, documents or things to any
person. Such disclosure shall not affect any designations made pursuant to the terms of this
Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the
confidentiality of the information.
28. Use of Designated Material at Depositions. Except as may be otherwise ordered
by the Court, any person may be examined as a witness at depositions and trial, and may testify
concerning all Designated Material of which such person has prior knowledge, without in any
way limiting the generality of the following
(a) A present director, officer, employee, designated Rule 30(6)(b) witness,
and/or Outside Consultant of a Producing Party may be examined, and
may testify concerning all Designated Material that has been produced by
that party;
(b) A former director, officer, agent and/or employee of a Producing Party
may be interviewed, examined and may testify concerning all Designated
Material of which he or she has prior knowledge, including any
Designated Material that refers to matters of which the witness has
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personal knowledge, that has been produced by that Party and that pertains
to the period or periods of his or her employment; and
(c) Non-parties may be examined or may testify concerning any document
containing Designated Material of a Producing Party that appears on its
face, or from other documents or testimony, to have been received from,
or communicated to, the non-party as a result of any contact or
relationship with the Producing Party, or a representative of such
Producing Party. Any person other than the witness, his or her attorney(s),
and any person qualified to receive Designated Material under this Order,
shall be excluded from the portion of the examination concerning such
information, unless the Producing Party consents to persons other than
qualified recipients being present at the examination. If the witness is
represented by an attorney who is not qualified under this Order to receive
such information, then prior to the examination, the attorney shall be
requested to sign the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached as Exhibit A. In the event that such attorney
declines to sign the Acknowledgement and Agreement To Be Bound By
Protective Order prior to the examination, the parties, by their attorneys,
shall jointly seek a protective order from the Court prohibiting such
attorney from disclosing such Designated Material.
29. A witness who previously had access to a document designated “ATTORNEYS’
EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a
present non-disclosure agreement with the Producing Party that covers that document, may be
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shown the document if the witness is advised on the record of the existence of the Protective
Order and that the protective order requires the parties to keep confidential any questions,
testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,
take notes on or retain copies of any Designated Material used or reviewed at the deposition. The
witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The
Producing Party of any Designated Material used at the deposition may also require that the
transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of
the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the
witness in the offices of one of the counsel representing a party in this case (or another firm
acting for one of the counsel representing a party in this case and under the supervision of one of
the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply
only to a witness who is not subject to this Order.
I. Procedure for Designating Materials
30. Subject to the limitations set forth in this Order, a Designating Party may:
designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,
meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”
information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;
designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in
good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO
PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth
in Paragraph 24 above.
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31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES
ONLY – SOURCE CODE” Material, any material (including physical objects) made available
for initial inspection by counsel for the Receiving Party prior to producing copies of selected
items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”
information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten
(10) calendar days from the inspection to review and designate the appropriate documents as
“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION
BAR” prior to furnishing copies to the Receiving Party.
32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,
Material that qualifies for protection under this Order must be designated in accordance with this
Section I before the Material is disclosed or produced.
33. Designation in conformity with this Order shall be made as follows:
(a) For information in documentary form (apart from transcripts of
depositions, or other pretrial or trial proceedings), the Producing Party
shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if
appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that
contains Designated Material.
(b) For testimony given in deposition, or in other pretrial or trial proceedings,
the Designating Party shall specify any portions of the testimony that it
wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of
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depositions, the Designating Party may also designate any portion of a
deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES
ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR” by informing the
reporter, and opposing Parties, in writing within thirty (30) calendar days
of completion of the deposition of the designations to be applied. All
deposition transcripts not marked at least “CONFIDENTIAL” during the
deposition will nonetheless be treated as “CONFIDENTIAL” until the
thirty (30) day period has expired. Transcript pages containing Designated
Material must be separately bound by the court reporter, who must affix to
the top of each such page the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION
BAR,” as instructed by the Designating Party.
(c) For information produced in some form other than documentary, and for
any other tangible items, the Producing Party shall affix in a prominent
place on the exterior of the container or containers in which the
information or thing is stored the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION
BAR”.
(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents
produced in native format. For documents produced in native format, the
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parties shall provide written notice to the Receiving Party of any
confidentiality designations at the time of production.
J. No Waiver of Privilege
34. Subject to the provisions of Federal Rule of Evidence 502, inspection or
production of documents (including physical objects) shall not constitute a waiver of the
attorney-client privilege, work product immunity, or any other applicable privilege or immunity,
if, after the Producing Party becomes aware of any such disclosure, the Producing Party
designates any such documents as within the attorney-client privilege, work product immunity or
any other applicable privilege or immunity, and requests in writing return of such documents to
the Producing Party. Upon request by the Producing Party, the Receiving Party shall
immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the
Receiving Party from challenging the propriety of the attorney-client privilege, work product
immunity or other applicable privilege or immunity designation by submitting a written
challenge to the Court; provided, however, that such challenge shall not assert as a ground for
challenge the fact of the initial production or inspection of the documents later designated as
attorney-client privileged, work product, or subject to another applicable privilege or immunity.
K. Inadvertent Failure To Designate
35. An inadvertent failure to designate qualified information, documents or things as
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –
SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive
the Designating Party’s right to secure protection under this Order for such material. Upon
discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving
Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’
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EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,
“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must
make reasonable efforts to assure that the material is treated in accordance with the terms of this
Order, subject to the right to challenge the propriety of such designation(s). The Producing Party
shall provide substitute copies of documents bearing the confidentiality designation.
L. Filing Designated Material
36. Without written permission from the Designating Party or a Court Order secured
after appropriate notice to all interested persons, a Party may not file in the public record in this
action any Designated Material, but must file such Designated Material under seal in
conformance with the Court’s rules and procedures. Material filed under seal shall bear the title
of this matter, an indication of the nature of the contents of such sealed filing, the words
“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’
EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES
ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as
appropriate, and a statement substantially in the following form:
This filing contains confidential information filed in this case by (name of party) and its
contents shall not be displayed or revealed except by order of the Court presiding over this
matter.
M. Challenges to Confidentiality Designations
37. The Parties will use reasonable care when designating documents or information
as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall
prevent a Receiving Party from contending that any or all documents or information designated
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as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’
EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”
Material have been improperly designated. A Receiving Party may, at any time, request that the
Producing Party cancel or modify the confidentiality designation with respect to any document
or information contained therein.
38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and
“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so
shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be
served on counsel for the Producing Party, and shall identify particularly the documents or
information that the Receiving Party contends should be differently designated. The parties shall
use their best efforts to resolve promptly and informally such disputes in accordance with all
applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party
shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT
TO PROSECUTION BAR” designation.
N. Protected Material Subpoenaed or Ordered Produced In Other Litigation
39. 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
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, the Receiving Party must so notify the Designating Party, 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. The
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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
Protective Order. In addition, the Receiving Party must deliver a copy of this 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 Protective Order
and to afford the Designating Party in this case an opportunity to try to protect its confidentiality
interests in the court from which the subpoena or order issued. The Designating Party shall bear
the burdens and the expenses of seeking protection in that court of its Designated Material.
Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party
in this action to disobey a lawful directive from another court.
O. Unauthorized Disclosure Of Designated Material
40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Designated Material to any person or in any circumstance not authorized under this Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
disclosures, (b) use its best efforts to retrieve all copies of the Designated 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 “Acknowledgment and Agreement to Be
Bound” that is attached hereto as Exhibit A.
P. Non-Party Use of this Protective Order
41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a
court order, may designate such Material in the same manner, and shall receive the same level of
protection under this Protective Order, as any Party to this lawsuit.
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42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material produced by any Party in this case.
Q. Discovery from Outside Consultants
43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be
subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that
the testifying expert prepared in other cases be subject to discovery in this case.
44. Discovery of materials provided to testifying experts shall be limited to those
materials, facts, consulting expert opinions, and other matters actually relied upon by the
testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in
this case. No discovery can be taken from any consulting expert who does not testify, except to
the extent that consulting expert has provided information, opinions or other materials to a
testifying expert, who then relies upon such information, opinions or other materials in forming
his or her final report, trial or deposition testimony or any opinion in this case.
45. No conversations or communications between Counsel of Record and any
testifying or consulting expert will be subject to discovery unless the conversations or
communications are relied upon by such experts in formulating opinions that are presented in
reports, trial or deposition testimony in this case.
46. Materials, communications (including email) and other information exempt from
discovery under the foregoing Paragraphs shall be treated as attorney-work product for the
purposes of this litigation and Protective Order.
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R. Communications between Party and Counsel of Record
47. The parties agree that the following privileged or protected communications
occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or
produced in this case except as required under Patent Local Rule 3-7:
(a) communications solely between Wi-LAN and its outside or in-house
counsel regarding litigation or potential litigation over the patents-in-suit
in which Wi-LAN became a party, or litigation or potential litigation over
any other patents allegedly owned or asserted by Wi-LAN; and
(b) communications solely
(1) between a Defendant (or its respective parent company) and its outside counsel;
(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or
(3) among in-house or outside counsel for Defendants (or their respective parent companies);
regarding litigation or potential litigation over the patents-in-suit in which
the communicating Defendants became parties, or litigation or potential
litigation over any other patents allegedly owned or asserted by Wi-LAN.
The above agreements are without prejudice to any party’s ability to make a
particularized request for a limited log relating to specific documents, upon an appropriate
showing of potential discoverability of the documents over privilege or protection objections.
S. Duration
48. Even after the termination of this action, the confidentiality obligations imposed
by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
court order otherwise directs.
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T. Final Disposition
49. Unless otherwise ordered or agreed in writing by the Producing Party, within
sixty (60) calendar days after the final termination of this action, each Receiving Party must
destroy or return, at the Producing Party’s request, all Designated Material to the Producing
Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,
compilations, summaries or any other form of reproducing or capturing any of the Designated
Material. The Receiving Party must submit a written confirmation of the return or destruction to
the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-
day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of
all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other
proceedings (including exhibits), expert reports (including exhibits), discovery requests and
responses (including exhibits), exhibits offered or introduced into evidence at trial, legal
memoranda, correspondence or attorney work product, even if such materials contain Designated
Material. Any such archival copies that contain or constitute Designated Material remain subject
to this Protective Order as set forth in Section R (Duration), above.
U. Miscellaneous
50. Any of the notice requirements herein may be waived, in whole or in part, but
only by a writing signed by the Counsel of Record for the Party against whom such waiver will
be effective.
51. This Order is entered without prejudice to the right of any Party to apply to the
Court at any time for modification of this Order, when convenience or necessity requires.
Nothing in this Order abridges the right of any person to seek to assert other objections. No Party
waives any right it otherwise would have to object to disclosing or producing any information,
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documents, or things on any ground not addressed in this Protective Order. Similarly, no Party
waives any right to object on any ground to the use in evidence of any of the material covered by
this Protective Order. The Court shall take appropriate measures to protect Designated Material
at trial and any hearing in this case.
52. This Order shall not diminish any existing obligation or right with respect to
Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in
writing before the disclosure takes place.
53. The United States District Court for the Eastern District of Texas, Marshall
Division, is responsible for the interpretation and enforcement of this Protective Order. All
disputes concerning Designated Material produced under the protection of this Protective Order
shall be resolved by the United States District Court for the Eastern District of Texas, Marshall
Division. Every individual who receives any Designated Material agrees to subject himself or
herself to the jurisdiction of this Court for the purpose of any proceedings related to performance
under, compliance with, or violation of this Order.
SIGNED this ___ day of ______, 2009.
_______________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE
PROTECTIVE ORDER 30 Dallas 279575v1
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EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, _______________________________________ [print or type full name], state:
1. My business address is ;
2. My present employer is ;
3. My present occupation or job description is ;
4. I agree to keep confidential all information provided to me in the matter of Wi-
LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States
District Court for the Eastern District of Texas, Marshall Division, in accordance with the
restrictions in the Protective Order, and to be subject to the authority of that Court in the event of
any violation or dispute related to this Protective Order.
5. I have been informed of and have reviewed the Protective Order entered in this
case, and I will not divulge any information, documents or things that are subject to the
Protective Order except in accordance with the provisions of the Order;
6. 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]
PROTECTIVE ORDER, Exhibit A Dallas 279575v1
Case 2:07-cv-00473-TJW Document 322-3 Filed 06/09/2009 Page 32 of 33
EXHIBIT B
CERTIFICATION OF CONSULTANT
I, _______________________________________________ [print or type full name], of
_______________________________________________ am not an employee of the Party who
retained me or of a competitor of the opposing Party and will not use any information,
documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.
Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this
litigation. If at any time after I execute this Certificate of Consultant and during the pendency of
the Action and my retention , I decide to accept employment by a competitor of the opposing
Party, I will promptly (before I become employed) inform the counsel for the party who retained
me in the Action and the opposing party, and I will not thereafter review any Designated
Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the
Parties agree or the Court orders otherwise.
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]
PROTECTIVE ORDER, Exhibit B Dallas 279575v1
Case 2:07-cv-00473-TJW Document 322-3 Filed 06/09/2009 Page 33 of 33
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION WI-LAN, INC.
v.
ACER, INC., et al.
WI-LAN, INC.
v.
WESTELL TECHNOLOGIES, INC., et al.
§
CIVIL ACTION NO. 2:07-CV-473 [TJW]
CONSOLIDATED WITH:
CIVIL ACTION NO. 2:07-CV-474 [TJW]
JURY TRIAL REQUESTED
PROTECTIVE ORDER
To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
over confidentiality of discovery materials, to adequately protect information the parties are
entitled to keep confidential, to ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and to ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
A. Definitions
1. “Party”: any party to this action, including all of its officers, directors, employees,
consultants, retained experts, and outside counsel (and their support staff).
2. “Material”: all information, documents, testimony, and things produced, served or
otherwise provided in this action by the Parties or by non-parties.
3. “Designating Party”: a Party or non-party that designates information, documents,
or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,
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“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or
“SUBJECT TO PROSECUTION BAR.”
4. “CONFIDENTIAL” Material: information, documents, and things the
Designating Party believes in good faith is not generally known to others, and that the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a
right to privacy under federal or state law, or any other applicable privilege or right related to
confidentiality or privacy.
5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things
the Designating Party believes in good faith 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 the Designating Party (i) would not normally reveal to third parties
except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in
good faith is significantly sensitive and protected by a right to privacy under federal or state law
or any other applicable privilege or right related to confidentiality or privacy.
6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or
other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in
good faith 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 the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly
sensitive and protected by a right to privacy under federal or state law, or any other applicable
privilege or right related to confidentiality or privacy. Any document designated as
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“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated
“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.
7. “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR
“SUBJECT TO PROSECUTION BAR”: this designationthese designations may be used only
for ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party
believes in good faith would create a substantial risk of serious injury if known to in-house
attorneys or other employees of a Receiving Party, including. but not limited to, among the
following categories of documents:
(a) a Designating Party’s source code and other technical documents
describing the structure and operation of the Designating Party’s products;
(b) a Designating Party’s research and development activities; and
(c) a Designating party’s business planning, development, and strategy
documents. This
These designations, however, shall not be used for a Designating Party’s sales records
regarding its products, license agreements or related communications with parties to the
agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE
BAR” designation shall not be used for any document created prior to January 1, 2006.
8. “Producing Party”: a Party or non-party that produces Material in this action.
9. “Receiving Party”: a Party that receives Material from a Producing Party.
10. “Designated Material”: Material that is designated “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under
this Order.
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11. “Counsel of Record”: (i) outside counsel who appears on the pleadings 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 as a consultant in this action, 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 a Party or of a competitor of a Party.
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 a Party or of a competitor of a Party. This
definition includes ESI vendors, professional jury or trial consultants retained in connection with
this litigation, and mock jurors retained by such consultants to assist them in their work.
Professional vendors do not include consultants who fall within the definition of Outside
Consultant.
PROTECTIVE ORDER 4 Dallas 279575279576v1
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B. Scope
14. The protections conferred by this Order cover not only Designated Material (as
defined above), but also any information copied or extracted therefrom, as well as all copies,
excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided
in the Docket Control Order and Discovery Order. Identification of any individual pursuant to
this Protective Order does not make that individual available for deposition, or any other form of
discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the
Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District
Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in
the Docket Control Order and Discovery Order.
C. Access To Designated Material
15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted
in writing by the Designating Party, a Receiving Party may disclose any information, document
or thing designated “CONFIDENTIAL” only to:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) Up to three (3) employees of a Receiving Party (including a parent
company of a Receiving Party), and necessary secretarial staff, who are
responsible for providing oversight of or assistance in the litigation, who
have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed
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copy to all Parties prior to receiving Designated Material, however, as to
Designated Material from third parties, absent a court order or agreement
of the third party, Designated Material from third parties may not be
disclosed to employees of a Receiving Party;
(d) If any Receiving Party believes that more than three (3) employees require
access to confidential material, that party may negotiate the issue directly
with the Producing Party;
(e) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(f) Witnesses at deposition and/or trial, provided that such witnesses may not
retain copies of Designated Material unless permitted by other provisions
of this Order;
(g) The Court and its personnel;
(h) 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, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(i) Court reporters and videographers employed in connection with this case;
and
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(j) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose any information, documents or things
designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE
CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below
regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) For “"ATTORNEYS’' EYES ONLY”" material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house
foreign patent attorneys) of each Receiving Party or their respective parent companies, and
necessary secretarial staff, having responsibility for providing oversight of or assistance in the
litigation, provided that each such attorney must keep all such documents and information in
segregated files access to which is restricted to the designated attorney and necessary secretarial
staff. The designated in-house attorneys will not have access to any information about any
Defendant Producing Party’s current or future products that are not accused of infringement in
this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to
review only ATTORNEYS’' EYES ONLY information produced by Wi-LAN and that under no
PROTECTIVE ORDER 7 Dallas 279575279576v1
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circumstances shall Defendants’' in-house attorneys or employees be permitted access to or be
allowed to review ATTORNEYS’' EYES ONLY information produced by any other Defendant,
unless so authorized by the Producing Party. Nothing in this section restricts designated in-
house attorneys’' access to information concerning their own companies’' current or future
products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to
receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have
in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of
Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance
in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior
to receiving Designated Material. The substituted employees shall have the same duties and
obligations of in-house counsel who are designated under this paragraph. Defendants Sony
Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two
(2) employees of their parent companies and their necessary secretarial staff having
responsibility for providing oversight of or assistance in the litigation, who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.
The substituted employees shall have the same duties and obligations of in-house counsel who
are designated under this paragraph;
With respect to Designated Material from third parties or for which third party
permission is required for production, absent a court order or agreement of the third party, such
Designated Material may not be disclosed to employees of a Receiving Party;
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This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE
CODE," “ATTORNEYS’ EYES ONLY - SOURCE CODE” material– SUBJECT TO
EMPLOYEE BAR” OR “SUBJECT TO PROSECUTION BAR.”
(a) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(b) The Court and its personnel;
(c) Any designated arbitrator or mediator who is assigned to hear this matter,
or who has been selected by the Parties, and his or her staffs, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(d) Court reporters and videographers employed in connection with this case;
and
(e) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the
firewall of a firm representing the Receiving Party, or outside the system of a professional ESI
Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”
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Material also cannot be sent or transmitted to any person, location, or vendor outside of the
United States except to Counsel of Record and Outside Consultants designated in subparagraph
(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or
to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of
the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic
format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.
17. Each person to whom Designated Material may be disclosed, and who is required
to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as
Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.
Counsel for a Party who makes any disclosure of Designated Material shall retain each original
executed certificate and, upon written request, shall provide copies to counsel to all other Parties
at the termination of this action.
18. At the request of the Designating Party, persons not permitted access to
Designated Material under the terms of this Protective Order shall not be present at depositions
while the Designating Party’s Designated 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 Material from disclosure to persons not authorized to have access to such
Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
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D. Access By Outside Consultants
19. Notice. If a Receiving Party wishes to disclose another Party’s Designated
Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the
Designating Party, 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; and (h) a signed copy of the “Acknowledgement and
Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B.
20. Objections. The Designating Party shall have five (5) business days from receipt
of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra
days if notice is given other than by hand delivery, e-mail transmission or facsimile
transmission). Any such objection must set forth in detail the grounds on which it is based. After
the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,
then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of
this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if
appropriate) period, the Receiving Party may not disclose Designated Material to the challenged
individual absent resolution of the dispute or Court Order. In the event the Designating Party
makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter
by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)
business days following the meet and confer, file a motion for a protective order preventing
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disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the
objecting party fails to file a motion for protective order within the prescribed period, any
objection to the Outside Consultant is waived, and Designated Material may thereafter be
disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound
By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion
for a protective order, Designated Material shall not be disclosed to the challenged individual
until and unless a final ruling allowing such disclosure is made by this Court, or by the consent
of the Objecting party, whichever occurs first.
E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material
21. Source code.
(a) Unless otherwise agreed to in writing between the Producing Party and the
Receiving Party or otherwise produced by the Producing Party directly to
the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’
EYES ONLY - SOURCE CODE” is to be made available for inspection,
SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –
SOURCE CODE” shall only be provided, upon request, on at least three
stand-alone computers (that is, computers not connected to a network,
Internet or a peripheral device) at secure locations, to be made available
during regular business hours (9:00 am to 5:00 pm, local time) on
reasonable notice of at least two business days, absent exigent
circumstances or otherwise agreed to by the Producing Party. The parties
agree to provide access from 5:00 p.m. through midnight local time on
weekdays and will meet and confer individually in good faith to provide
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such access. Upon reasonable notice, the parties agree to provide
reasonable access to secure locations on Saturdays and Sundays and will
meet and confer individually in good faith to provide such access. The
Receiving Party is expected and agrees to make reasonable efforts to
restrict its access to normal business hours except where necessary to
accommodate the work schedules of its source code reviewers. The
Producing Party is expected and agrees to reasonably permit after hours
and weekend access to accommodate such circumstances. At the
Producing Party’s selection, the secure locations will be either in
California, Texas, and/or New York. The secure locations will be at the
offices of Counsel of Record, the offices of the producing party, or an
escrow facility. If the production of source code is at an escrow facility,
all reasonable costs associated therewith will be shared equally between
the Receiving Party and the Producing Party other than costs associated
with software for reviewing the source code which shall be paid for by the
party requesting such software. If the production of source code is at a
location other than an escrow facility, the costs associated with software
for reviewing the SOURCE CODE shall be paid for by the party
requesting such software. Upon written request by the Receiving Party,
beginning one week prior to the beginning of trial and continuing through
the end of trial, access to the source code must be provided under the same
conditions and with the same limitations and restrictions as provided in
this Paragraph in Marshall, Texas.
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(b) The Receiving Party (including all experts, consultants, lawyers retained
by the Receiving Party who may review the source code under this
Protective Order) may use and, to the extent necessary, load onto the
secure computer(s) searching or analytical tools for inspection of the
source code, so long as the searching or other analytical tools for
inspection of the source code is disclosed by the Requesting Party at least
two (2) business days in advance of the inspection, providing however that
the Producing Party reserves all objections to any such searching or
analytical tools. The Receiving Party may create a back-up copy of the
source code on the stand-alone computer(s). The searching or analytical
tools may annotate, number the lines of, and label the pages of, the back-
up copy of the code. Any back-up copies will remain on the stand-alone
computer(s) and be subject to all of the provisions of this Protective Order.
The Receiving Party is permitted to use a laptop computer to take notes,
record observations, etc., so long as the laptop computer is never
connected to the stand-alone computer(s) and is not used to record the
source code itself.
(c) The Producing Party must enable the Receiving Party to print paper copies
of code at the time of inspection by the Receiving Party. Furthermore, the
parties will also exchange (by hand delivery or overnight delivery) copies
of the paper copies of source code to be used as exhibits for court
proceedings, expert reports, and at depositions, when so used. These
additional copies will be treated the same as the original print outs.
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22. The Producing Party will produce source code in computer searchable format at
the secure location in the manner described above in Paragraph 20, but need not produce
executable code, unless requested by the Receiving Party. The Producing Party also need not
produce prior versions of the source code, unless requested by the Receiving Party. All source
code produced shall be organized in one or more separate directories corresponding to accused
product(s) and/or accused model numbers or in the same directory structure as the source code is
kept and/or compiled in the ordinary course of business. Further, to the extent files for one
particular version of source code are grouped together in a single folder in the ordinary course of
the Producing Party’'s business, the Producing Party shall produce the source code in that
manner. If, for any reasons, source code files are not produced for review, but, in the Receiving
Party’s sole determination, such missing source code is deemed to be necessary to understand the
operation of the accused products, the parties agree to promptly meet and confer over the
production of any and all missing source code files requested by the Receiving Party in a timely
manner in the format described above. The Producing Party shall not undertake any effort to
determine which pages or portions of source code have been reviewed. The Producing Party
shall not videotape the actual review of the source code by the Receiving Party. The Producing
Party is permitted to audit the review of the source code by the Receiving Party from time to
time with reasonable advance notice (e.g., a knock on the door of the room at the secure
location), but will not interfere with any work-product or listen to other private communications
between the Receiving Party reviewing the source code.
23. The Producing Party will enable the Receiving Party to print paper copies of
specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE
CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take
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when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access
Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the
secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date
and time of access; (3) the length of time of access; and (4) whether any hard copies of any
portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly
Bates label the printed portions of the code and provide a copy to the Receiving Party. The
Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire
code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall
maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE
designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number
and confidentiality labels when printed. The Receiving Party or Outside Consultants of the
Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of
the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also
temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to
the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the
Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a
hotel prior to a deposition).
F. Financial Summaries
24. For the mutual convenience of the parties, a Producing Party may generate certain
financial summaries for the purpose of this litigation. To the extent a Producing Party produces
such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the
extent a Receiving Party puts any such financial summary or the information from any such
financial summary into a document in a digital format, the Receiving Party shall password
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protect that document on an encrypted media. To the extent that any such financial summaries
are transmitted from or to authorized recipients outside of the Receiving Party’s Outside
Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal
Express), or by encrypted electronic means.
G. Prosecution Bar
25. Unless otherwise agreed to in writing between a Producing Party and a Receiving
Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who
personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”
or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the
Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or
prosecution before a Patent Office of any patent, patent application, or for drafting or revising
patent claims (excluding such activities conducted in the context of post-grant adversarial
proceedings including reexamination or opposition proceedings filed in relation to the patents-in-
suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,
semiconductors, microchips or microprocessors of any type, or products incorporating those
items, from the time of receipt of such material through and including one (1) year following the
first to occur of (i) the complete resolution of this case through entry of a final non-appealable
judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims
against the Producing Party in this action; or (iii) the individual person(s) cease to represent the
Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any
obligations or restrictions set forth in Paragraph 25 below.
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H. Use Of Designated Material
26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the
Court, or agreed to in writing by the Parties, all Designated Material, and all information derived
therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not
be used in any other way, or for any other purpose, including the acquisition, preparation or
prosecution before the Patent Office of any patent, patent application, for drafting or revising
patent claims, or in connection with patent licensing. Information contained or reflected in
Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,
in court or in other settings that might reveal Designated Material, except in accordance with the
terms of this Order.
27. Use Of Designated Material By Designating Party. Nothing in this Order shall
limit any Designating Party’s use of its own documents and information, nor shall it prevent the
Designating Party from disclosing its own confidential information, documents or things to any
person. Such disclosure shall not affect any designations made pursuant to the terms of this
Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the
confidentiality of the information.
28. Use of Designated Material at Depositions. Except as may be otherwise ordered
by the Court, any person may be examined as a witness at depositions and trial, and may testify
concerning all Designated Material of which such person has prior knowledge, without in any
way limiting the generality of the following
(a) A present director, officer, employee, designated Rule 30(6)(b) witness,
and/or Outside Consultant of a Producing Party may be examined, and
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may testify concerning all Designated Material that has been produced by
that party;
(b) A former director, officer, agent and/or employee of a Producing Party
may be interviewed, examined and may testify concerning all Designated
Material of which he or she has prior knowledge, including any
Designated Material that refers to matters of which the witness has
personal knowledge, that has been produced by that Party and that pertains
to the period or periods of his or her employment; and
(c) Non-parties may be examined or may testify concerning any document
containing Designated Material of a Producing Party that appears on its
face, or from other documents or testimony, to have been received from,
or communicated to, the non-party as a result of any contact or
relationship with the Producing Party, or a representative of such
Producing Party. Any person other than the witness, his or her attorney(s),
and any person qualified to receive Designated Material under this Order,
shall be excluded from the portion of the examination concerning such
information, unless the Producing Party consents to persons other than
qualified recipients being present at the examination. If the witness is
represented by an attorney who is not qualified under this Order to receive
such information, then prior to the examination, the attorney shall be
requested to sign the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached as Exhibit A. In the event that such attorney
declines to sign the Acknowledgement and Agreement To Be Bound By
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Protective Order prior to the examination, the parties, by their attorneys,
shall jointly seek a protective order from the Court prohibiting such
attorney from disclosing such Designated Material.
29. A witness who previously had access to a document designated “ATTORNEYS’
EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a
present non-disclosure agreement with the Producing Party that covers that document, may be
shown the document if the witness is advised on the record of the existence of the Protective
Order and that the protective order requires the parties to keep confidential any questions,
testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,
take notes on or retain copies of any Designated Material used or reviewed at the deposition. The
witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The
Producing Party of any Designated Material used at the deposition may also require that the
transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of
the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the
witness in the offices of one of the counsel representing a party in this case (or another firm
acting for one of the counsel representing a party in this case and under the supervision of one of
the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply
only to a witness who is not subject to this Order.
I. Procedure for Designating Materials
30. Subject to the limitations set forth in this Order, a Designating Party may:
designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,
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meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”
information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;
designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in
good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO
PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth
in Paragraph 24 above.
31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES
ONLY – SOURCE CODE” Material, any material (including physical objects) made available
for initial inspection by counsel for the Receiving Party prior to producing copies of selected
items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”
information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten
(10) calendar days from the inspection to review and designate the appropriate documents as
“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION
BAR” prior to furnishing copies to the Receiving Party.
32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,
Material that qualifies for protection under this Order must be designated in accordance with this
Section I before the Material is disclosed or produced.
33. Designation in conformity with this Order shall be made as follows:
(a) For information in documentary form (apart from transcripts of
depositions, or other pretrial or trial proceedings), the Producing Party
shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if
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appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that
contains Designated Material.
(b) For testimony given in deposition, or in other pretrial or trial proceedings,
the Designating Party shall specify any portions of the testimony that it
wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of
depositions, the Designating Party may also designate any portion of a
deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES
ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR” by informing the
reporter, and opposing Parties, in writing within thirty (30) calendar days
of completion of the deposition of the designations to be applied. All
deposition transcripts not marked at least “CONFIDENTIAL” during the
deposition will nonetheless be treated as “CONFIDENTIAL” until the
thirty (30) day period has expired. Transcript pages containing Designated
Material must be separately bound by the court reporter, who must affix to
the top of each such page the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION
BAR,” as instructed by the Designating Party.
(c) For information produced in some form other than documentary, and for
any other tangible items, the Producing Party shall affix in a prominent
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place on the exterior of the container or containers in which the
information or thing is stored the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION
BAR”.
(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents
produced in native format. For documents produced in native format, the
parties shall provide written notice to the Receiving Party of any
confidentiality designations at the time of production.
J. No Waiver of Privilege
34. Subject to the provisions of Federal Rule of Evidence 502, inspection or
production of documents (including physical objects) shall not constitute a waiver of the
attorney-client privilege, work product immunity, or any other applicable privilege or immunity,
if, after the Producing Party becomes aware of any such disclosure, the Producing Party
designates any such documents as within the attorney-client privilege, work product immunity or
any other applicable privilege or immunity, and requests in writing return of such documents to
the Producing Party. Upon request by the Producing Party, the Receiving Party shall
immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the
Receiving Party from challenging the propriety of the attorney-client privilege, work product
immunity or other applicable privilege or immunity designation by submitting a written
challenge to the Court; provided, however, that such challenge shall not assert as a ground for
challenge the fact of the initial production or inspection of the documents later designated as
attorney-client privileged, work product, or subject to another applicable privilege or immunity.
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K. Inadvertent Failure To Designate
35. An inadvertent failure to designate qualified information, documents or things as
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –
SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive
the Designating Party’s right to secure protection under this Order for such material. Upon
discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving
Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’
EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,
“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must
make reasonable efforts to assure that the material is treated in accordance with the terms of this
Order, subject to the right to challenge the propriety of such designation(s). The Producing Party
shall provide substitute copies of documents bearing the confidentiality designation.
L. Filing Designated Material
36. Without written permission from the Designating Party or a Court Order secured
after appropriate notice to all interested persons, a Party may not file in the public record in this
action any Designated Material, but must file such Designated Material under seal in
conformance with the Court’s rules and procedures. Material filed under seal shall bear the title
of this matter, an indication of the nature of the contents of such sealed filing, the words
“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’
EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES
ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as
appropriate, and a statement substantially in the following form:
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This filing contains confidential information filed in this case by (name of party) and its
contents shall not be displayed or revealed except by order of the Court presiding over this
matter.
M. Challenges to Confidentiality Designations
37. The Parties will use reasonable care when designating documents or information
as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall
prevent a Receiving Party from contending that any or all documents or information designated
as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’
EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”
Material have been improperly designated. A Receiving Party may, at any time, request that the
Producing Party cancel or modify the confidentiality designation with respect to any document
or information contained therein.
38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and
“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so
shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be
served on counsel for the Producing Party, and shall identify particularly the documents or
information that the Receiving Party contends should be differently designated. The parties shall
use their best efforts to resolve promptly and informally such disputes in accordance with all
applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party
shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES
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ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT
TO PROSECUTION BAR” designation.
N. Protected Material Subpoenaed or Ordered Produced In Other Litigation
39. 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
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, the Receiving Party must so notify the Designating Party, 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. The
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
Protective Order. In addition, the Receiving Party must deliver a copy of this 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 Protective Order
and to afford the Designating Party in this case an opportunity to try to protect its confidentiality
interests in the court from which the subpoena or order issued. The Designating Party shall bear
the burdens and the expenses of seeking protection in that court of its Designated Material.
Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party
in this action to disobey a lawful directive from another court.
O. Unauthorized Disclosure Of Designated Material
40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Designated Material to any person or in any circumstance not authorized under this Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
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disclosures, (b) use its best efforts to retrieve all copies of the Designated 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 “Acknowledgment and Agreement to Be
Bound” that is attached hereto as Exhibit A.
P. Non-Party Use of this Protective Order
41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a
court order, may designate such Material in the same manner, and shall receive the same level of
protection under this Protective Order, as any Party to this lawsuit.
42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material produced by any Party in this case.
Q. Discovery from Outside Consultants
43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be
subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that
the testifying expert prepared in other cases be subject to discovery in this case.
44. Discovery of materials provided to testifying experts shall be limited to those
materials, facts, consulting expert opinions, and other matters actually relied upon by the
testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in
this case. No discovery can be taken from any consulting expert who does not testify, except to
the extent that consulting expert has provided information, opinions or other materials to a
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testifying expert, who then relies upon such information, opinions or other materials in forming
his or her final report, trial or deposition testimony or any opinion in this case.
45. No conversations or communications between Counsel of Record and any
testifying or consulting expert will be subject to discovery unless the conversations or
communications are relied upon by such experts in formulating opinions that are presented in
reports, trial or deposition testimony in this case.
46. Materials, communications (including email) and other information exempt from
discovery under the foregoing Paragraphs shall be treated as attorney-work product for the
purposes of this litigation and Protective Order.
R. Communications between Party and Counsel of Record
47. The parties agree that the following privileged or protected communications
occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or
produced in this case except as required under Patent Local Rule 3-7:
(a) communications solely between Wi-LAN and its outside or in-house
counsel regarding litigation or potential litigation over the patents-in-suit
in which Wi-LAN became a party, or litigation or potential litigation over
any other patents allegedly owned or asserted by Wi-LAN; and
(b) communications solely
(1) between a Defendant (or its respective parent company) and its outside counsel;
(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or
(3) among in-house or outside counsel for Defendants (or their respective parent companies);
PROTECTIVE ORDER 28 Dallas 279575279576v1
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regarding litigation or potential litigation over the patents-in-suit in which the communicating
Defendants became parties, or litigation or potential litigation over any other patents allegedly
owned or asserted by Wi-LAN.
The above agreements are without prejudice to any party’s ability to make a
particularized request for a limited log relating to specific documents, upon an appropriate
showing of potential discoverability of the documents over privilege or protection objections.
S. Duration
48. Even after the termination of this action, the confidentiality obligations imposed
by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
court order otherwise directs.
T. Final Disposition
49. Unless otherwise ordered or agreed in writing by the Producing Party, within
sixty (60) calendar days after the final termination of this action, each Receiving Party must
destroy or return, at the Producing Party’s request, all Designated Material to the Producing
Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,
compilations, summaries or any other form of reproducing or capturing any of the Designated
Material. The Receiving Party must submit a written confirmation of the return or destruction to
the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-
day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of
all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other
proceedings (including exhibits), expert reports (including exhibits), discovery requests and
responses (including exhibits), exhibits offered or introduced into evidence at trial, legal
memoranda, correspondence or attorney work product, even if such materials contain Designated
PROTECTIVE ORDER 29 Dallas 279575279576v1
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Material. Any such archival copies that contain or constitute Designated Material remain subject
to this Protective Order as set forth in Section R (Duration), above.
U. Miscellaneous
50. Any of the notice requirements herein may be waived, in whole or in part, but
only by a writing signed by the Counsel of Record for the Party against whom such waiver will
be effective.
51. This Order is entered without prejudice to the right of any Party to apply to the
Court at any time for modification of this Order, when convenience or necessity requires.
Nothing in this Order abridges the right of any person to seek to assert other objections. No Party
waives any right it otherwise would have to object to disclosing or producing any information,
documents, or things on any ground not addressed in this Protective Order. Similarly, no Party
waives any right to object on any ground to the use in evidence of any of the material covered by
this Protective Order. The Court shall take appropriate measures to protect Designated Material
at trial and any hearing in this case.
52. This Order shall not diminish any existing obligation or right with respect to
Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in
writing before the disclosure takes place.
53. The United States District Court for the Eastern District of Texas, Marshall
Division, is responsible for the interpretation and enforcement of this Protective Order. All
disputes concerning Designated Material produced under the protection of this Protective Order
shall be resolved by the United States District Court for the Eastern District of Texas, Marshall
Division. Every individual who receives any Designated Material agrees to subject himself or
PROTECTIVE ORDER 30 Dallas 279575279576v1
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herself to the jurisdiction of this Court for the purpose of any proceedings related to performance
under, compliance with, or violation of this Order.
SIGNED this ___ day of ______, 2009.
________________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE
PROTECTIVE ORDER 31 Dallas 279575279576v1
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EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, __________________________________________ [print or type full name], state:
1. My business address is ;
2. My present employer is ;
3. My present occupation or job description is ;
4. I agree to keep confidential all information provided to me in the matter of Wi-
LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States
District Court for the Eastern District of Texas, Marshall Division, in accordance with the
restrictions in the Protective Order, and to be subject to the authority of that Court in the event of
any violation or dispute related to this Protective Order.
5. I have been informed of and have reviewed the Protective Order entered in this
case, and I will not divulge any information, documents or things that are subject to the
Protective Order except in accordance with the provisions of the Order;
6. 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]
PROTECTIVE ORDER, Exhibit A Dallas 279575279576v1
Case 2:07-cv-00473-TJW Document 322-4 Filed 06/09/2009 Page 33 of 35
EXHIBIT B
CERTIFICATION OF CONSULTANT
I, _______________________________________________ [print or type full name], of
_______________________________________________ am not an employee of the Party who
retained me or of a competitor of the opposing Party and will not use any information,
documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.
Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this
litigation. If at any time after I execute this Certificate of Consultant and during the pendency of
the Action and my retention , I decide to accept employment by a competitor of the opposing
Party, I will promptly (before I become employed) inform the counsel for the party who retained
me in the Action and the opposing party, and I will not thereafter review any Designated
Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the
Parties agree or the Court orders otherwise.
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]
PROTECTIVE ORDER, Exhibit B Dallas 279575279576v1
Case 2:07-cv-00473-TJW Document 322-4 Filed 06/09/2009 Page 34 of 35
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION WI-LAN, INC.
v.
ACER, INC., et al.
WI-LAN, INC.
v.
WESTELL TECHNOLOGIES, INC., et al.
§ § § § § § § § § § §
CIVIL ACTION NO. 2:07-CV-473 [TJW]
CONSOLIDATED WITH:
CIVIL ACTION NO. 2:07-CV-474 [TJW]
JURY TRIAL REQUESTED
PROTECTIVE ORDER
To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
over confidentiality of discovery materials, to adequately protect information the parties are
entitled to keep confidential, to ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and to ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
A. Definitions
1. “Party”: any party to this action, including all of its officers, directors, employees,
consultants, retained experts, and outside counsel (and their support staff).
2. “Material”: all information, documents, testimony, and things produced, served or
otherwise provided in this action by the Parties or by non-parties.
3. “Designating Party”: a Party or non-party that designates information, documents,
or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,
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“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or
“SUBJECT TO PROSECUTION BAR.”
4. “CONFIDENTIAL” Material: information, documents, and things the
Designating Party believes in good faith is not generally known to others, and that the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a
right to privacy under federal or state law, or any other applicable privilege or right related to
confidentiality or privacy.
5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things
the Designating Party believes in good faith 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 the Designating Party (i) would not normally reveal to third parties
except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in
good faith is significantly sensitive and protected by a right to privacy under federal or state law
or any other applicable privilege or right related to confidentiality or privacy.
6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or
other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in
good faith 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 the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly
sensitive and protected by a right to privacy under federal or state law, or any other applicable
privilege or right related to confidentiality or privacy. Any document designated as
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“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated
“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.
7. “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR
“SUBJECT TO PROSECUTION BAR”: these designations may be used only for
ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party believes
in good faith would create a substantial risk of serious injury if known to in-house attorneys or
other employees of a Receiving Party, including. but not limited to, among the following
categories of documents:
(a) a Designating Party’s source code and other technical documents
describing the structure and operation of the Designating Party’s products;
(b) a Designating Party’s research and development activities; and
(c) a Designating party’s business planning, development, and strategy
documents.
These designations, however, shall not be used for a Designating Party’s sales records
regarding its products, license agreements or related communications with parties to the
agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE
BAR” designation shall not be used for any document created prior to January 1, 2006.
8. “Producing Party”: a Party or non-party that produces Material in this action.
9. “Receiving Party”: a Party that receives Material from a Producing Party.
10. “Designated Material”: Material that is designated “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under
this Order.
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11. “Counsel of Record”: (i) outside counsel who appears on the pleadings 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 as a consultant in this action, 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 a Party or of a competitor of a Party.
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 a Party or of a competitor of a Party. This
definition includes ESI vendors, professional jury or trial consultants retained in connection with
this litigation, and mock jurors retained by such consultants to assist them in their work.
Professional vendors do not include consultants who fall within the definition of Outside
Consultant.
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B. Scope
14. The protections conferred by this Order cover not only Designated Material (as
defined above), but also any information copied or extracted therefrom, as well as all copies,
excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided
in the Docket Control Order and Discovery Order. Identification of any individual pursuant to
this Protective Order does not make that individual available for deposition, or any other form of
discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the
Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District
Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in
the Docket Control Order and Discovery Order.
C. Access To Designated Material
15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted
in writing by the Designating Party, a Receiving Party may disclose any information, document
or thing designated “CONFIDENTIAL” only to:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) Up to three (3) employees of a Receiving Party (including a parent
company of a Receiving Party), and necessary secretarial staff, who are
responsible for providing oversight of or assistance in the litigation, who
have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed
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copy to all Parties prior to receiving Designated Material, however, as to
Designated Material from third parties, absent a court order or agreement
of the third party, Designated Material from third parties may not be
disclosed to employees of a Receiving Party;
(d) If any Receiving Party believes that more than three (3) employees require
access to confidential material, that party may negotiate the issue directly
with the Producing Party;
(e) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(f) Witnesses at deposition and/or trial, provided that such witnesses may not
retain copies of Designated Material unless permitted by other provisions
of this Order;
(g) The Court and its personnel;
(h) 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, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(i) Court reporters and videographers employed in connection with this case;
and
PROTECTIVE ORDER 6 Dallas 279576v1
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(j) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose any information, documents or things
designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE
CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below
regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) For "ATTORNEYS' EYES ONLY" material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house
foreign patent attorneys) of each Receiving Party or their respective parent companies, and
necessary secretarial staff, having responsibility for providing oversight of or assistance in the
litigation, provided that each such attorney must keep all such documents and information in
segregated files access to which is restricted to the designated attorney and necessary secretarial
staff. The designated in-house attorneys will not have access to any information about any
Defendant Producing Party’s current or future products that are not accused of infringement in
this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to
review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no
PROTECTIVE ORDER 7 Dallas 279576v1
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circumstances shall Defendants' in-house attorneys or employees be permitted access to or be
allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant,
unless so authorized by the Producing Party. Nothing in this section restricts designated in-
house attorneys' access to information concerning their own companies' current or future
products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to
receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have
in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of
Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance
in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior
to receiving Designated Material. The substituted employees shall have the same duties and
obligations of in-house counsel who are designated under this paragraph. Defendants Sony
Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two
(2) employees of their parent companies and their necessary secretarial staff having
responsibility for providing oversight of or assistance in the litigation, who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.
The substituted employees shall have the same duties and obligations of in-house counsel who
are designated under this paragraph;
With respect to Designated Material from third parties or for which third party
permission is required for production, absent a court order or agreement of the third party, such
Designated Material may not be disclosed to employees of a Receiving Party;
PROTECTIVE ORDER 8 Dallas 279576v1
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This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE
CODE," “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR “SUBJECT
TO PROSECUTION BAR.”
(a) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(b) The Court and its personnel;
(c) Any designated arbitrator or mediator who is assigned to hear this matter,
or who has been selected by the Parties, and his or her staffs, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(d) Court reporters and videographers employed in connection with this case;
and
(e) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the
firewall of a firm representing the Receiving Party, or outside the system of a professional ESI
Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”
PROTECTIVE ORDER 9 Dallas 279576v1
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Material also cannot be sent or transmitted to any person, location, or vendor outside of the
United States except to Counsel of Record and Outside Consultants designated in subparagraph
(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or
to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of
the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic
format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.
17. Each person to whom Designated Material may be disclosed, and who is required
to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as
Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.
Counsel for a Party who makes any disclosure of Designated Material shall retain each original
executed certificate and, upon written request, shall provide copies to counsel to all other Parties
at the termination of this action.
18. At the request of the Designating Party, persons not permitted access to
Designated Material under the terms of this Protective Order shall not be present at depositions
while the Designating Party’s Designated 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 Material from disclosure to persons not authorized to have access to such
Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
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D. Access By Outside Consultants
19. Notice. If a Receiving Party wishes to disclose another Party’s Designated
Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the
Designating Party, 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; and (h) a signed copy of the “Acknowledgement and
Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B.
20. Objections. The Designating Party shall have five (5) business days from receipt
of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra
days if notice is given other than by hand delivery, e-mail transmission or facsimile
transmission). Any such objection must set forth in detail the grounds on which it is based. After
the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,
then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of
this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if
appropriate) period, the Receiving Party may not disclose Designated Material to the challenged
individual absent resolution of the dispute or Court Order. In the event the Designating Party
makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter
by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)
business days following the meet and confer, file a motion for a protective order preventing
PROTECTIVE ORDER 11 Dallas 279576v1
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disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the
objecting party fails to file a motion for protective order within the prescribed period, any
objection to the Outside Consultant is waived, and Designated Material may thereafter be
disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound
By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion
for a protective order, Designated Material shall not be disclosed to the challenged individual
until and unless a final ruling allowing such disclosure is made by this Court, or by the consent
of the Objecting party, whichever occurs first.
E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material
21. Source code.
(a) Unless otherwise agreed to in writing between the Producing Party and the
Receiving Party or otherwise produced by the Producing Party directly to
the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’
EYES ONLY - SOURCE CODE” is to be made available for inspection,
SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –
SOURCE CODE” shall only be provided, upon request, on at least three
stand-alone computers (that is, computers not connected to a network,
Internet or a peripheral device) at secure locations, to be made available
during regular business hours (9:00 am to 5:00 pm, local time) on
reasonable notice of at least two business days, absent exigent
circumstances or otherwise agreed to by the Producing Party. The parties
agree to provide access from 5:00 p.m. through midnight local time on
weekdays and will meet and confer individually in good faith to provide
PROTECTIVE ORDER 12 Dallas 279576v1
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such access. Upon reasonable notice, the parties agree to provide
reasonable access to secure locations on Saturdays and Sundays and will
meet and confer individually in good faith to provide such access. The
Receiving Party is expected and agrees to make reasonable efforts to
restrict its access to normal business hours except where necessary to
accommodate the work schedules of its source code reviewers. The
Producing Party is expected and agrees to reasonably permit after hours
and weekend access to accommodate such circumstances. At the
Producing Party’s selection, the secure locations will be either in
California, Texas, and/or New York. The secure locations will be at the
offices of Counsel of Record, the offices of the producing party, or an
escrow facility. If the production of source code is at an escrow facility,
all reasonable costs associated therewith will be shared equally between
the Receiving Party and the Producing Party other than costs associated
with software for reviewing the source code which shall be paid for by the
party requesting such software. If the production of source code is at a
location other than an escrow facility, the costs associated with software
for reviewing the SOURCE CODE shall be paid for by the party
requesting such software. Upon written request by the Receiving Party,
beginning one week prior to the beginning of trial and continuing through
the end of trial, access to the source code must be provided under the same
conditions and with the same limitations and restrictions as provided in
this Paragraph in Marshall, Texas.
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(b) The Receiving Party (including all experts, consultants, lawyers retained
by the Receiving Party who may review the source code under this
Protective Order) may use and, to the extent necessary, load onto the
secure computer(s) searching or analytical tools for inspection of the
source code, so long as the searching or other analytical tools for
inspection of the source code is disclosed by the Requesting Party at least
two (2) business days in advance of the inspection, providing however that
the Producing Party reserves all objections to any such searching or
analytical tools. The Receiving Party may create a back-up copy of the
source code on the stand-alone computer(s). The searching or analytical
tools may annotate, number the lines of, and label the pages of, the back-
up copy of the code. Any back-up copies will remain on the stand-alone
computer(s) and be subject to all of the provisions of this Protective Order.
The Receiving Party is permitted to use a laptop computer to take notes,
record observations, etc., so long as the laptop computer is never
connected to the stand-alone computer(s) and is not used to record the
source code itself.
(c) The Producing Party must enable the Receiving Party to print paper copies
of code at the time of inspection by the Receiving Party. Furthermore, the
parties will also exchange (by hand delivery or overnight delivery) copies
of the paper copies of source code to be used as exhibits for court
proceedings, expert reports, and at depositions, when so used. These
additional copies will be treated the same as the original print outs.
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22. The Producing Party will produce source code in computer searchable format at
the secure location in the manner described above in Paragraph 20, but need not produce
executable code, unless requested by the Receiving Party. The Producing Party also need not
produce prior versions of the source code, unless requested by the Receiving Party. All source
code produced shall be organized in one or more separate directories corresponding to accused
product(s) and/or accused model numbers or in the same directory structure as the source code is
kept and/or compiled in the ordinary course of business. Further, to the extent files for one
particular version of source code are grouped together in a single folder in the ordinary course of
the Producing Party's business, the Producing Party shall produce the source code in that manner.
If, for any reasons, source code files are not produced for review, but, in the Receiving Party’s
sole determination, such missing source code is deemed to be necessary to understand the
operation of the accused products, the parties agree to promptly meet and confer over the
production of any and all missing source code files requested by the Receiving Party in a timely
manner in the format described above. The Producing Party shall not undertake any effort to
determine which pages or portions of source code have been reviewed. The Producing Party
shall not videotape the actual review of the source code by the Receiving Party. The Producing
Party is permitted to audit the review of the source code by the Receiving Party from time to
time with reasonable advance notice (e.g., a knock on the door of the room at the secure
location), but will not interfere with any work-product or listen to other private communications
between the Receiving Party reviewing the source code.
23. The Producing Party will enable the Receiving Party to print paper copies of
specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE
CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take
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when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access
Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the
secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date
and time of access; (3) the length of time of access; and (4) whether any hard copies of any
portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly
Bates label the printed portions of the code and provide a copy to the Receiving Party. The
Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire
code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall
maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE
designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number
and confidentiality labels when printed. The Receiving Party or Outside Consultants of the
Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of
the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also
temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to
the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the
Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a
hotel prior to a deposition).
F. Financial Summaries
24. For the mutual convenience of the parties, a Producing Party may generate certain
financial summaries for the purpose of this litigation. To the extent a Producing Party produces
such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the
extent a Receiving Party puts any such financial summary or the information from any such
financial summary into a document in a digital format, the Receiving Party shall password
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protect that document on an encrypted media. To the extent that any such financial summaries
are transmitted from or to authorized recipients outside of the Receiving Party’s Outside
Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal
Express), or by encrypted electronic means.
G. Prosecution Bar
25. Unless otherwise agreed to in writing between a Producing Party and a Receiving
Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who
personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”
or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the
Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or
prosecution before a Patent Office of any patent, patent application, or for drafting or revising
patent claims (excluding such activities conducted in the context of post-grant adversarial
proceedings including reexamination or opposition proceedings filed in relation to the patents-in-
suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,
semiconductors, microchips or microprocessors of any type, or products incorporating those
items, from the time of receipt of such material through and including one (1) year following the
first to occur of (i) the complete resolution of this case through entry of a final non-appealable
judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims
against the Producing Party in this action; or (iii) the individual person(s) cease to represent the
Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any
obligations or restrictions set forth in Paragraph 25 below.
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H. Use Of Designated Material
26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the
Court, or agreed to in writing by the Parties, all Designated Material, and all information derived
therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not
be used in any other way, or for any other purpose, including the acquisition, preparation or
prosecution before the Patent Office of any patent, patent application, for drafting or revising
patent claims, or in connection with patent licensing. Information contained or reflected in
Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,
in court or in other settings that might reveal Designated Material, except in accordance with the
terms of this Order.
27. Use Of Designated Material By Designating Party. Nothing in this Order shall
limit any Designating Party’s use of its own documents and information, nor shall it prevent the
Designating Party from disclosing its own confidential information, documents or things to any
person. Such disclosure shall not affect any designations made pursuant to the terms of this
Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the
confidentiality of the information.
28. Use of Designated Material at Depositions. Except as may be otherwise ordered
by the Court, any person may be examined as a witness at depositions and trial, and may testify
concerning all Designated Material of which such person has prior knowledge, without in any
way limiting the generality of the following
(a) A present director, officer, employee, designated Rule 30(6)(b) witness,
and/or Outside Consultant of a Producing Party may be examined, and
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may testify concerning all Designated Material that has been produced by
that party;
(b) A former director, officer, agent and/or employee of a Producing Party
may be interviewed, examined and may testify concerning all Designated
Material of which he or she has prior knowledge, including any
Designated Material that refers to matters of which the witness has
personal knowledge, that has been produced by that Party and that pertains
to the period or periods of his or her employment; and
(c) Non-parties may be examined or may testify concerning any document
containing Designated Material of a Producing Party that appears on its
face, or from other documents or testimony, to have been received from,
or communicated to, the non-party as a result of any contact or
relationship with the Producing Party, or a representative of such
Producing Party. Any person other than the witness, his or her attorney(s),
and any person qualified to receive Designated Material under this Order,
shall be excluded from the portion of the examination concerning such
information, unless the Producing Party consents to persons other than
qualified recipients being present at the examination. If the witness is
represented by an attorney who is not qualified under this Order to receive
such information, then prior to the examination, the attorney shall be
requested to sign the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached as Exhibit A. In the event that such attorney
declines to sign the Acknowledgement and Agreement To Be Bound By
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Protective Order prior to the examination, the parties, by their attorneys,
shall jointly seek a protective order from the Court prohibiting such
attorney from disclosing such Designated Material.
29. A witness who previously had access to a document designated “ATTORNEYS’
EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a
present non-disclosure agreement with the Producing Party that covers that document, may be
shown the document if the witness is advised on the record of the existence of the Protective
Order and that the protective order requires the parties to keep confidential any questions,
testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,
take notes on or retain copies of any Designated Material used or reviewed at the deposition. The
witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The
Producing Party of any Designated Material used at the deposition may also require that the
transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of
the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the
witness in the offices of one of the counsel representing a party in this case (or another firm
acting for one of the counsel representing a party in this case and under the supervision of one of
the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply
only to a witness who is not subject to this Order.
I. Procedure for Designating Materials
30. Subject to the limitations set forth in this Order, a Designating Party may:
designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,
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meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”
information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;
designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in
good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO
PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth
in Paragraph 24 above.
31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES
ONLY – SOURCE CODE” Material, any material (including physical objects) made available
for initial inspection by counsel for the Receiving Party prior to producing copies of selected
items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”
information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten
(10) calendar days from the inspection to review and designate the appropriate documents as
“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION
BAR” prior to furnishing copies to the Receiving Party.
32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,
Material that qualifies for protection under this Order must be designated in accordance with this
Section I before the Material is disclosed or produced.
33. Designation in conformity with this Order shall be made as follows:
(a) For information in documentary form (apart from transcripts of
depositions, or other pretrial or trial proceedings), the Producing Party
shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if
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appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that
contains Designated Material.
(b) For testimony given in deposition, or in other pretrial or trial proceedings,
the Designating Party shall specify any portions of the testimony that it
wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of
depositions, the Designating Party may also designate any portion of a
deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES
ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR” by informing the
reporter, and opposing Parties, in writing within thirty (30) calendar days
of completion of the deposition of the designations to be applied. All
deposition transcripts not marked at least “CONFIDENTIAL” during the
deposition will nonetheless be treated as “CONFIDENTIAL” until the
thirty (30) day period has expired. Transcript pages containing Designated
Material must be separately bound by the court reporter, who must affix to
the top of each such page the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION
BAR,” as instructed by the Designating Party.
(c) For information produced in some form other than documentary, and for
any other tangible items, the Producing Party shall affix in a prominent
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place on the exterior of the container or containers in which the
information or thing is stored the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION
BAR”.
(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents
produced in native format. For documents produced in native format, the
parties shall provide written notice to the Receiving Party of any
confidentiality designations at the time of production.
J. No Waiver of Privilege
34. Subject to the provisions of Federal Rule of Evidence 502, inspection or
production of documents (including physical objects) shall not constitute a waiver of the
attorney-client privilege, work product immunity, or any other applicable privilege or immunity,
if, after the Producing Party becomes aware of any such disclosure, the Producing Party
designates any such documents as within the attorney-client privilege, work product immunity or
any other applicable privilege or immunity, and requests in writing return of such documents to
the Producing Party. Upon request by the Producing Party, the Receiving Party shall
immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the
Receiving Party from challenging the propriety of the attorney-client privilege, work product
immunity or other applicable privilege or immunity designation by submitting a written
challenge to the Court; provided, however, that such challenge shall not assert as a ground for
challenge the fact of the initial production or inspection of the documents later designated as
attorney-client privileged, work product, or subject to another applicable privilege or immunity.
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K. Inadvertent Failure To Designate
35. An inadvertent failure to designate qualified information, documents or things as
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –
SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive
the Designating Party’s right to secure protection under this Order for such material. Upon
discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving
Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’
EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,
“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must
make reasonable efforts to assure that the material is treated in accordance with the terms of this
Order, subject to the right to challenge the propriety of such designation(s). The Producing Party
shall provide substitute copies of documents bearing the confidentiality designation.
L. Filing Designated Material
36. Without written permission from the Designating Party or a Court Order secured
after appropriate notice to all interested persons, a Party may not file in the public record in this
action any Designated Material, but must file such Designated Material under seal in
conformance with the Court’s rules and procedures. Material filed under seal shall bear the title
of this matter, an indication of the nature of the contents of such sealed filing, the words
“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’
EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES
ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as
appropriate, and a statement substantially in the following form:
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This filing contains confidential information filed in this case by (name of party) and its
contents shall not be displayed or revealed except by order of the Court presiding over this
matter.
M. Challenges to Confidentiality Designations
37. The Parties will use reasonable care when designating documents or information
as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall
prevent a Receiving Party from contending that any or all documents or information designated
as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’
EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”
Material have been improperly designated. A Receiving Party may, at any time, request that the
Producing Party cancel or modify the confidentiality designation with respect to any document
or information contained therein.
38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and
“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so
shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be
served on counsel for the Producing Party, and shall identify particularly the documents or
information that the Receiving Party contends should be differently designated. The parties shall
use their best efforts to resolve promptly and informally such disputes in accordance with all
applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party
shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES
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ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT
TO PROSECUTION BAR” designation.
N. Protected Material Subpoenaed or Ordered Produced In Other Litigation
39. 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
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, the Receiving Party must so notify the Designating Party, 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. The
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
Protective Order. In addition, the Receiving Party must deliver a copy of this 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 Protective Order
and to afford the Designating Party in this case an opportunity to try to protect its confidentiality
interests in the court from which the subpoena or order issued. The Designating Party shall bear
the burdens and the expenses of seeking protection in that court of its Designated Material.
Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party
in this action to disobey a lawful directive from another court.
O. Unauthorized Disclosure Of Designated Material
40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Designated Material to any person or in any circumstance not authorized under this Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
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disclosures, (b) use its best efforts to retrieve all copies of the Designated 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 “Acknowledgment and Agreement to Be
Bound” that is attached hereto as Exhibit A.
P. Non-Party Use of this Protective Order
41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a
court order, may designate such Material in the same manner, and shall receive the same level of
protection under this Protective Order, as any Party to this lawsuit.
42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material produced by any Party in this case.
Q. Discovery from Outside Consultants
43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be
subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that
the testifying expert prepared in other cases be subject to discovery in this case.
44. Discovery of materials provided to testifying experts shall be limited to those
materials, facts, consulting expert opinions, and other matters actually relied upon by the
testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in
this case. No discovery can be taken from any consulting expert who does not testify, except to
the extent that consulting expert has provided information, opinions or other materials to a
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testifying expert, who then relies upon such information, opinions or other materials in forming
his or her final report, trial or deposition testimony or any opinion in this case.
45. No conversations or communications between Counsel of Record and any
testifying or consulting expert will be subject to discovery unless the conversations or
communications are relied upon by such experts in formulating opinions that are presented in
reports, trial or deposition testimony in this case.
46. Materials, communications (including email) and other information exempt from
discovery under the foregoing Paragraphs shall be treated as attorney-work product for the
purposes of this litigation and Protective Order.
R. Communications between Party and Counsel of Record
47. The parties agree that the following privileged or protected communications
occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or
produced in this case except as required under Patent Local Rule 3-7:
(a) communications solely between Wi-LAN and its outside or in-house
counsel regarding litigation or potential litigation over the patents-in-suit
in which Wi-LAN became a party, or litigation or potential litigation over
any other patents allegedly owned or asserted by Wi-LAN; and
(b) communications solely
(1) between a Defendant (or its respective parent company) and its outside counsel;
(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or
(3) among in-house or outside counsel for Defendants (or their respective parent companies);
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regarding litigation or potential litigation over the patents-in-suit in which the communicating
Defendants became parties, or litigation or potential litigation over any other patents allegedly
owned or asserted by Wi-LAN.
The above agreements are without prejudice to any party’s ability to make a
particularized request for a limited log relating to specific documents, upon an appropriate
showing of potential discoverability of the documents over privilege or protection objections.
S. Duration
48. Even after the termination of this action, the confidentiality obligations imposed
by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
court order otherwise directs.
T. Final Disposition
49. Unless otherwise ordered or agreed in writing by the Producing Party, within
sixty (60) calendar days after the final termination of this action, each Receiving Party must
destroy or return, at the Producing Party’s request, all Designated Material to the Producing
Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,
compilations, summaries or any other form of reproducing or capturing any of the Designated
Material. The Receiving Party must submit a written confirmation of the return or destruction to
the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-
day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of
all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other
proceedings (including exhibits), expert reports (including exhibits), discovery requests and
responses (including exhibits), exhibits offered or introduced into evidence at trial, legal
memoranda, correspondence or attorney work product, even if such materials contain Designated
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Material. Any such archival copies that contain or constitute Designated Material remain subject
to this Protective Order as set forth in Section R (Duration), above.
U. Miscellaneous
50. Any of the notice requirements herein may be waived, in whole or in part, but
only by a writing signed by the Counsel of Record for the Party against whom such waiver will
be effective.
51. This Order is entered without prejudice to the right of any Party to apply to the
Court at any time for modification of this Order, when convenience or necessity requires.
Nothing in this Order abridges the right of any person to seek to assert other objections. No Party
waives any right it otherwise would have to object to disclosing or producing any information,
documents, or things on any ground not addressed in this Protective Order. Similarly, no Party
waives any right to object on any ground to the use in evidence of any of the material covered by
this Protective Order. The Court shall take appropriate measures to protect Designated Material
at trial and any hearing in this case.
52. This Order shall not diminish any existing obligation or right with respect to
Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in
writing before the disclosure takes place.
53. The United States District Court for the Eastern District of Texas, Marshall
Division, is responsible for the interpretation and enforcement of this Protective Order. All
disputes concerning Designated Material produced under the protection of this Protective Order
shall be resolved by the United States District Court for the Eastern District of Texas, Marshall
Division. Every individual who receives any Designated Material agrees to subject himself or
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herself to the jurisdiction of this Court for the purpose of any proceedings related to performance
under, compliance with, or violation of this Order.
SIGNED this ___ day of ______, 2009.
________________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE
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EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, __________________________________________ [print or type full name], state:
1. My business address is ;
2. My present employer is ;
3. My present occupation or job description is ;
4. I agree to keep confidential all information provided to me in the matter of Wi-
LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States
District Court for the Eastern District of Texas, Marshall Division, in accordance with the
restrictions in the Protective Order, and to be subject to the authority of that Court in the event of
any violation or dispute related to this Protective Order.
5. I have been informed of and have reviewed the Protective Order entered in this
case, and I will not divulge any information, documents or things that are subject to the
Protective Order except in accordance with the provisions of the Order;
6. 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]
PROTECTIVE ORDER, Exhibit A Dallas 279576v1
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EXHIBIT B
CERTIFICATION OF CONSULTANT
I, _______________________________________________ [print or type full name], of
_____________________________________________ am not an employee of the Party who
retained me or of a competitor of the opposing Party and will not use any information,
documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.
Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this
litigation. If at any time after I execute this Certificate of Consultant and during the pendency of
the Action and my retention, I decide to accept employment by a competitor of the opposing
Party, I will promptly (before I become employed) inform the counsel for the party who retained
me in the Action and the opposing party, and I will not thereafter review any Designated
Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the
Parties agree or the Court orders otherwise.
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]
PROTECTIVE ORDER, Exhibit B Dallas 279576v1
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WI-LAN, INC.
v.
ACER, INC., et al.
WI-LAN, INC.
v.
WESTELL TECHNOLOGIES, INC., et al.
§ § § § § § § § § § §
CIVIL ACTION NO. 2:07-CV-473 [TJW]
CONSOLIDATED WITH:
CIVIL ACTION NO. 2:07-CV-474 [TJW]
JURY TRIAL REQUESTED
PROTECTIVE ORDER
To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
over confidentiality of discovery materials, to adequately protect information the parties are
entitled to keep confidential, to ensure that only materials the parties are entitled to keep
confidential are subject to such treatment, and to ensure that the parties are permitted reasonably
necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.
Civ. P. 26(c), it is hereby ORDERED THAT:
A. Definitions
1. “Party”: any party to this action, including all of its officers, directors, employees,
consultants, retained experts, and outside counsel (and their support staff).
2. “Material”: all information, documents, testimony, and things produced, served or
otherwise provided in this action by the Parties or by non-parties.
3. “Designating Party”: a Party or non-party that designates information, documents,
or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,
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“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or
“SUBJECT TO PROSECUTION BAR.”
4. “CONFIDENTIAL” Material: information, documents, and things the
Designating Party believes in good faith is not generally known to others, and that the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a
right to privacy under federal or state law, or any other applicable privilege or right related to
confidentiality or privacy.
5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things
the Designating Party believes in good faith 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 the Designating Party (i) would not normally reveal to third parties
except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in
good faith is significantly sensitive and protected by a right to privacy under federal or state law
or any other applicable privilege or right related to confidentiality or privacy.
6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or
other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in
good faith 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 the
Designating Party (i) would not normally reveal to third parties except in confidence, or has
undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly
sensitive and protected by a right to privacy under federal or state law, or any other applicable
privilege or right related to confidentiality or privacy. Any document designated as
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“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated
“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.
7. “SUBJECT TO PROSECUTION BAR”: this designation may be used only for
ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party believes
in good faith would create a substantial risk of serious injury if known to in-house attorneys or
other employees of a Receiving Party, including. but not limited to, among the following
categories of documents:
(a) a Designating Party’s source code and other technical documents
describing the structure and operation of the Designating Party’s products;
(b) a Designating Party’s research and development activities; and
(c) a Designating party’s business planning, development, and strategy
documents. This designations, however, shall not be used for a
Designating Party’s sales records regarding its products,license
agreements or related communications with parties to the agreements.
8. “Producing Party”: a Party or non-party that produces Material in this action.
9. “Receiving Party”: a Party that receives Material from a Producing Party.
10. “Designated Material”: Material that is designated “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under
this Order.
11. “Counsel of Record”: (i) outside counsel who appears on the pleadings 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,
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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 as a consultant in this action, 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 a Party or of a competitor of a Party.
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 a Party or of a competitor of a Party. This
definition includes ESI vendors, professional jury or trial consultants retained in connection with
this litigation, and mock jurors retained by such consultants to assist them in their work.
Professional vendors do not include consultants who fall within the definition of Outside
Consultant.
B. Scope
14. The protections conferred by this Order cover not only Designated Material (as
defined above), but also any information copied or extracted therefrom, as well as all copies,
excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided
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in the Docket Control Order and Discovery Order. Identification of any individual pursuant to
this Protective Order does not make that individual available for deposition, or any other form of
discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the
Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District
Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in
the Docket Control Order and Discovery Order.
C. Access To Designated Material
15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted
in writing by the Designating Party, a Receiving Party may disclose any information, document
or thing designated “CONFIDENTIAL” only to:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) Up to three (3) employees of a Receiving Party (including a parent
company of a Receiving Party), and necessary secretarial staff, who are
responsible for providing oversight of or assistance in the litigation, who
have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed
copy to all Parties prior to receiving Designated Material, however, as to
Designated Material from third parties, absent a court order or agreement
of the third party, Designated Material from third parties may not be
disclosed to employees of a Receiving Party;
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(d) If any Receiving Party believes that more than three (3) employees require
access to confidential material, that party may negotiate the issue directly
with the Producing Party;
(e) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(f) Witnesses at deposition and/or trial, provided that such witnesses may not
retain copies of Designated Material unless permitted by other provisions
of this Order;
(g) The Court and its personnel;
(h) 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, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(i) Court reporters and videographers employed in connection with this case;
and
(j) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
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16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose any information, documents or things
designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE
CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below
regarding use of Designated Material at depositions:
(a) Persons who appear on the face of Designated Material as an author,
addressee or recipient thereof;
(b) Counsel of Record;
(c) For “ATTORNEYS’ EYES ONLY” material:
With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house
foreign patent attorneys) of each Receiving Party or their respective parent companies, and
necessary secretarial staff, having responsibility for providing oversight of or assistance in the
litigation, provided that each such attorney must keep all such documents and information in
segregated files access to which is restricted to the designated attorney and necessary secretarial
staff. The designated in-house attorneys will not have access to any information about any
Defendant Producing Party’s current or future products that are not accused of infringement in
this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to
review only ATTORNEYS’ EYES ONLY information produced by Wi-LAN and that under no
circumstances shall Defendants’ in-house attorneys or employees be permitted access to or be
allowed to review ATTORNEYS’ EYES ONLY information produced by any other Defendant,
unless so authorized by the Producing Party. Nothing in this section restricts designated in-
house attorneys’ access to information concerning their own companies’ current or future
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products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to
receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have
in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of
Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance
in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior
to receiving Designated Material. The substituted employees shall have the same duties and
obligations of in-house counsel who are designated under this paragraph. Defendants Sony
Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two
(2) employees of their parent companies and their necessary secretarial staff having
responsibility for providing oversight of or assistance in the litigation, who have signed the
“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.
The substituted employees shall have the same duties and obligations of in-house counsel who
are designated under this paragraph;
With respect to Designated Material from third parties or for which third party
permission is required for production, absent a court order or agreement of the third party, such
Designated Material may not be disclosed to employees of a Receiving Party;
This subparagraph (c) does not apply to “ATTORNEYS’ EYES ONLY - SOURCE
CODE” material OR “SUBJECT TO PROSECUTION BAR.”
(a) Outside Consultants of the Receiving Party to whom disclosure is
reasonably necessary for this litigation, and who have signed the
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“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A, and the “Certification Of Consultant”
attached hereto as Exhibit B;
(b) The Court and its personnel;
(c) Any designated arbitrator or mediator who is assigned to hear this matter,
or who has been selected by the Parties, and his or her staffs, who have
signed the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached hereto as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B;
(d) Court reporters and videographers employed in connection with this case;
and
(e) Professional Vendors to whom disclosure is reasonably necessary for this
litigation, and a representative of which has signed the
“Acknowledgement and Agreement To Be Bound By Protective Order”
attached hereto as Exhibit A.
“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the
firewall of a firm representing the Receiving Party, or outside the system of a professional ESI
Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”
Material also cannot be sent or transmitted to any person, location, or vendor outside of the
United States except to Counsel of Record and Outside Consultants designated in subparagraph
(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or
to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of
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the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic
format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.
17. Each person to whom Designated Material may be disclosed, and who is required
to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached
hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as
Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.
Counsel for a Party who makes any disclosure of Designated Material shall retain each original
executed certificate and, upon written request, shall provide copies to counsel to all other Parties
at the termination of this action.
18. At the request of the Designating Party, persons not permitted access to
Designated Material under the terms of this Protective Order shall not be present at depositions
while the Designating Party’s Designated 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 Material from disclosure to persons not authorized to have access to such
Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
D. Access By Outside Consultants
19. Notice. If a Receiving Party wishes to disclose another Party’s Designated
Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the
Designating Party, 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
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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; and (h) a signed copy of the “Acknowledgement and
Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of
Consultant” attached hereto as Exhibit B.
20. Objections. The Designating Party shall have five (5) business days from receipt
of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra
days if notice is given other than by hand delivery, e-mail transmission or facsimile
transmission). Any such objection must set forth in detail the grounds on which it is based. After
the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,
then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of
this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if
appropriate) period, the Receiving Party may not disclose Designated Material to the challenged
individual absent resolution of the dispute or Court Order. In the event the Designating Party
makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter
by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)
business days following the meet and confer, file a motion for a protective order preventing
disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the
objecting party fails to file a motion for protective order within the prescribed period, any
objection to the Outside Consultant is waived, and Designated Material may thereafter be
disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound
By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion
for a protective order, Designated Material shall not be disclosed to the challenged individual
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until and unless a final ruling allowing such disclosure is made by this Court, or by the consent
of the Objecting party, whichever occurs first.
E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material
21. Source code.
(a) Unless otherwise agreed to in writing between the Producing Party and the
Receiving Party or otherwise produced by the Producing Party directly to
the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’
EYES ONLY - SOURCE CODE” is to be made available for inspection,
SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –
SOURCE CODE” shall only be provided, upon request, on at least three
stand-alone computers (that is, computers not connected to a network,
Internet or a peripheral device) at secure locations, to be made available
during regular business hours (9:00 am to 5:00 pm, local time) on
reasonable notice of at least two business days, absent exigent
circumstances or otherwise agreed to by the Producing Party. The parties
agree to provide access from 5:00 p.m. through midnight local time on
weekdays and will meet and confer individually in good faith to provide
such access. Upon reasonable notice, the parties agree to provide
reasonable access to secure locations on Saturdays and Sundays and will
meet and confer individually in good faith to provide such access. The
Receiving Party is expected and agrees to make reasonable efforts to
restrict its access to normal business hours except where necessary to
accommodate the work schedules of its source code reviewers. The
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Producing Party is expected and agrees to reasonably permit after hours
and weekend access to accommodate such circumstances. At the
Producing Party’s selection, the secure locations will be either in
California, Texas, and/or New York. The secure locations will be at the
offices of Counsel of Record, the offices of the producing party, or an
escrow facility. If the production of source code is at an escrow facility,
all reasonable costs associated therewith will be shared equally between
the Receiving Party and the Producing Party other than costs associated
with software for reviewing the source code which shall be paid for by the
party requesting such software. If the production of source code is at a
location other than an escrow facility, the costs associated with software
for reviewing the SOURCE CODE shall be paid for by the party
requesting such software. Upon written request by the Receiving Party,
beginning one week prior to the beginning of trial and continuing through
the end of trial, access to the source code must be provided under the same
conditions and with the same limitations and restrictions as provided in
this Paragraph in Marshall, Texas.
(b) The Receiving Party (including all experts, consultants, lawyers retained
by the Receiving Party who may review the source code under this
Protective Order) may use and, to the extent necessary, load onto the
secure computer(s) searching or analytical tools for inspection of the
source code, so long as the searching or other analytical tools for
inspection of the source code is disclosed by the Requesting Party at least
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two (2) business days in advance of the inspection, providing however that
the Producing Party reserves all objections to any such searching or
analytical tools. The Receiving Party may create a back-up copy of the
source code on the stand-alone computer(s). The searching or analytical
tools may annotate, number the lines of, and label the pages of, the back-
up copy of the code. Any back-up copies will remain on the stand-alone
computer(s) and be subject to all of the provisions of this Protective Order.
The Receiving Party is permitted to use a laptop computer to take notes,
record observations, etc., so long as the laptop computer is never
connected to the stand-alone computer(s) and is not used to record the
source code itself.
(c) The Producing Party must enable the Receiving Party to print paper copies
of code at the time of inspection by the Receiving Party. Furthermore, the
parties will also exchange (by hand delivery or overnight delivery) copies
of the paper copies of source code to be used as exhibits for court
proceedings, expert reports, and at depositions, when so used. These
additional copies will be treated the same as the original print outs.
22. The Producing Party will produce source code in computer searchable format at
the secure location in the manner described above in Paragraph 20, but need not produce
executable code, unless requested by the Receiving Party. The Producing Party also need not
produce prior versions of the source code, unless requested by the Receiving Party. All source
code produced shall be organized in one or more separate directories corresponding to accused
product(s) and/or accused model numbers or in the same directory structure as the source code is
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kept and/or compiled in the ordinary course of business. Further, to the extent files for one
particular version of source code are grouped together in a single folder in the ordinary course of
the Producing Party’s business, the Producing Party shall produce the source code in that
manner. If, for any reasons, source code files are not produced for review, but, in the Receiving
Party’s sole determination, such missing source code is deemed to be necessary to understand the
operation of the accused products, the parties agree to promptly meet and confer over the
production of any and all missing source code files requested by the Receiving Party in a timely
manner in the format described above. The Producing Party shall not undertake any effort to
determine which pages or portions of source code have been reviewed. The Producing Party
shall not videotape the actual review of the source code by the Receiving Party. The Producing
Party is permitted to audit the review of the source code by the Receiving Party from time to
time with reasonable advance notice (e.g., a knock on the door of the room at the secure
location), but will not interfere with any work-product or listen to other private communications
between the Receiving Party reviewing the source code.
23. The Producing Party will enable the Receiving Party to print paper copies of
specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE
CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take
when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access
Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the
secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date
and time of access; (3) the length of time of access; and (4) whether any hard copies of any
portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly
Bates label the printed portions of the code and provide a copy to the Receiving Party. The
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Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire
code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall
maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE
designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number
and confidentiality labels when printed. The Receiving Party or Outside Consultants of the
Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of
the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also
temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to
the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the
Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a
hotel prior to a deposition).
F. Financial Summaries
24. For the mutual convenience of the parties, a Producing Party may generate certain
financial summaries for the purpose of this litigation. To the extent a Producing Party produces
such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the
extent a Receiving Party puts any such financial summary or the information from any such
financial summary into a document in a digital format, the Receiving Party shall password
protect that document on an encrypted media. To the extent that any such financial summaries
are transmitted from or to authorized recipients outside of the Receiving Party’s Outside
Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal
Express), or by encrypted electronic means.
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G. Prosecution Bar
25. Unless otherwise agreed to in writing between a Producing Party and a Receiving
Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who
personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”
or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the
Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or
prosecution before a Patent Office of any patent, patent application, or for drafting or revising
patent claims (excluding such activities conducted in the context of post-grant adversarial
proceedings including reexamination or opposition proceedings filed in relation to the patents-in-
suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,
semiconductors, microchips or microprocessors of any type, or products incorporating those
items, from the time of receipt of such material through and including one (1) year following the
first to occur of (i) the complete resolution of this case through entry of a final non-appealable
judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims
against the Producing Party in this action; or (iii) the individual person(s) cease to represent the
Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any
obligations or restrictions set forth in Paragraph 25 below.
H. Use Of Designated Material
26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the
Court, or agreed to in writing by the Parties, all Designated Material, and all information derived
therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not
be used in any other way, or for any other purpose, including the acquisition, preparation or
prosecution before the Patent Office of any patent, patent application, for drafting or revising
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patent claims, or in connection with patent licensing. Information contained or reflected in
Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,
in court or in other settings that might reveal Designated Material, except in accordance with the
terms of this Order.
27. Use Of Designated Material By Designating Party. Nothing in this Order shall
limit any Designating Party’s use of its own documents and information, nor shall it prevent the
Designating Party from disclosing its own confidential information, documents or things to any
person. Such disclosure shall not affect any designations made pursuant to the terms of this
Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the
confidentiality of the information.
28. Use of Designated Material at Depositions. Except as may be otherwise ordered
by the Court, any person may be examined as a witness at depositions and trial, and may testify
concerning all Designated Material of which such person has prior knowledge, without in any
way limiting the generality of the following
(a) A present director, officer, employee, designated Rule 30(6)(b) witness,
and/or Outside Consultant of a Producing Party may be examined, and
may testify concerning all Designated Material that has been produced by
that party;
(b) A former director, officer, agent and/or employee of a Producing Party
may be interviewed, examined and may testify concerning all Designated
Material of which he or she has prior knowledge, including any
Designated Material that refers to matters of which the witness has
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personal knowledge, that has been produced by that Party and that pertains
to the period or periods of his or her employment; and
(c) Non-parties may be examined or may testify concerning any document
containing Designated Material of a Producing Party that appears on its
face, or from other documents or testimony, to have been received from,
or communicated to, the non-party as a result of any contact or
relationship with the Producing Party, or a representative of such
Producing Party. Any person other than the witness, his or her attorney(s),
and any person qualified to receive Designated Material under this Order,
shall be excluded from the portion of the examination concerning such
information, unless the Producing Party consents to persons other than
qualified recipients being present at the examination. If the witness is
represented by an attorney who is not qualified under this Order to receive
such information, then prior to the examination, the attorney shall be
requested to sign the “Acknowledgement and Agreement To Be Bound By
Protective Order” attached as Exhibit A. In the event that such attorney
declines to sign the Acknowledgement and Agreement To Be Bound By
Protective Order prior to the examination, the parties, by their attorneys,
shall jointly seek a protective order from the Court prohibiting such
attorney from disclosing such Designated Material.
29. A witness who previously had access to a document designated “ATTORNEYS’
EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a
present non-disclosure agreement with the Producing Party that covers that document, may be
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shown the document if the witness is advised on the record of the existence of the Protective
Order and that the protective order requires the parties to keep confidential any questions,
testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,
take notes on or retain copies of any Designated Material used or reviewed at the deposition. The
witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The
Producing Party of any Designated Material used at the deposition may also require that the
transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of
the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the
witness in the offices of one of the counsel representing a party in this case (or another firm
acting for one of the counsel representing a party in this case and under the supervision of one of
the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply
only to a witness who is not subject to this Order.
I. Procedure for Designating Materials
30. Subject to the limitations set forth in this Order, a Designating Party may:
designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,
meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”
information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;
designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in
good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO
PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth
in Paragraph 24 above.
PROTECTIVE ORDER 20 Dallas 279575v1
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31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES
ONLY – SOURCE CODE” Material, any material (including physical objects) made available
for initial inspection by counsel for the Receiving Party prior to producing copies of selected
items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”
information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten
(10) calendar days from the inspection to review and designate the appropriate documents as
“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION
BAR” prior to furnishing copies to the Receiving Party.
32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,
Material that qualifies for protection under this Order must be designated in accordance with this
Section I before the Material is disclosed or produced.
33. Designation in conformity with this Order shall be made as follows:
(a) For information in documentary form (apart from transcripts of
depositions, or other pretrial or trial proceedings), the Producing Party
shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if
appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that
contains Designated Material.
(b) For testimony given in deposition, or in other pretrial or trial proceedings,
the Designating Party shall specify any portions of the testimony that it
wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of
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depositions, the Designating Party may also designate any portion of a
deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES
ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if
appropriate, “SUBJECT TO PROSECUTION BAR” by informing the
reporter, and opposing Parties, in writing within thirty (30) calendar days
of completion of the deposition of the designations to be applied. All
deposition transcripts not marked at least “CONFIDENTIAL” during the
deposition will nonetheless be treated as “CONFIDENTIAL” until the
thirty (30) day period has expired. Transcript pages containing Designated
Material must be separately bound by the court reporter, who must affix to
the top of each such page the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION
BAR,” as instructed by the Designating Party.
(c) For information produced in some form other than documentary, and for
any other tangible items, the Producing Party shall affix in a prominent
place on the exterior of the container or containers in which the
information or thing is stored the legend “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION
BAR”.
(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents
produced in native format. For documents produced in native format, the
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parties shall provide written notice to the Receiving Party of any
confidentiality designations at the time of production.
J. No Waiver of Privilege
34. Subject to the provisions of Federal Rule of Evidence 502, inspection or
production of documents (including physical objects) shall not constitute a waiver of the
attorney-client privilege, work product immunity, or any other applicable privilege or immunity,
if, after the Producing Party becomes aware of any such disclosure, the Producing Party
designates any such documents as within the attorney-client privilege, work product immunity or
any other applicable privilege or immunity, and requests in writing return of such documents to
the Producing Party. Upon request by the Producing Party, the Receiving Party shall
immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the
Receiving Party from challenging the propriety of the attorney-client privilege, work product
immunity or other applicable privilege or immunity designation by submitting a written
challenge to the Court; provided, however, that such challenge shall not assert as a ground for
challenge the fact of the initial production or inspection of the documents later designated as
attorney-client privileged, work product, or subject to another applicable privilege or immunity.
K. Inadvertent Failure To Designate
35. An inadvertent failure to designate qualified information, documents or things as
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –
SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive
the Designating Party’s right to secure protection under this Order for such material. Upon
discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving
Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’
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EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,
“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must
make reasonable efforts to assure that the material is treated in accordance with the terms of this
Order, subject to the right to challenge the propriety of such designation(s). The Producing Party
shall provide substitute copies of documents bearing the confidentiality designation.
L. Filing Designated Material
36. Without written permission from the Designating Party or a Court Order secured
after appropriate notice to all interested persons, a Party may not file in the public record in this
action any Designated Material, but must file such Designated Material under seal in
conformance with the Court’s rules and procedures. Material filed under seal shall bear the title
of this matter, an indication of the nature of the contents of such sealed filing, the words
“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’
EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES
ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as
appropriate, and a statement substantially in the following form:
This filing contains confidential information filed in this case by (name of party) and its
contents shall not be displayed or revealed except by order of the Court presiding over this
matter.
M. Challenges to Confidentiality Designations
37. The Parties will use reasonable care when designating documents or information
as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall
prevent a Receiving Party from contending that any or all documents or information designated
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as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’
EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”
Material have been improperly designated. A Receiving Party may, at any time, request that the
Producing Party cancel or modify the confidentiality designation with respect to any document
or information contained therein.
38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,
“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and
“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so
shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be
served on counsel for the Producing Party, and shall identify particularly the documents or
information that the Receiving Party contends should be differently designated. The parties shall
use their best efforts to resolve promptly and informally such disputes in accordance with all
applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party
shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES
ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT
TO PROSECUTION BAR” designation.
N. Protected Material Subpoenaed or Ordered Produced In Other Litigation
39. 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
“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –
SOURCE CODE”, the Receiving Party must so notify the Designating Party, 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. The
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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
Protective Order. In addition, the Receiving Party must deliver a copy of this 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 Protective Order
and to afford the Designating Party in this case an opportunity to try to protect its confidentiality
interests in the court from which the subpoena or order issued. The Designating Party shall bear
the burdens and the expenses of seeking protection in that court of its Designated Material.
Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party
in this action to disobey a lawful directive from another court.
O. Unauthorized Disclosure Of Designated Material
40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Designated Material to any person or in any circumstance not authorized under this Order, the
Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized
disclosures, (b) use its best efforts to retrieve all copies of the Designated 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 “Acknowledgment and Agreement to Be
Bound” that is attached hereto as Exhibit A.
P. Non-Party Use of this Protective Order
41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a
court order, may designate such Material in the same manner, and shall receive the same level of
protection under this Protective Order, as any Party to this lawsuit.
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42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”
Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –
SOURCE CODE” Material produced by any Party in this case.
Q. Discovery from Outside Consultants
43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be
subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that
the testifying expert prepared in other cases be subject to discovery in this case.
44. Discovery of materials provided to testifying experts shall be limited to those
materials, facts, consulting expert opinions, and other matters actually relied upon by the
testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in
this case. No discovery can be taken from any consulting expert who does not testify, except to
the extent that consulting expert has provided information, opinions or other materials to a
testifying expert, who then relies upon such information, opinions or other materials in forming
his or her final report, trial or deposition testimony or any opinion in this case.
45. No conversations or communications between Counsel of Record and any
testifying or consulting expert will be subject to discovery unless the conversations or
communications are relied upon by such experts in formulating opinions that are presented in
reports, trial or deposition testimony in this case.
46. Materials, communications (including email) and other information exempt from
discovery under the foregoing Paragraphs shall be treated as attorney-work product for the
purposes of this litigation and Protective Order.
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R. Communications between Party and Counsel of Record
47. The parties agree that the following privileged or protected communications
occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or
produced in this case except as required under Patent Local Rule 3-7:
(a) communications solely between Wi-LAN and its outside or in-house
counsel regarding litigation or potential litigation over the patents-in-suit
in which Wi-LAN became a party, or litigation or potential litigation over
any other patents allegedly owned or asserted by Wi-LAN; and
(b) communications solely
(1) between a Defendant (or its respective parent company) and its outside counsel;
(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or
(3) among in-house or outside counsel for Defendants (or their respective parent companies);
regarding litigation or potential litigation over the patents-in-suit in which
the communicating Defendants became parties, or litigation or potential
litigation over any other patents allegedly owned or asserted by Wi-LAN.
The above agreements are without prejudice to any party’s ability to make a
particularized request for a limited log relating to specific documents, upon an appropriate
showing of potential discoverability of the documents over privilege or protection objections.
S. Duration
48. Even after the termination of this action, the confidentiality obligations imposed
by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a
court order otherwise directs.
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T. Final Disposition
49. Unless otherwise ordered or agreed in writing by the Producing Party, within
sixty (60) calendar days after the final termination of this action, each Receiving Party must
destroy or return, at the Producing Party’s request, all Designated Material to the Producing
Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,
compilations, summaries or any other form of reproducing or capturing any of the Designated
Material. The Receiving Party must submit a written confirmation of the return or destruction to
the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-
day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of
all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other
proceedings (including exhibits), expert reports (including exhibits), discovery requests and
responses (including exhibits), exhibits offered or introduced into evidence at trial, legal
memoranda, correspondence or attorney work product, even if such materials contain Designated
Material. Any such archival copies that contain or constitute Designated Material remain subject
to this Protective Order as set forth in Section R (Duration), above.
U. Miscellaneous
50. Any of the notice requirements herein may be waived, in whole or in part, but
only by a writing signed by the Counsel of Record for the Party against whom such waiver will
be effective.
51. This Order is entered without prejudice to the right of any Party to apply to the
Court at any time for modification of this Order, when convenience or necessity requires.
Nothing in this Order abridges the right of any person to seek to assert other objections. No Party
waives any right it otherwise would have to object to disclosing or producing any information,
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documents, or things on any ground not addressed in this Protective Order. Similarly, no Party
waives any right to object on any ground to the use in evidence of any of the material covered by
this Protective Order. The Court shall take appropriate measures to protect Designated Material
at trial and any hearing in this case.
52. This Order shall not diminish any existing obligation or right with respect to
Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in
writing before the disclosure takes place.
53. The United States District Court for the Eastern District of Texas, Marshall
Division, is responsible for the interpretation and enforcement of this Protective Order. All
disputes concerning Designated Material produced under the protection of this Protective Order
shall be resolved by the United States District Court for the Eastern District of Texas, Marshall
Division. Every individual who receives any Designated Material agrees to subject himself or
herself to the jurisdiction of this Court for the purpose of any proceedings related to performance
under, compliance with, or violation of this Order.
SIGNED this ___ day of ______, 2009.
_______________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE
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EXHIBIT A
ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER
I, _______________________________________ [print or type full name], state:
1. My business address is ;
2. My present employer is ;
3. My present occupation or job description is ;
4. I agree to keep confidential all information provided to me in the matter of Wi-
LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States
District Court for the Eastern District of Texas, Marshall Division, in accordance with the
restrictions in the Protective Order, and to be subject to the authority of that Court in the event of
any violation or dispute related to this Protective Order.
5. I have been informed of and have reviewed the Protective Order entered in this
case, and I will not divulge any information, documents or things that are subject to the
Protective Order except in accordance with the provisions of the Order;
6. 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]
PROTECTIVE ORDER, Exhibit A Dallas 279575v1
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EXHIBIT B
CERTIFICATION OF CONSULTANT
I, _______________________________________________ [print or type full name], of
_______________________________________________ am not an employee of the Party who
retained me or of a competitor of the opposing Party and will not use any information,
documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.
Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this
litigation. If at any time after I execute this Certificate of Consultant and during the pendency of
the Action and my retention , I decide to accept employment by a competitor of the opposing
Party, I will promptly (before I become employed) inform the counsel for the party who retained
me in the Action and the opposing party, and I will not thereafter review any Designated
Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the
Parties agree or the Court orders otherwise.
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]
PROTECTIVE ORDER, Exhibit B Dallas 279575v1
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