Case 1:15-cv-00311-RGA Document 38 Filed 11/23/15 Page 1 of 5 PageID #: 731
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 15-228 (RGA)
`
`C.A. No. 15-282 (RGA)
`
`C.A. No. 15-311 (RGA)
`
`)))))))))
`
`))))))))) )))))))))))
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD, INC.
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ELECTRONIC ARTS INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
`
`Defendants.
`
`JOINT LETTER REGARDING PROTECTIVE ORDER DISPUTE
`
`

`
`Case 1:15-cv-00311-RGA Document 38 Filed 11/23/15 Page 2 of 5 PageID #: 732
`
`POTTER ANDERSON & CORROON LLP
`
`MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP
`
`By: /s/ Philip A. Rovner
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`
`Dated: November 23, 2015
`
`By: /s/ Stephen J. Kraftschik
`Jack B. Blumenfeld (#1014)
`Stephen J. Kraftschik (#5623)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`skraftschik@mnat.com
`
`Attorneys for Defendants
`
`

`
`Case 1:15-cv-00311-RGA Document 38 Filed 11/23/15 Page 3 of 5 PageID #: 733
`
`Dear Judge Andrews:
`The parties to the above-referenced patent infringement actions have largely agreed on
`the substance of a proposed protective order. Pursuant to the October 29, 2015 Scheduling Order
`and further direction from the Court, the parties set forth below brief statements in support of
`their respective proposals. Attached as Exhibit A hereto is a copy of the proposed protective
`order, showing the agreed upon provisions, with Plaintiff's and Defendants' further proposals
`respectively highlighted in yellow and blue.
`
`Plaintiff’s Statement
`
`I.
`
`Defendants’ Post-Grant Prosecution Bar is Unreasonably Broad (§ 10.7)
`
`The parties agree to a prosecution bar applicable to unissued patent applications, but
`Defendants seek to extend that bar to cover inter partes review (“IPR”) and reexamination
`proceedings, while Plaintiff contends that
`the bar should not extend to PTO proceedings
`occurring after the grant of a patent, where the “potential for inadvertent harm is greatly
`reduced.” See Eon Corp. IP Holdings v. Flo TV Inc., No. 1:10-cv-00812-RGA, D.I. 580, slip op.
`at 1 (D. Del. Aug. 29, 2013) (Andrews, J.) (Ex. 1), aff'g D.I. 542 (D. Del. Jul. 10, 2013) (Ex. 2).
`
`Defendants fail to satisfy their burden of showing that there is an unacceptable risk of
`disclosure, which is balanced “against the potential harm to the opposing party from restrictions
`imposed on that party's right to have the benefit of counsel of its choice.” In re Deutsche Bank
`Trust Co. Ams., 605 F.3d 1373, 1378-80 (Fed. Cir. 2010). As Defendants have filed six IPR
`petitions against Plaintiff’s patents, there is considerable potential harm in excluding litigation
`counsel from those proceedings. See Two-Way Media Ltd. v. Comcast Cable Commc’ns, 1:14-
`cv-01006-RGA, at 4-5 (Nov. 17, 2015) (Andrews, J.) (Ex. 3) (recognizing potential harm from
`including IPRs in prosecution bar as “‘forcing Plaintiff to rely on less knowledgeable counsel . . .
`increasing costs and duplicating effort’ and preventing Plaintiff from ‘formulating a coherent and
`consistent litigation strategy.’”), quoting Xerox v. Google, 270 F.R.D. 182, 184 (D. Del. 2010).
`
`The Court has previously declined to include post-grant proceedings within the scope of a
`prosecution bar, noting that such proceedings do “not raise the same risk of competitive misuse
`as does involvement in prosecution,” and that there is “little risk that confidential information
`learned in litigation will be competitively used to draft claims that read on Defendants’ products”
`because “only narrowing claim amendments may be made during post-grant proceedings.” Two-
`Way Media, at 4 (Ex. 3), citing Xerox., 270 F.R.D. at 184-85 (“while claims may be broadened
`during prosecution to support new, tailor-made infringement allegations, amendments made
`during reexamination can only serve to narrow the original claims. Hence, no product that did
`not
`infringe a patent before reexamination could ever
`infringe that patent
`following
`reexamination.”) (emphasis in original, footnotes omitted).
`
`II.
`
`Defendants Propose Unreasonable Restrictions on Source Code Review
`
`Defendants’ proposals would unduly restrict the review of source code. First, in Section
`1.10, Defendants propose that source code protection be extended to “engineering specifications,
`or schematics that define or otherwise describe in detail the algorithms or structure of software,”
`
`

`
`Case 1:15-cv-00311-RGA Document 38 Filed 11/23/15 Page 4 of 5 PageID #: 734
`
`sweeping in documents that merely discuss and describe the technology used in the accused
`products. These provisions should be limited to actual source code.
`
`Second, in Section 8.4(a) Plaintiff proposes a 500 page limit of Source Code that may be
`printed. Given there are 4 to 8 accused products for each Defendant, each with multiple versions
`and thousands of pages of source code per version, Defendants’ 250 page limit is insufficient.
`
`Third, in Section 8.4(c) Plaintiff proposes that produced source code be made available
`electronically in its entirety at depositions of the producing party’s witnesses, while Defendants
`unreasonably would limit the use of source code at depositions to pages specifically printed by
`the receiving party and would preclude source code marked as an exhibit from being appended to
`the deposition transcript. Because source code is integrated, it can be difficult to determine how
`to separate out excerpts of source code, and it will likely be necessary for the witnesses to refer
`to other portions of the code to answer questions. Source code printouts marked at deposition
`should be attached as exhibits to the transcript so that the transcript will be a complete record
`(the parties can agree to redact portions of the source code exhibits as needed).
`
`Finally, Defendants would not permit a receiving party to use a computer to take notes
`while reviewing source code. See Section 8.8. Forcing parties only to handwrite notes during
`review is unreasonably obstructive given the amount of code, is not a common requirement and,
`given that the protective order already precludes improper disclosure of code, provides at best
`only a marginal increase in the security of the source code. Counsel are available at the Court’s
`convenience should Your Honor have any questions.
`
`Defendants’ Statement
`
`¶ 1.10. Source Code Definition. Defendants have invested hundreds of millions of
`dollars in the source code for their games. It is their most important asset. See Via Vadis
`Controlling GmbH v. Skype, Inc., (D.Del. 2/12/13) (“Source codes are the most sensitive and
`confidential property . . . extreme measures are ordered to protect their confidentiality”) (DX1 at
`*3). Defendants propose the source code definition of the “Model Protective Order” for patent
`cases from the Northern District of California. (DX2 at ¶ 2.9). Other courts have adopted that
`definition, noting that the Northern District “has substantial expertise in this area of law, and its
`model order reflects the cumulative wisdom of the court and the bar in that jurisdiction.” See,
`e.g., Telebuyer, LLC v. Amazon.com, Inc., (W.D. Wash. July 7, 2014) (DX3 at *3). Plaintiff’s
`overly restrictive definition protects only the final version of the human-readable code to be
`compiled into machine-executable code. Plaintiff, a non-practicing entity with no products of its
`own, ignores the practical, in-house engineering realities of how R&D is actually conducted in
`software companies and fails to account for how employees exchange the source code materials,
`such as, e.g., exchanging portions of code via printouts and emails. The definition of “source
`code” needs to include this highly valuable information so it is protected.
`
`¶ 8.1(c). Defendants’ proposal exceeds the Default Standard for Source Code and allows
`Plaintiff to install any reasonable additional tools. Defendants’ should not be forced to purchase
`plaintiff’s inspection software. Xpoint Tech., Inc. v. Intel Corp., (D.Del. 2/22/10) (DX9 at 9-10).
`
`2
`
`

`
`Case 1:15-cv-00311-RGA Document 38 Filed 11/23/15 Page 5 of 5 PageID #: 735
`
`¶ 8.4(c). Plaintiff’s demand that all five defendants bring source code for all accused
`products to depositions is unduly burdensome and risks harm to Defendants incommensurate to
`any incremental benefit to Plaintiff. Trans Video Elec. Ltd. v. Time Warner Cable Inc., (D.Del.
`1/22/15) (DX4). Plaintiff may print portions of Defendants’ source code for use in depositions.
`There is no reason at all to burden Defendants, and threaten the security of their source code, by
`requiring it be provided at multiple insecure locations. Defendants’ proposal for disposal of hard
`copies of source code used at depositions is routine and reasonable. See, e.g., DX2 at ¶ 9(e).
`
`¶¶ 8.4(a); 8.8. See Inventor Holdings, LLC v. Wal-Mart Stores Inc., (D.Del. 8/27/14)
`(DX5 at pp. 5-6 (no laptops in source code room) and p. 8 (250 page limit for printing source
`code).
`
`¶ 10.7. Prosecution Bar. Again to protect Defendants’ critical source code, a limited
`prosecution bar should be entered to prevent those who actually review highly confidential
`source code (as discussed above) from participating in post grant review proceedings. This
`limited prosecution bar outweighs any prejudice that Plaintiff may suffer. This Court has
`previously entered such orders and should do so here. E.g., CallWave Commc’ns LLC v. AT&T
`Mobility, LLC, (D.Del. 4/11/14) (DX6 at 40-41). Plaintiff’s proposal would allow its litigation
`counsel to handle IPR claim construction strategy and make distinctions over the prior art using
`their knowledge of Defendants’ source code to help “thread the needle” (i.e., crafting proposed
`claim constructions and arguments to distinguish prior art without impacting its infringement
`positions). Versata Software, Inc. v. Callidus Software Inc., (D.Del. 3/12/14) (DX7).
`
`In view of this Court’s ruling in Two-Way Media Ltd. v. Comcast Cable Communications
`LLC et al., (D.Del. 11/17/15) (DX8), Defendants adopted Judge Robinson’s Versata protective
`order, which provides for a source code-based “limited prosecution bar” for post-grant
`proceedings applying only to those people who have reviewed Defendants’ highly confidential
`source code. Under Defendants’ proposal,
`litigation counsel may participate in post-grant
`proceedings as long as the participating attorneys are shielded from highly confidential source
`code. As Judge Robinson and the Federal Circuit recognized, “strategically amending or
`surrendering claim scope during prosecution” can implicate competitive decision-making thus
`giving rise to a risk of inadvertent use of confidential information learned in litigation.” Id.
`(citing In re Deutsche Bank Trust Co., 605 F.3d 1373, 1380 (Fed. Cir. 2010)). Here, Plaintiff has
`asserted six patents which include more than 100 claims and specifications exceeding more than
`30 figures and 30 columns of text. Plaintiffs’ complaint accuses multiple features and there are
`presently more than 12 accused games. Defendants have filed 6 IPR petitions (directed to three
`asserted patents), each of which presents opportunity for strategic narrowing of claims. The risk
`of inadvertent use of Defendants’ source code is high. And, the burden to plaintiff is minimal. It
`was formed in August 2014 and does not have longstanding relationship with its counsel.
`
`¶ 11. Defendants’ proposal for in camera inspection is the traditional and reasonable
`method.
`
`3