Case 1:16-cv-00290-MN Document 48 Filed 01/11/18 Page 1 of 4 PageID #: 1457
`
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`Bindu A. Palapura
`Partner
`Attorney at Law
`bpalapura@potteranderson.com
`302 984-6092 Direct Phone
`302 658-1192 Firm Fax
`
`January 11, 2018
`
`VIA ELECTRONIC FILING
`The Honorable Sherry R. Fallon
`U.S. District Court for the District of Delaware
`J. Caleb Boggs Federal Building
`844 North King Street
`Wilmington, DE 19801
`
`Re: Godo Kaisha IP Bridge 1 V. OmniVision Technologies, Inc.
`C.A. No. 16-290-JFB-SRF
`
`Dear Magistrate Judge Fallon:
`OmniVision Technologies, Inc. (“OmniVision”) respectfully submits this letter in
`advance of the teleconference set for January 17, 2018 at 2:00 p.m. The parties have reached
`agreement on almost all aspects of the proposed Protective Order (Exhibit A, with disputed
`language highlighted), including numerous provisions to protect the highly confidential
`documents and source code that OmniVision has or will be required to produce, to the extent
`such materials exist. Only two related disputes remain regarding the proposed Protective Order:
`1) Whether a patent prosecution bar should be included (Exhibit A ¶ 7.5); and
`2) Whether a party must disclose patents and patent applications filed by its experts (Exhibit
`A ¶ 7.4(a)).
`Because of the sensitive nature of OmniVision’s highly confidential technical information and
`the potential harm that could arise from its misuse, OmniVision seeks a Court order that the
`proposed patent prosecution bar and expert disclosure requirement be included in the Protective
`Order.
`
`OmniVision is a leading developer of advanced digital imaging solutions headquartered
`in Santa Clara, CA. Its products include image sensors that use a technology called back-side
`illumination. Godo Kaisha IP Bridge 1 (“IP Bridge”) is a subsidiary of IP Bridge, Inc., a
`Japanese patent fund that was created to acquire, license, and assert patents. In this case, IP
`Bridge accuses OmniVision image sensors with back-side illumination technology of infringing
`seven patents. OmniVision has and will produce highly confidential technical information about
`the accused products, including documents and source code, to the extent they exist.
`Another action between the same parties is pending in the Northern District of California
`as case no. 5:17-cv-00778-BLF (“California Case”). There, IP Bridge has asserted a different
`patent against OmniVision’s image sensors. An analogous dispute arose between the two parties
`as to the existence and scope of a prosecution bar. OmniVision initially proposed the bar apply to
`the prosecution of patents or patent applications relating to “image sensors,” while IP Bridge
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`Case 1:16-cv-00290-MN Document 48 Filed 01/11/18 Page 2 of 4 PageID #: 1458
`The Honorable Sherry R. Fallon
`January 11, 2018
`Page 2
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`initially proposed the bar should be limited to “the design of stacked die image sensors, in which
`an imaging chip is stacked on an image processing chip.” Exhibit B (D.I. 91 in California Case)
`at 1. The court issued an interim order finding OmniVision’s proposed bar too broad and IP
`Bridge’s proposed bar too narrow. Exhibit C (D.I. 96 in California Case) at 2, item (3).
`Accordingly, the court ordered the parties to continue to meet and confer with the aim of
`reaching agreement based on guidance from the court. Id. After such meet and confers, the
`parties agreed on the form of the protective order and submitted it to the court. The court entered
`the protective order on January 4, 2018. Exhibit D (D.I. 107 in California Case with
`corresponding provisions highlighted). There, the agreed upon language for the prosecution bar
`is “patents or patent applications relating to backside-illumination (“BSI”) image sensors,
`including without limitation the patents asserted in this action (“the patents-in-suit”) and any
`patent or application claiming priority to or otherwise related to the patents asserted in this
`action . . . .” Exhibit D ¶ 8. The parties also agreed that, before showing protected information to
`an expert, a party has to disclose the following information: “all patents and pending patent
`applications by the Expert.” Exhibit D ¶ 7.4(a). The parties further agreed that: “If the Expert
`files any patent application during this litigation, the Party disclosing the Expert must disclose it
`within two weeks of learning of its filing.” Id.
`OmniVision proposed to IP Bridge a prosecution bar having the same scope as the
`prosecution bar that was agreed to in the California Case, namely preventing prosecution of
`patents and patent applications, including the ones asserted in this action, that relate to
`“backside-illumination (“BSI”) image sensors.” Because this proposed bar is identical to the one
`that the parties agreed to in the California Case, the proposed bar adds no more burden to IP
`Bridge than the protective order in that case.
`As the Federal Circuit noted in Deutsche Bank, “it is very difficult for the human mind to
`compartmentalize and selectively suppress information once learned, no matter how well
`intentioned the effort may be to do so.” In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373,
`1378 (Fed. Cir. 2010). This concern arises in cases like the present when someone who receives
`highly confidential information about accused products may then go on to prosecute patents
`related to the products. Id. at 1379. Patent prosecution “in which an attorney might inadvertently
`utilize a competitor's confidential information in determining how to craft new patent claims that
`could read on the competitor's products—carries with it a particularly significant risk of
`competitive misuse.” Phishme, Inc. v. Wombat Sec. Techs., Inc., C.A. No. 16-403-LPS-CJB,
`2017 U.S. Dist. LEXIS 150862, at *18 (D. Del. Sept. 18, 2017) (citing in re Deutsche Bank, 605
`F.3d at 1380). Recognizing this risk, Delaware courts have ordered the inclusion of a patent
`prosecution bar in the Protective Order for numerous patent cases, including another case
`involving OmniVision before this Court. See Collabo Innovations, Inc. v. OmniVision Tech.,
`Inc., C.A. No. 16-197 – JFB-SRF, D.I. 44 (D. Del. March 1, 2017); see also, e.g., Data Engine
`Tech. LLC v. Google, Inc., C.A. No. 14-1115-LPS, D.I. 31-1 (D. Del. Apr. 8, 2015); TQ Beta,
`LLC v. DISH Network Corporation et al, C.A. No. 14-848-LPS, D.I. 30-1 (D. Del. Apr. 1, 2015);
`Intellectual Ventures I LLC et al v. AT & T Mobility LLC et al, C.A. No. 13-1668-:PS, D.I. 75-1
`(D. Del. Dec. 16, 2014).
`IP Bridge contends that a patent prosecution bar should not apply in this case because
`Delaware does not have a model protective order that includes a prosecution bar. However,
`Delaware has no default protective order. IP Bridge further contends that a prosecution bar may
`hinder its ability to retain and work with an expert because at least one of its intended experts for
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`Case 1:16-cv-00290-MN Document 48 Filed 01/11/18 Page 3 of 4 PageID #: 1459
`The Honorable Sherry R. Fallon
`January 11, 2018
`Page 3
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`the case is already involved in prosecution as inventors of patents directed to image sensor
`technology. But this fact only raises the likelihood of potential misuse of OmniVision’s
`confidential information. Moreover, the proposed prosecution bar does not prevent IP Bridge
`from retaining a different expert that is not prosecuting patents in the subject technology.
`The scope of the patent prosecution bar provision proposed by OmniVision in this case is
`limited and reasonable. It applies only to individuals with access to the two highest
`confidentiality levels, one of which is directed to source code. Drone Techs., Inc. v. Parrot S.A.,
`838 F.3d 1283, 1300 n.13 (Fed. Cir. 2016) (“[I]t is well recognized among [district] courts that
`source code requires additional protections to prevent improper disclosure because it is often a
`company's most sensitive and most valuable property”). Moreover, IP Bridge already agreed to
`the identical limitation in the California case.
`IP Bridge has refused to propose any alternative scope of prosecution bar or refused to
`exclude the one or more experts it appears to have retained from access to OmniVision’s highly
`confidential information. Instead it seeks no prosecution bar. This extreme proposal presents the
`very real risk of misuse of OmniVision’s highly confidential technical information to seek and
`obtain claims that include Omnivision technology and/or cover on OmniVision products. That is
`precisely the risk that a prosecution bar protects against and the reason that it is appropriate here.
`In re Deutsche Bank, 605 F.3d at 1379-80 (explaining that “strategically amending
`or surrendering claim scope during prosecution” posed a significant risk of inadvertent
`disclosure); Versata Software, Inc. v. Callidus Software Inc., C.A. No. 12-931-SLR, 2014 U.S.
`Dist. LEXIS 40469, at *4 (D. Del. Mar. 12, 2014) (applying prosecution bar to experts and
`consultants, in addition to counsel).
`In addition, OmniVision believes that it is appropriate for the Protective Order to include
`an obligation for experts seeking to be qualified under the Protective Order to disclose all patents
`and patent applications by the proposed expert, including those filed during the pendency of the
`case. While IP Bridge has not identified any proposed expert yet, its representation that one or
`more are already involved in prosecution of image sensor patents gives rise to a heightened
`concern. It appears that IP Bridge intends to disclose OmniVision’s highly confidential
`information to a third party inventor of patents in the image sensor space, exacerbating the
`potential for misuse. For this reason, the procedures that precede an expert’s access to
`confidential information should include disclosure of an expert’s patent and patent applications,
`including those filed during the litigation. In the California Case, OmniVision requested this
`provision and IP Bridge agreed to include it. This obligation imposes no more burden on IP
`Bridge than it already shoulders in the California Case.
`IP Bridge contends that the scope of the bar agreed to in the California case would
`somehow be broader when applied in this case due to the language in the proposed clause
`“including without limitation the patents asserted in this action (“the patents-in-suit”) and any
`patent or application claiming priority to or otherwise related to the patents asserted in this
`action.” This is apparently because the asserted patents in this case relate to more than just
`backside-illumination image sensors—they relate to integrated circuits, imaging devices, and
`methods of fabrication. But the second clause of the prosecution bar is not intended to enlarge
`the technological scope of the bar, just to ensure that the bar includes continued prosecuting of
`the asserted patents and their family members as it relates to “backside-illumination image
`sensors.” Indeed, IP Bridge’s argument demonstrates that OmniVision’s proposal for a
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`Case 1:16-cv-00290-MN Document 48 Filed 01/11/18 Page 4 of 4 PageID #: 1460
`The Honorable Sherry R. Fallon
`January 11, 2018
`Page 4
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`prosecution bar is already narrower than the technical fields of the patents-in-suit. To alleviate IP
`Bridge’s concern OmniVision is amenable to clarifying the language in the prosecution bar to
`ensure that the technological scope of the bar is limited to “back-side illumination image
`sensors.” In this regard, IP Bridge has never offered a counter position on scope—its position
`has consistently been that there should be no prosecution bar whatsoever.
`IP Bridge has also contends that it only agreed to a bar in the California Case, because the
`courts in the Northern District of California presume that a bar is reasonable and because the bar
`is included in a model protective order. Exhibit D at 13 n. 5. As discussed above, this argument
`is a red herring, because Delaware does not have a default protective order. Regardless, the
`California court already recognized the importance of a prosecution bar when it reject the overly
`narrow subject scope of the bar IP Bridge proposed in that case, i.e. “the design of stacked die
`image sensors.” The California court disagreed with IP Bridge’s narrow prosecution bar and
`ordered the parties to agree to a bar that was somewhere between the parties initial proposals in
`that case, which the parties did. With its narrower bar rejected in the California Case, IP Bridge
`now takes an even more extreme position before this Court—that no prosecution bar should
`apply. The Court should reject that position.
`Recently, Chief Judge Stark weighed the risks of inadvertent misuse of confidential
`information during prosecution against the burden on plaintiff’s choice of counsel and experts
`and concluded that the former outweighed the latter. In concluding that a bar was appropriate,
`the Court stated that the risk of misuse “is greater than Defendants should have to bear solely as
`a result of being sued by Plaintiff.” Princeton Digital Image Corporation v. Netflix, Inc., C.A.
`No. 13-328-LPS, D.I. 35 (D. Del. Dec. 13, 2017). Because the same conclusion is appropriate
`here, OmniVision respectfully requests that the Court enter a Protective Order that includes
`Defendants’ proposed patent prosecution bar and expert disclosures.
`
`Respectfully,
`
`/s/ Bindu A. Palapura
`
`BAP:sjh 5600442/43303
`Enclosures
`cc:
`Clerk of the Court (via hand delivery) (w/enc.)
`All Counsel of Records (via electronic mail) (w/enc.)
`
`Bindu A. Palapura
`
`