Case 1:16-cv-00290-MN Document 49 Filed 01/12/18 Page 1 of 4 PageID #: 1527
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`VIA CM/ECF AND HAND
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`January 12, 2018
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`The Honorable Sherry R. Fallon
`U.S. District Court for the District of Delaware
`844 N. King Street
`Wilmington, DE 19801
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`Stamatios Stamoulis
`stamoulis@swdelaw.com
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`RE: Godo Kaisha IP Bridge 1 V. OmniVision Technologies, Inc.
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`C.A. No. 16-290-JFB-SRF
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`Dear Judge Fallon:
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`Plaintiff Godo Kaisha IP Bridge 1 (“IPB”) respectfully submits this letter in response to
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`Defendant OmniVision Technologies, Inc.’s (“OmniVision”) correspondence dated January 11,
`2018. (D.I. 48). As OmniVision notes, the parties reached agreement on almost all substantive
`provisions of a proposed Protective Order, and OmniVision acknowledges that the agreed-upon
`terms already “include[e] numerous provisions to protect the highly confidential documents and
`source code that OmniVision has or will be required to produce.” Id. at 1. Despite those
`extensive safeguards, OmniVision now insists upon an additional layer of protection in the form
`of a patent prosecution bar. OmniVision’s requested relief threatens to frustrate IPB’s ability to
`retain experts in the relevant field. In fact, as discussed herein, OmniVision’s refusal to produce
`key documents absent such a provision has already hampered IPB’s ability to prepare its
`infringement contentions in accordance with the Court’s deadline for doing so.
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`OmniVision correctly framed the issues presented to the Court: (1) whether the Protective
`Order should include a patent prosecution bar; and (2) whether parties must disclose patents and
`patent applications filed by experts.1 According to OmniVision, the scope of the bar it seeks
`would encompass “back-side illumination image sensors.” (D.I. 48 at 4). For the reasons
`discussed herein, OmniVision has not carried its high burden to show the need for such a bar, or
`established that its proposed bar is reasonable in scope.
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`OmniVision’s request for a prosecution bar is almost entirely premised upon the fact that
`such a bar was included in a case involving the same parties that is pending in the Northern
`District of California. Id. at 1-2 (citing Case No. 5:17-cv-00778-BLF) (the “California Case”).
`OmniVision’s reliance on that case is unavailing because in the Northern District of California, a
`prosecution bar is contained in the court’s Model Order, and such a provision is considered
`“presumptively reasonable” in that District. See EPL Holdings, LLC v. Apple, Inc., No. C-12-
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`1 IPB contends that the second issue goes hand-in-hand with the first, and is rendered moot if no prosecution bar is
`included in the Protective Order. Accordingly, this letter will demonstrate why OmniVision has failed to establish its
`entitlement to a prosecution bar.
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`Case 1:16-cv-00290-MN Document 49 Filed 01/12/18 Page 2 of 4 PageID #: 1528
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`The Honorable Sherry R. Fallon
`January 12, 2018
`Page 2
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`04306 JST, 2013 WL 2181584, at *1 (N.D. Cal. May 20, 2013) (“Accordingly, the court treats
`the model protective order as setting forth presumptively reasonable conditions regarding the
`treatment of highly confidential information.”). Thus, IPB had little choice but to agree to
`inclusion of a prosecution bar in the California Case, even though the scope of the bar was hotly
`disputed, and the court ultimately refused to enter the broad bar requested by OmniVision.
`(California Case, D.I. 96, 107). As discussed below, there are no such presumptions in this
`District, OmniVision has not carried its burden of establishing the need for a bar, and it has
`failed to show that the scope of its proposed bar is necessary or reasonable.
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`Unlike the Northern District of California, there is no authority in this District that would
`presume the reasonableness of a prosecution bar. Thus, under Federal Circuit authority,
`OmniVision bears the burden of proving good cause for such a provision, and establishing that
`the scope of its proposed bar is necessary and reasonable. In re Deutsche Bank Trust Co.
`Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). A showing of good cause requires the moving
`party to demonstrate that specific prejudice or harm will result if the protection is not issued. See
`Rivera v. NIBCO, Inc., 384 F.3d 822, 826 (9th Cir. 2004). As to the scope of a bar, OmniVision
`must “show that the information designated to trigger the bar, the scope of activities prohibited
`by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect
`the risk presented by the disclosure of proprietary competitive information.” Deutsche Bank, 605
`F.3d at 1381.
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`OmniVision has not established good cause, nor has it made the necessary demonstration
`that the scope of its proposed prosecution bar is appropriate or reasonable. For instance,
`disclosure of competitive information can present a sufficient risk to justify a prosecution bar
`only when a person subject to the bar is a “competitive decisionmaker” for his or her client, and
`that is a determination that can only be made on a case-by-case basis. Id. at 1378. OmniVision
`has not shown any potential harm, much less the “particular factual demonstration of potential
`harm” that is required. Anderson v. Cryovac, Inc., 805 F.2d 1, 7 (1st Cir. 1986).
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`OmniVision’s position is based entirely on empty speculation, not specific facts.
`OmniVision has not identified specific information that should be subject to a bar, it has not
`shown any specific risk of harm that it will likely suffer if that information is not protected by a
`bar, and it has not identified any “competitive decisionmakers” who will likely misuse
`information subject to the proposed bar. Rather, OmniVision rests its argument on bare
`conjecture about the “potential harm that could arise” and the “likelihood of potential misuse”
`from disclosure of its confidential information. (D.I. 48 at 2-3). Speculation, with no evidence
`whatsoever, that its confidential information will somehow be misused is insufficient—the facts
`supporting restrictions on discovery must be proven, not just alleged. See Deutsche Bank, 605
`F.3d at 1380. To the extent OmniVision’s hypothetical concerns have any merit, they are
`adequately protected by the general terms of the Protective Order to which the parties have
`already agreed, which strictly limit the use of protected information “in connection with this case
`only for prosecuting, defending, or attempting to settle this litigation.” (D.I. 48, Ex. A at ¶ 7.1).
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`The cases from this District that OmniVision cites actually highlight OmniVision’s
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`failure to carry its burden here. For instance, OmniVision cites the Court’s opinion in Phishme,
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`Case 1:16-cv-00290-MN Document 49 Filed 01/12/18 Page 3 of 4 PageID #: 1529
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`The Honorable Sherry R. Fallon
`January 12, 2018
`Page 3
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`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) for the proposition that such restrictions are commonplace.
`However, in that case the Court concluded that it would be error to bar the general counsel of a
`party from accessing confidential information solely by virtue of his “general position.” Id. at 6.
`Instead, the Court conducted “a fact-intensive inquiry into whether affected counsel []
`participates in ‘competitive decisionmaking.’” Id. at 7 (emphasis added). In so doing, the Court
`analyzed the particular facts regarding the attorney’s position in light of seven specific factors to
`determine whether disclosure would present a risk of competitive misuse.2 Here, OmniVision has
`not identified any specific individual about whom it purports to be concerned, much less
`conducted a detailed analysis of any of the relevant factors—OmniVision simply guesses, with
`no evidence whatsoever, that any expert retained by IPB will present a risk of competitive
`misuse solely by virtue of his or her “general position” in the field.
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`OmniVision also cites several cases in this District for the proposition that Delaware
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`courts routinely allow the inclusion of patent prosecution bars in protective orders, including one
`case in which OmniVision is a defendant. (D.I. 48 at 2). However, the majority of those cases
`indicate that the parties had agreed to the concept of a prosecution bar in principle and, in the
`case in which OmniVision is a defendant, the parties even agreed to the specific terms of a
`prosecution bar.3 Accordingly, OmniVision’s reliance on these cases is unavailing.
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`OmniVision has shown no concrete risk of harm that would justify inclusion of a
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`prosecution bar in the Protective Order. In contrast, such a bar threatens IPB’s ability to
`effectively prosecute its claims in this lawsuit. For example, it will be difficult (if not impossible)
`for IPB to retain expert witnesses qualified in the field of image sensing, who would be willing
`to accept an engagement if they were to be subsequently barred from prosecuting patents broadly
`relating to “back-side illumination image sensors” as a result. OmniVision’s proposed solution
`(that IPB “retain[] a different expert”) is no solution at all, because it would potentially foreclose
`retention of the most qualified expert(s) in the field. OmniVision’s proposed bar is overreaching,
`unnecessary, based upon pure speculation, and might negatively impact IPB’s ability to present
`expert testimony in this case. See, e.g., GPNE Corp. v. Apple, Inc., 2014 WL 1027948, *1-*2
`(N.D. Cal. 2014) (disqualifying expert from having access to confidential information where
`expert was actively patenting in the same field).
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`IPB has already suffered prejudice from OmniVision’s refusal to produce key
`information absent a prosecution bar. The scheduling order (D.I. 37) required OmniVision to
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`2 The factors considered were (1) the extent to which the attorney plays “an active, first-person role in strategic and
`competitive decisionmaking”; (2) the extent to which the attorney directly advises other high level executives at the
`company; (3) whether the attorney plays a significant role in the enforcement of the company’s intellectual property;
`(4) the degree to which the attorney plays a role in patent prosecution; (5) the size of the company in which the
`attorney works; (6) the gravity of the consequences of inadvertent disclosure or misuse; (7) and whether the attorney
`proposes to use strict safeguards in handling confidential information. Id. at 11-23.
`3 The cited cases are Collabo Innovations, Inc. v. OmniVision Tech., Inc., C.A. No. 16-197 – JFB-SRF, D.I. 44 (D.
`Del. March 1, 2017); 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);
`and 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).
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`Case 1:16-cv-00290-MN Document 49 Filed 01/12/18 Page 4 of 4 PageID #: 1530
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`The Honorable Sherry R. Fallon
`January 12, 2018
`Page 4
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`produce core technical documents for the accused products by December 3, 2017. On December
`4, 2017, OmniVision’s counsel produced several documents that failed to provide details on the
`accused features of the accused products. Although OmniVision offered to make its design
`layout or GDS files available for inspection, it refused to make those files available to IPB’s
`expert(s) absent entry of a protective order. IPB requires assistance from its expert(s) in order to
`conduct a meaningful review of those files. Importantly, IPB’s infringement contentions are due
`on January 22, 2018 and require IPB to “produce to defendant an initial claim chart relating the
`accused products to the asserted claims each product allegedly infringes.” IPB accused five
`product families, including 107 products, in its initial identification of accused products.
`Although OmniVision has proposed representative products, without the ability to obtain expert
`review of the design layout files, IPB is currently unable to confirm that it agrees that
`OmniVision’s proposed products are truly representative. Had IPB’s experts been permitted to
`review the files, IPB would able to provide more details in its charts and/or provide additional
`charts with its infringement contentions.
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`For the above reasons, IPB submits that OmniVision has failed to establish its entitlement
`to a prosecution bar in the Protective Order, and requests the Court enter an order containing the
`terms that the parties have otherwise agreed upon.
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`Respectfully Submitted,
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`Stamatios Stamoulis (#4606)
`of Stamoulis & Weinblatt LLC
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`Counsel for Plaintiff
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