Case 1:22-cv-00305-RGA-JLH Document 78 Filed 05/26/23 Page 1 of 5 PageID #: 990
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`v.
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`ROBOCAST, INC., a Delaware corporation,
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`YOUTUBE, LLC, a Delaware limited liability
`company; and GOOGLE LLC, a Delaware
`limited liability company,
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`Defendants.
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`C.A. No. 1:22-cv-00304-RGA-JLH
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`JURY TRIAL DEMANDED
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`Case No. 1:22-CV-00305-RGA-JLH
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`ROBOCAST, INC.
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`Plaintiff,
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`v.
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`NETFLIX, INC.,
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`Defendant.
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`PLAINTIFF ROBOCAST, INC.’S LETTER TO U.S. MAGISTRATE JUDGE HALL
`REGARDING PROTECTIVE ORDER
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`MCKOOL SMITH, P.C.
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`Steven Rizzi
`Ramy E. Hanna (DE Bar Id #: 5494)
`One Manhattan West
`395 9th Avenue, 50th Floor
`New York, New York 10001-8603
`(212) 402-9400
`srizzi@mckoolsmith.com
`rhanna@mckoolsmith.com
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`BAYARD, P.A.
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`Stephen B. Brauerman (#4952)
`Ronald P. Golden III (#6254)
`600 North King Street, Suite 400
`Wilmington, Delaware 19801
`(302) 655-5000
`sbrauerman@bayardlaw.com
`rgolden@bayardlaw.com
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`Attorneys for Plaintiff
`ROBOCAST, INC.
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`Case 1:22-cv-00305-RGA-JLH Document 78 Filed 05/26/23 Page 2 of 5 PageID #: 991
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`CANTOR COLBURN LLP
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`Marc N. Henschke
`20 Church Street, 22nd Floor
`Hartford, Connecticut 06103-3027
`(860) 286-2929
`mhenschke@cantorcolburn.com
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`Attorneys for Plaintiff
`ROBOCAST, INC.
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`Case 1:22-cv-00305-RGA-JLH Document 78 Filed 05/26/23 Page 3 of 5 PageID #: 992
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`Dear Judge Hall:
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`Robocast provides its positions regarding disputed provisions and the interpretation of the
`protective order (attached as Exhibit A) below.
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`Source Code Directory vs. Manifest, ¶ 28(iii): The parties differ regarding the information that
`is to be provided in advance of a source code review session. Robocast’s position is that a
`directory, in both electronic and printed form, should be provided which will include the name,
`location, and MD5 checksum of every source code and executable file on the source code review
`computer. Defendants argue that a manifest should be provided in printed form only, and that
`the manifest will only include the number and volume of source code files, and the directory
`structure. In other words, it will not include a list of the files themselves. The purpose of ¶ 28(iii)
`is to allow a party’s counsel and its expert an opportunity to identify source code of interest in
`advance of a source code review session; that purpose is thwarted by Defendants’ proposals as is
`described below:
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`Fields Provided: Defendants’ proposal does not include any information about specific files.
`Instead, it only provides a general directory structure, severely impeding Robocast’s ability to
`pre-identify files of interest. A single directory could contain dozens, hundreds, or even
`thousands of files. Without a listing of those files, Robocast and its expert’s review session will
`take longer, wasting time for both parties and their expert(s). Further, Defendants’ proposal lacks
`MD5 checksum information, which would allow Robocast to easily verify that the files listed in
`the directory are the same as those that are actually produced for inspection.
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`Electronic Form: Under Defendants’ proposal, only a printed copy of its proposed source code
`manifest would be provided. Often source code directory listings are quite lengthy, potentially
`upwards of 100 or even 1,000 pages. So that Robocast and its expert may better prepare for a
`source code review session, they need the ability to search directory and file names in an
`efficient manner, which is impossible with a mere physical copy. Robocast also needs an
`electronic copy which can easily be shared with its expert. Under Defendants’ proposal there is
`no requirement that the listing be provided to the attorneys and the expert who will actually be
`performing the review (as opposed to other counsel), further impeding Robocast’s and its
`expert’s ability to plan an efficient review session. An electronic copy is more easily shared
`between Robocast’s counsel and expert, as it does not require hand carry, or a courier service.
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`Designation: Defendants’ proposal states that the manifest it proposes should be designated
`HIGHLY CONFIDENTIAL – SOURCE CODE. But the directory and file listing requested by
`Robocast and the manifest proposed by Defendants contain no source code whatsoever as they
`do not provide the contents of any source code files. Directories and a file listing are not the
`same as source code. For clarity, Robocast does not object to designating the directory or
`manifest as “HIGHLY CONFIDENTIAL - ATTORNEYS’ EYES ONLY.” This designation
`ensures the confidentiality of the listing.
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`Case 1:22-cv-00305-RGA-JLH Document 78 Filed 05/26/23 Page 4 of 5 PageID #: 993
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`Use of a Laptop During Source Code Review Proceedings, ¶ 28(v): The parties agree, in ¶
`28(v) that a party can take notes during a source code review session. But under Defendants’
`proposal, Robocast would have to take such notes by hand, as it would not be permitted to take
`notes electronically on a laptop. In order to ensure an efficient review session, Robocast should
`be permitted to take notes electronically on a laptop, which is not connected to the internet.
`Otherwise, the review session will take additional time, and the quality of such notes will suffer.
`Robocast’s provision would allow it to bring its own laptop for taking such notes. In the
`alternative, Robocast does not object to a Defendant providing a laptop for taking notes and a
`connected printer, which would allow Robocast to print its notes at the end of a daily review
`session before deleting them from the Defendant-provided laptop.
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`Prosecution Bar, ¶ 38: The parties disagree as to whether a prosecution bar should apply to
`post-grant review procedures, such as inter partes reviews and reexaminations. Defendants
`alleged, via email that the prosecution bar does not prohibit Robocast’s litigation counsel from
`representing it in IPRs of the asserted patents, but that is far from clear. Further, absent
`Robocast’s amendment, the bar could be read to bar any participation, by Robocast’s counsel, in
`other IPR proceedings and reexaminations related to the field of invention.
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`In evaluating whether there is good cause to impose a prosecution bar, a Court must balance the
`risk of inadvertent disclosure or competitive use of confidential information against restrictions
`on the party’s right to have the benefit of its counsel of choice. In re Deutsche Bank Tr. Co.
`Americas, 605 F.3d 1373, 1380 (Fed. Cir. 2010). As this Court has held, involvement in post-
`grant proceedings does not raise the same risk of competitive misuse as involvement in
`prosecution because in post-grant proceedings—including reexaminations and inter partes
`reviews—the patentability of only existing claims is assessed and only narrowing amendments
`can be made; thus there is “little risk that confidential information learned in litigation will be
`competitively used to draft claims that read on [d]efendants' products.” Two-Way Media Ltd. v.
`Comcast Cable Commc'ns, LLC, No. CV 14-1006-RGA, 2015 WL 7257915, at *2 (D. Del. Nov.
`17, 2015); see also Ameranth, Inc. v. Pizza Hut, Inc., No. 3:11-CV-01810-JLS, 2012 WL
`528248, at *7 (S.D. Cal. Feb. 17, 2012) (holding that a prosecution bar should not apply to
`reexaminations because claims can only be narrowed). Any potential risk to Defendants is
`further minimized by the fact that the patents-in-suit have expired, and cannot be amended. Thus,
`the prosecution bar in this case should not apply to post-grant proceedings.
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`Export Control, ¶ 51: Robocast’s and Defendants’ proposals state that the parties will “comply
`with all applicable export control statutes and regulations. See, e.g., 15 C.F.R. § 734.” But
`Defendants’ proposal includes numerous additional requirements. As the parties seeking the
`more onerous provisions, Defendants bear the burden of showing good cause for their additions.
`Fed. R. Civ. P. 27(c). To date, Defendants have provided no rationale which would justify their
`additional provisions. Robocast reserves the right to respond to any they raise.
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`Cross-Use in Event of Case Settlement, ¶ 52: This paragraph addresses the situation where one
`Defendant settles, but another remains. Defendants’ proposal only allows for Robocast to retain
`documents from the settling defendant if the settling party has explicitly agreed to designate the
`document “for cross use” or the Court has done so. A settling party would have no reason to
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`Case 1:22-cv-00305-RGA-JLH Document 78 Filed 05/26/23 Page 5 of 5 PageID #: 994
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`agree to such a designation, and an order from the Court would require unnecessary briefing,
`increasing the burden on the remaining parties and the Court.
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`Robocast’s proposal reasonably provides that so long as a document has been cited in any expert
`report, discovery response, transcript, exhibit list, or other court filing of one or both of the non-
`settling parties, it may be retained while the case remains active. Robocast’s proposal eliminates
`the possibility that a document, which applies to the remaining case, has been destroyed. As one
`example, Defendants may jointly rely on one or more of their internal documents for claim
`construction. Under Defendants’ proposal, the document could be destroyed despite the Court’s
`or another party’s reliance on it. Robocast’s proposal does not jeopardize the confidentiality of
`the settling party’s information as it requires that the remaining parties continue to treat such
`materials under the confidentiality designation provided by the settling party.
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`Whether Non-Source Code Documents That Happen to Contain Source Code Should be
`Produced on the Source Code Computer: Defendants contend that any document that contains
`even an iota of source code is properly designated as HIGHLY CONFIDENTIAL - SOURCE
`CODE under the protective order, and may therefore be produced for inspection in its entirety
`solely on the Source Code Computer. This presents several issues. First, Defendants’ position
`prejudices Robocast, as printing out such a document would count against its page limit of 750
`pages under ¶ 28(vi). Thus, a large document describing the infringing process but containing
`only limited snippets of source code could easily swallow up much if not all of Robocast’s
`permitted pages. Second, a document with limited excerpts of source code would not convey the
`full functionality described in the source code itself. As such a designation of HIGHLY
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY is more appropriate. Third, Robocast cannot
`print more than 30 consecutive pages under ¶ 28(vi). Piecemeal printouts of isolated sections
`would render the resulting printouts far less useful, as they would lack context. Fourth, to the
`extent Defendants offer to produce a redacted version of any such document under a lesser
`confidentiality designation, the readability of such a document would be significantly reduced.
`For these reasons, only source code itself should be produced on the source code computer, in
`line with ¶ 3 of the protective order, which describes source code as “computer code.”
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`Dated: May 26, 2023
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`Respectfully submitted,
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`/s/ Stephen B. Brauerman
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`Stephen B. Brauerman (#4952)
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`Cc: Counsel of Record (via E-Filing)
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