Case 1:22-cv-00305-RGA-JLH Document 79 Filed 05/26/23 Page 1 of 3 PageID #: 1039
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`Frederick L. Cottrell, III
`Director
`302-651-7509
`Cottrell@rlf.com
`May 26, 2023
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`BY CM/ECF
`The Honorable Jennifer L. Hall
`U.S. District Court
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`District of Delaware
`844 North King Street
`Wilmington, DE 19801-3555
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`Re: Robocast, Inc. v. YouTube, LLC, C.A. No. 22-304-RGA-JLH
` Robocast, Inc. v. Netflix, Inc., C.A. No. 22-305-RGA-JLH
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`Dear Judge Hall:
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`Defendants respectfully submit this letter for the June 2, 2023 discovery conference
`regarding the disputed terms of the Protective Order to be entered in the above-captioned cases.
`The parties’ competing Protective Order provisions are set forth in Exhibit 1 and Defendants’
`proposed form of order is attached as Exhibit 2.
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`Source Code: The parties have no dispute over the language of the Protective Order
`defining “computer code” subject
`to “HIGHLY CONFIDENTIAL—SOURCE CODE”
`protection. Produced computer code, as defined by the Protective Order, is treated with the
`relevant source code protections, including being produced on the source code computer.
`Nevertheless, Robocast insists there is a dispute. Robocast contends “only actual source code files
`should be produced on the source code computer” and other “documents that so happen to contain
`‘snippets’ of source code should be produced as normal.” (Ex. 3). First, source code is source
`code, and Robocast has never explained why including other information with source code
`somehow renders it no longer worthy of protection as source code. Second, nothing in the
`definition of “computer code” or anywhere else in the proposed Protective Order limits material
`receiving “HIGHLY CONFIDENTIAL—SOURCE CODE” treatment to “source code files” or
`documents that exclusively contain source code and nothing else—or even uses Robocast’s terms
`or defines their scope. Robocast’s vague “dispute” should be rejected for this reason alone. In
`any event, Robocast’s arguments about treatment of source code in other locations is at best
`premature. To the extent technical documents are produced with excerpts of source code redacted
`and subject to an AEO designation, in addition to a full version on the source code computer,
`Robocast can raise the issue at that time in the context of a concrete and ripe dispute. Third, source
`code is among Defendants’ most sensitive confidential material, and disclosure of these materials
`would cause significant competitive harm regardless of the source. Cf. Intellectual Ventures I
`LLC v. Altera Corp., C.A. No. 10-1065-LPS, Tr. at 26:12-25 (D. Del. July 10, 2012) (“In the
`Court’s view, these hardware design materials and schematics and similar documents are
`analogous to software in a software case and, therefore, are worthy of some type of source code
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`Case 1:22-cv-00305-RGA-JLH Document 79 Filed 05/26/23 Page 2 of 3 PageID #: 1040
`The Honorable Jennifer L. Hall
`May 26, 2023
`Page 2
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`like protection.”) (Ex. 4). The parties agree on the proposed language in the Protective Order and
`Robocast’s vague dispute should be rejected.
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`Paragraph 28(iii): Defendants’ proposal should be adopted because it provides
`Defendants’ source code with the proper protection. First, the information Defendants propose be
`contained within the manifest, i.e., the number and volume of computer code files on the computer
`and the directory structure, is sufficient for the receiving party to understand the scope of the
`contents of the source code computer ahead of any review consistent with the purpose of this
`provision. Second, that the manifest be provided in printed form only is consistent with standard
`practice that source code—which is among Defendants’ most sensitive confidential information—
`is not provided in electronic format. There is also no need for the receiving party to keep the
`manifest post inspection as the producing party must provide a manifest before each review.
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`Paragraph 28(v): The parties agree that “no electronic or recording devices . . . be
`permitted” within the source code review room, yet Robocast inexplicably contends that laptops
`and tablets are somehow not electronic or recording devices and, thus, permissible inside the
`review room. Robocast is wrong, as laptops and tablets are clearly impermissible electronic
`devices. See, e.g., Inventor Holdings, LLC v. Wal-Mart Stores Inc., C.A. No. 13-96 (GMS), 2014
`WL 437020, at *3 (D. Del. Aug. 27, 2014) (“[I]t is hard to imagine that a ‘personal laptop
`computer’, even one temporarily unable to function as a camera, or temporarily disconnected and
`temporarily incapable of supporting through USB or other means an ability to acquire and/or
`transmit information obtained from the stand-alone computer, would qualify as acceptable under
`the protective order.”). Further, Robocast wants its reviewers to be able to type notes but has not
`identified any problem with note taking by hand and does not propose any restriction on the
`proposed laptop or tablet’s capabilities to protect the code. Robocast rejected Defendants’
`proposed compromise of typing notes on the source code review computer, which would then be
`printed and reviewed by a paralegal not involved in this case solely for compliance with the
`Protective Order. Robocast’s attempt to narrow the scope of “electronic or recording devices”
`would undermine the purpose of locking down the source code computer and review room.
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`Paragraph 38: Robocast agrees that its attorneys and others who have access to
`Defendants’ AEO and source code designated materials should not be permitted to draft or amend
`claims as part of original prosecution of patents in the agreed field of the alleged inventions, but
`Robocast simultaneously wants an exception to the prosecution bar that extends to all post-grant
`review proceedings where they would be able to draft and amend claims. This exception would
`render the prosecution bar meaningless. Robocast’s counsel will have broad access to Defendants’
`most sensitive confidential information, including Defendants’ source code, but they wish to be
`free to draft or amend patent claims in the agreed field of the alleged inventions in the context of
`post-grant proceedings where amending claims is sometimes permitted. Excepting all post-grant
`review proceedings from the prosecution bar would create the exact risk that the prosecution bar
`is intended to mitigate in the first place—amending or drafting claims in prosecution based on
`Defendants’ highly-confidential information. Counsel and consultants who have reviewed
`Defendants’ highly-confidential information should not be permitted to use this information to
`draft or amend patent claims in the same, agreed field—something that Robocast agrees with in
`the context of original prosecution. Indeed, courts in this District have extended prosecution bars
`to post-grant proceedings based on access to source code, which Robocast’s counsel will have
`access to here. See, e.g., Versata Software, Inc. v. Callidus Software, Inc., No. 12-931-SLR, 2014
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`Case 1:22-cv-00305-RGA-JLH Document 79 Filed 05/26/23 Page 3 of 3 PageID #: 1041
`The Honorable Jennifer L. Hall
`May 26, 2023
`Page 3
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`WL 1117804, *1, 2 (D. Del. March 12, 2014); Inventor Holdings, LLC v. Wal-Mart Stores Inc.,
`No. 13-CV-96 (GMS), 2014 WL 4370320, at *2 (D. Del. Aug. 27, 2014). In addition, no exception
`to the prosecution bar is needed for Robocast’s litigation counsel to continue participating in the
`IPRs of the Asserted Patents, as those patents are expired and their claims cannot be amended, so
`Robocast has no interest in its proposed exception that outweighs the need to protect Defendants.
`
`Paragraph 51: The parties agree that export controls apply to each party’s information
`and that the Protective Order should include a statement regarding export controls. The only
`question is which statement is appropriate. The export control provision proposed by Defendants
`is the most effective to protect Defendants’ information as well as promote compliance with
`applicable laws. U.S. export control laws restrict export of technical information, and Defendants
`have a strong interest in complying with those laws and protecting their technical information.
`Defendants’ proposal is consistent with important provisions of U.S export control laws (see, e.g.,
`15 C.F.R. § 734-36) and other protective orders entered in this District, and therefore should be
`adopted. See, e.g., IPA Techs. Inc. v. Google LLC, C.A. No. 18-318 (RGA), D.I. 60 (D. Del. Aug.
`20, 2019) (adopting protective order with similar export control provision) (Ex. 5); Data Engine
`Techs. LLC v. Google LLC, C.A. No. 14-1115-LPS, D.I. 33 (D. Del. Apr. 8, 2015) (“[A]s
`[defendant]’s sourcecode is entitled to stringent protection, that sourcecode may be referenced in
`other Protected Information, and the burden on Plaintiff (e.g., having to ‘purge’ a laptop before
`unrelated foreign travel or taking a different laptop on such travel) is not so strenuous as to
`outweigh [defendant]’s interests.”) (Ex. 6).
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`Paragraph 52: Robocast wants to freely cross-use documents between the Google and
`Netflix cases. Given Defendants are unrelated entities involved in separate cases, there is no basis
`for Robocast to retain and use one Defendant’s protected information in litigating against the other
`Defendant(s). As a compromise, Defendants have proposed that parties be permitted to retain
`documents “designated for cross-use in the non-settled case by agreement of the settling party or
`by order of the Court.” This is in line with other orders from this District regarding the treatment
`of confidential documents where multiple defendants are involved. See, e.g., AstraZeneca LP v.
`Sigmapharm Labs., LLC, No. 15-1000-RGA (D. Del. Apr. 26, 2016) (D.I. 71 at ¶ 16) (“absent
`written consent from the producing party, Plaintiffs may not produce or otherwise make available
`Defendant’s Protected Information to any other Defendant”) (Ex. 7).
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`Respectfully,
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`/s/ Frederick L. Cottrell, III
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`Frederick L. Cottrell, III (#2555)
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`All Counsel of Record (via email)
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`cc:
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