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`
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`EXHIBIT 2010
`EXHIBIT 20 10
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`

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`SPOKANE 509y324y9256 / fax 509y323y8979 SEATTLE 206y315y4001 / fax 206y315y4004 AUSTIN 512y505y8162 / fax 509y944y4693 PORTLAND METRO 360y524y7808 / fax 360y524y7808
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`
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`
`
`November 15, 2013
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`
`
`
`
`Dominic E. Massa
`
`Michael A. Diener
`
`Wilmer Cutler Pickering Hale and Dorr, LLP
`
`60 State Street
`
`Boston, MA 02109
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`
`
`Re:
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`Broadcom v. Ericsson -- IPR2013-00601; IPR2013-00602; IPR2013-00636
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`
`
`Dear Counsel:
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`
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`As you know, Lee & Hayes has been substituted as counsel for the Patent Owner Ericsson
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`in the above-captioned matters. We look forward to working with your firm toward a just
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`and speedy resolution of these matters.
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`
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`
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`We write concerning a discovery issue relating to Broadcom’s standing under Section
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`305(b). It is our understanding that Broadcom has a duty to defend or indemnify one or
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`more of the Defendants in the Ericsson v. D-Link et al. matter in the Eastern District of
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`Texas (Case No. 6-10-cv-00473). In particular, we are in receipt of the attached email
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`from Thomas Lagatta of Broadcom to Kasim Alfalahi of Ericsson, sent on April 5, 2012
`
`during the pendency of the EDTX case. As you can see from that email, Broadcom makes
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`a proposal (i) covenanting not to sue on the Broadcom portfolio, (ii) in exchange for
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`Ericsson’s agreement to reimburse Broadcom “when Broadcom – because of its indemnity
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`commitments – is forced to compensate a customer for amounts it pays to Ericsson or
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`otherwise incurs in the way of expenses (such as legal fees) as a result of patent claims
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`Ericsson makes relating to that customer’s use of Broadcom products.” See attached
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`(emphasis added). This email suggests that Broadcom was in privity with one or more of
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`the D-Link Defendants, as it pertains to the validity of the Ericsson patents-in-suit, as well
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`as raises questions about the real party in interest under Section 315(b).
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`
`
`To accurately assess the nature and scope of Broadcom’s relationship with the D-Link
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`Defendants under Section 305(b), pursuant to 37 C.F.R. §§ 42.51(b)(1)(iii) and (b)(2)(i), we
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`hereby request that Broadcom voluntarily produce the following documents:
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`
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`ͻ contracts between Broadcom and each of the D-Link Defendants relating to the
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`Broadcom products used in any of the D-Link Defendants’ products accused of
`
`infringement in the D-Link case (including but not limited to Broadcom’s BCM
`
`
`13809 research blvd., suite 405, austin, texas 78750, 512-505-8162 www.leehayes.com
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`lee & hayes pllc, intersection of ip & business law
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`

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`November 15, 2013
`Page 2
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`
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`4313 and BCM 4321 products) which include any indemnity or duty to defend
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`provisions;
`
`ͻ
`
`joint defense agreements between Broadcom and any of the D-Link Defendants
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`relating to the Ericsson patents-in-suit;
`
`ͻ
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`invoices received from any of the D-Link Defendants (or their attorneys) seeking
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`reimbursement for any fees or expenses incurred in the D-Link matter;
`
`ͻ
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`records of any payments made by Broadcom to any of the D-Link Defendants (or
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`their counsel) pursuant to any contractual duty to defend or indemnify them
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`against infringement of the Ericsson patents-in-suit; and
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`ͻ communications between Broadcom (or its counsel) and any of the D-Link
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`defendants (or their counsel) relating to the validity of the Ericsson patents-in-
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`suit.
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`
`
`We will of course agree to treat these documents as confidential under the terms of the
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`Standing Protective Order in the PTAB.
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`
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`As you are also likely aware, we are simultaneously seeking to discover some of these
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`documents that may have been produced by the D-Link Defendants in that case.
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`Unfortunately, to the extent these documents were produced, we are presently unable to
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`review them because of the terms of the Protective Order entered in that case, a copy of
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`which is attached.
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`
`
`Two provisions in particular are problematic. First, paragraph 12 indicates that any
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`confidential documents “may be used only for purposes of litigation between the
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`parties.” Protective Order at 13. Because Broadcom is not a party in the D-Link matter,
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`we arguably cannot use Broadcom’s own documents in these litigations under the literal
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`terms of the Protective Order.
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`
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`The second potential issue is the Prosecution Bar in paragraph 8. That section would
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`preclude us from “participat[ing], directly or indirectly, in the drafting, preparation, or
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`amending of any patent claim on behalf of [Ericsson] relating to any method, system, or
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`apparatus for the manipulation, either separately or jointly, of wireless signal processing
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`directed to the claimed subject matter of the patents-in-suit from the time of receipt of
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`such [confidential] information through and including one (1) year following the entry of a
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`final non-appealable judgment or the complete settlement of all claims….” Because we
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`have the ability to amend the claims as of right in these IPRs, we are concerned that
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`Broadcom or the D-Link Defendants might try to invoke this provision in the event that
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`we attempt to do so. For these reasons, we have not yet reviewed any confidential
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`

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`November 15, 2013
`Page 3
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`documents produced in the D-Link matter until we can obtain assurances from all parties
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`concerned that they will not attempt to enforce this provision against us.
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`
`
`We do not believe that either one of these provisions should prevent us from using these
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`documents in the present cases. As to the first, Broadcom is an author or recipient of all
`
`of the documents that we are requesting. There can hardly be any prejudice against
`
`using a Broadcom document against Broadcom in this case. In addition, the Protective
`
`Order itself permits the use of confidential information against “nonparties … if it appears
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`on its face or from other documents … to have been received from or communicated to
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`the nonparty.” Accordingly, we believe that we should be allowed to use these
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`documents in the present IPRs.
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`
`
`As to the Prosecution Bar, none of these business type documents raise any concerns
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`under that provision. As you know, these bars are put in place to prevent a party from
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`using a party’s confidential technical information to carefully draft narrow claims on to
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`the accused products. None of the documents that we seek will give us any insight into
`
`the technical design of Broadcom’s products. Therefore, the Prosecution Bar should be a
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`non-issue. We would also note that the Board appears to agree with us. See Scent Air v.
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`Prolitec, IPR2013-00179 (Paper 9).
`
`
`
`In an attempt to avoid these issues, Ericsson’s EDTX counsel McKool Smith inquired of the
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`D-Link Defendants’ counsel to see if they would waive these two provisions for purposes
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`of these IPR matters. Attached are the email exchanges between Justin Nemunaitis of
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`McKool Smith and several of the defendants’ counsel asking for this information (or
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`alternatively redacted versions) for possible submission to the PTAB. As you will see,
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`Broadcom’s customers would not agree;
`
`instead, they referred our
`
`inquiries to
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`Broadcom. Consequently, we are asking you to instruct your customers’ to agree to the
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`terms set out in McKool Smith’s requests.
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`
`
`In conclusion, we would ask that you please reply by indicating: (1) whether Broadcom
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`will voluntarily produce the documents requested above; and (2) instruct the defense
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`counsel in the EDTX to waive the terms of the Protective Order that prevent us from using
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`these documents in the present IPRs.
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`
`
`

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`November 15, 2013
`Page 4
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`We would appreciate a definitive response by November 22, 2013, so that we can move
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`the Board for additional discovery if necessary.
`
`
`
`Regards,
`/s/ Peter J. Ayers
`
`Peter J. Ayers
`
`Lee & Hayes, PLLC
`
`13809 Research Blvd., Suite 405
`
`Austin, TX 78750
`
`Phone: (512) 505-8162
`
`Email: peter@leehayes.com
`
`
`
`Enclosures
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`
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`

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`Page 1 of 2
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`Barrington, Lynn
`
`From: Thomas Lagatta [tlagatta@broadcom.com]
`
`Sent:
`
`jeudi 5 avril 2012 01:43
`
`To:
`
`Kasim Alfalahi
`
`Subject: Proposal
`
`KE&/Ed/>ͬ&KZ ^dd>DEd WhZWK^^ KE>zͬ^h:d dK E н &Z ϰϬϴ
`
`<ĂƐŝŵ͕
`
`ƵƌŝŶŐ ŽƵƌ ĐŽŶǀĞƌƐĂƚŝŽŶ ůĂƐƚ ǁĞĞŬ͕ ǁĞ ĚŝƐĐƵƐƐĞĚ ǁĂLJƐ ĨŽƌ ƌŽĂĚĐŽŵ ĂŶĚ ƌŝĐƐƐŽŶ ƚŽ ĐŽŶƚŝŶƵĞ ƚŽ ĞdžƉĂŶĚ ŽƵƌ
`ďƵƐŝŶĞƐƐ ƌĞůĂƚŝŽŶƐŚŝƉ ǁŚŝůĞ ŐŝǀŝŶŐ LJŽƵ ĨƌĞĞĚŽŵ ƚŽ ƉƵƌƐƵĞ LJŽƵƌ /W ŐŽĂůƐ͘ zŽƵ ƐĂŝĚ LJŽƵ ǁĞƌĞ ŽƉĞŶ ƚŽ
`͞ĐƌĞĂƚŝǀĞ͟ ƉƌŽƉŽƐĂůƐ ŝŶ ƚŚŝƐ ĂƌĞĂ͘ dŚĞ ĨŽůůŽǁŝŶŐ ŝƐ ĂŶ ŽƵƚůŝŶĞ ĨŽƌ ĂŶ ĂƉƉƌŽĂĐŚ ƚŚĂƚ ĂƚƚĞŵƉƚƐ ƚŽ ŵĞĞƚ ŽƵƌ
`ƌĞƐƉĞĐƚŝǀĞ ŶĞĞĚƐ͗
`
`KEWd͗
`
`ƌŽĂĚĐŽŵ ǁŽƵůĚ ŐŝǀĞ ƌŝĐƐƐŽŶ Ă ŽŶĞͲǁĂLJ ƉĂƚĞŶƚ ĐŽǀĞŶĂŶƚ ŶŽƚ ƚŽ ƐƵĞ ;͞E^͟Ϳ ƵŶĚĞƌ ƚŚĞ ƌŽĂĚĐŽŵ ƉĂƚĞŶƚ
`ƉŽƌƚĨŽůŝŽ ƚŚĂƚ ǁŽƵůĚ ŐŝǀĞ ƌŝĐƐƐŽŶ ƚŚĞ ĨƌĞĞĚŽŵ ƚŽ ŽƉĞƌĂƚĞ ŝƚƐ ďƵƐŝŶĞƐƐ͘
`
`/Ŷ ƌĞƚƵƌŶ͕ ǁĞ ĂƐŬ ƚŚĂƚ ƌŝĐƐƐŽŶ ƌĞŝŵďƵƌƐĞ ƌŽĂĚĐŽŵ ǁŚĞŶ ƌŽĂĚĐŽŵ ʹ ďĞĐĂƵƐĞ ŽĨ ŝƚƐ ŝŶĚĞŵŶŝƚLJ
`ĐŽŵŵŝƚŵĞŶƚƐ ʹ ŝƐ ĨŽƌĐĞĚ ƚŽ ĐŽŵƉĞŶƐĂƚĞ Ă ĐƵƐƚŽŵĞƌ ĨŽƌ ĂŵŽƵŶƚƐ ŝƚ ƉĂLJƐ ƚŽ ƌŝĐƐƐŽŶ Žƌ ŽƚŚĞƌǁŝƐĞ ŝŶĐƵƌƐ ŝŶ
`ƚŚĞ ǁĂLJ ŽĨ ĞdžƉĞŶƐĞƐ ;ƐƵĐŚ ĂƐ ůĞŐĂů ĨĞĞƐͿ ĂƐ Ă ƌĞƐƵůƚ ŽĨ ƉĂƚĞŶƚ ĐůĂŝŵƐ ƌŝĐƐƐŽŶ ŵĂŬĞƐ ƌĞůĂƚŝŶŐ ƚŽ ƚŚĂƚ
`ĐƵƐƚŽŵĞƌ͛Ɛ ƵƐĞ ŽĨ ƌŽĂĚĐŽŵ ƉƌŽĚƵĐƚƐ͘
`
`Zd/KE>͗
`
`tŚŝůĞ ĞŶƐƵƌŝŶŐ ĐŽŶƚŝŶƵĂƚŝŽŶ ŽĨ ƚŚĞ ĐŽŶĨůŝĐƚͲĨƌĞĞ ƌĞůĂƚŝŽŶƐŚŝƉ ďĞƚǁĞĞŶ ƌŽĂĚĐŽŵ ĂŶĚ ƌŝĐƐƐŽŶ͕ ƌŝĐƐƐŽŶ
`ĂǀŽŝĚƐ ŚĂǀŝŶŐ ƚŽ ŐŝǀĞ ƌŽĂĚĐŽŵ ĂŶ ĞdžƉůŝĐŝƚ E^ ŝŶ ƌĞƚƵƌŶ ĨŽƌ ƚŚĞ E^ ŝƚ ƌĞĐĞŝǀĞƐ ĨƌŽŵ ƌŽĂĚĐŽŵ͕ ƚŚĞƌĞďLJ
`ĂůůŽǁŝŶŐ ƌŝĐƐƐŽŶ ƚŽ ŵĂŝŶƚĂŝŶ ĐŽŵƉůĞƚĞ ĐŽŶƚƌŽů ŽǀĞƌ ŝƚƐ ůŝĐĞŶƐŝŶŐ ƉƌŽŐƌĂŵ͘ &Žƌ ĂƐ ůŽŶŐ ĂƐ ƌŝĐƐƐŽŶ ĚŽĞƐ ŶŽƚ
`ƚĂƌŐĞƚ ƌŽĂĚĐŽŵͲďĂƐĞĚ ƉƌŽĚƵĐƚƐ ŝŶ Ă ǁĂLJ ƚŚĂƚ ƚƌŝŐŐĞƌƐ ƌŽĂĚĐŽŵ͛Ɛ ŝŶĚĞŵŶŝƚLJ ŽďůŝŐĂƚŝŽŶƐ͕ ƌŝĐƐƐŽŶ ǁŝůů ĂǀŽŝĚ
`ŵĂŬŝŶŐ ĂŶLJ ƉĂLJŵĞŶƚƐ ƚŽ ƌŽĂĚĐŽŵ ĂŶĚ ƌĞŵĂŝŶ ĨƌĞĞ ƚŽ ůŝĐĞŶƐĞ ƚŚĞ KDƐ ĂƐ ŝƚ ǁŝƐŚĞƐ͘ /Ŷ ƌĞƚƵƌŶ͕ ƌŝĐƐƐŽŶ
`ƌĞĐĞŝǀĞƐ ƚŚĞ ĨƌĞĞĚŽŵ ƚŽ ŽƉĞƌĂƚĞ ƵŶĚĞƌ ƌŽĂĚĐŽŵ͛Ɛ ƉĂƚĞŶƚ ƉŽƌƚĨŽůŝŽ ǁŚŝĐŚ ŚĂƐ ďĞĞŶ ǁŝĚĞůLJ ƌĞĐŽŐŶŝnjĞĚ ĂƐ
`ďĞŝŶŐ ŽŶĞ ŽĨ ƐŝŐŶŝĨŝĐĂŶƚ ǀĂůƵĞ͘
`
`Khd>/E͗
`
`
`• KŶĞ ǁĂLJ ƉĂƚĞŶƚ E^ ĨƌŽŵ ZD ƚŽ ƌŝĐƐƐŽŶ ;ǁŚŝĐŚ ǁŽƵůĚ ƚĞƌŵŝŶĂƚĞ ŝĨ ƌŝĐƐƐŽŶ ĞǀĞƌ ƐƵĞĚ ZD Žƌ
`ZD͛Ɛ ĨĂďƐ ĚŝƌĞĐƚůLJͿ ĨŽƌ ͺͺ LJĞĂƌƐ ƚŽ ĐŽǀĞƌ ƌŝĐƐƐŽŶ͛Ɛ ŝŶĨƌĂƐƚƌƵĐƚƵƌĞ ƉƌŽĚƵĐƚƐ ŝŶ ŵĂƌŬĞƚƐ ŝƚ ŝƐ ĚŽŝŶŐ
`ďƵƐŝŶĞƐƐ
`
`• ƌŝĐƐƐŽŶ ƌĞŝŵďƵƌƐĞƐ ZD ĨŽƌ Ψ ĂĐƚƵĂůůLJ ƉĂŝĚ ďLJ ZD ƚŽ ZD ĐƵƐƚŽŵĞƌƐ ĨŽƌ ZD ƉƌŽĚƵĐƚƐ
`ƐŚŝƉƉĞĚ ƉƌŝŽƌ ƚŽ ƚŚĞ ĞŶĚ ŽĨ ƚŚĞ ͺͺ LJĞĂƌ ƚĞƌŵ͕ ƐƵďũĞĐƚ ƚŽ ƚŚĞ ĨŽůůŽǁŝŶŐ ůŝŵŝƚĂƚŝŽŶƐ͗
`
`
`o ;ŝͿ ƚŚŝƐ ĚƵƚLJ ŝƐ ůŝŵŝƚĞĚ ƚŽ ĐƵƐƚŽŵĞƌƐ ĂŐĂŝŶƐƚ ǁŚŽŵ ƌŝĐƐƐŽŶ ĂƐƐĞƌƚƐ ĐůĂŝŵƐ ŽĨ ƉĂƚĞŶƚ
`ŝŶĨƌŝŶŐĞŵĞŶƚ͕
`
`o ;ŝŝͿ ƚŚŝƐ ĚƵƚLJ ĂƉƉůŝĞƐ ŽŶůLJ ǁŚĞƌĞ ƚŚĞ ĐůĂŝŵƐ ŵĂĚĞ ďLJ ƌŝĐƐƐŽŶ ƌĞůĂƚĞ ƚŽ Žƌ ƌĞƐƵůƚ ĨƌŽŵ ƚŚĞ
`ĐƵƐƚŽŵĞƌ͛Ɛ ƵƐĞ ŽĨ Ă ƌŽĂĚĐŽŵ ƉƌŽĚƵĐƚ
`
`o ;ŝŝŝͿ ƚŚŝƐ ĚƵƚLJ ŝƐ ůŝŵŝƚĞĚ ƚŽ ƉĂLJŵĞŶƚƐ ŵĂĚĞ ďLJ ZD ĨŽƌ ZD͛Ɛ й ƐŚĂƌĞ ŽĨ ƐƵĐŚ ĐƵƐƚŽŵĞƌ͛Ɛ
`ĞdžƉŽƐĞĚ ƌĞǀĞŶƵĞ ĂŶĚ ĨŽƌ ZD͛Ɛ й ƐŚĂƌĞ ŽĨ ƌĞŝŵďƵƌƐĂďůĞ ĞdžƉĞŶƐĞƐ͕
`
`
`22/08/2012
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`Page 2 of 2
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`0—
`
`o ;ŝǀͿ ƚŚŝƐ ĚƵƚLJ ŝƐ ƐƵďũĞĐƚ ƚŽ ŽƵƌ ŽďůŝŐĂƚŝŽŶ ƚŽ ƉƵƐŚ ďĂĐŬ ŽŶ ĐƵƐƚŽŵĞƌ ĐůĂŝŵƐ ƚŚĂƚ ĂƌĞ ĞdžƉƌĞƐƐůLJ
`ĞdžĐůƵĚĞĚ ďLJ ƚŚĞ ƚĞƌŵƐ ŽĨ ŽƵƌ ŝŶĚĞŵŶŝƚLJ ĂŐƌĞĞŵĞŶƚƐ
`
`• EŽ E^ ĨƌŽŵ ƌŝĐƐƐŽŶ ƚŽ ƌŽĂĚĐŽŵ
`
`KDDEd^͗
`
`tĞ ŚĂǀĞ ĂƚƚĞŵƉƚĞĚ ƚŽ ŝĚĞŶƚŝĨLJ Ă ƐƚƌƵĐƚƵƌĞ ƚŚĂƚ ĂůůŽǁƐ LJŽƵ ƚŽ ĂǀŽŝĚ ŵĂŬŝŶŐ ĂŶLJ ƉĂLJŵĞŶƚƐ Ăƚ Ăůů͕ ŝŶ ǁŚŝĐŚ
`ĐĂƐĞ LJŽƵ ƌĞĐĞŝǀĞ Ă ĨƌĞĞ ŽŶĞͲǁĂLJ E^͘ /Ŷ ĨƵƌƚŚĞƌĂŶĐĞ ŽĨ ƚŚĂƚ ŽďũĞĐƚŝǀĞ͕ ǁĞ ŚĂǀĞ ďƵŝůƚ ŝŶ ĂƐƐƵƌĂŶĐĞƐ ƚŚĂƚ
`ZD ǁŝůů ŶŽƚ ďĞ ĨƌĞĞ ƚŽ ŐƌĂŶƚ ĨƌŝǀŽůŽƵƐ ŝŶĚĞŵŶŝƚŝĞƐ ƚŚĂƚ ǁĞ ǁŽƵůĚ ŶŽƚ ŽƚŚĞƌǁŝƐĞ ŐƌĂŶƚ ŝŶ ƚŚĞ ŽƌĚŝŶĂƌLJ
`ĐŽƵƌƐĞ ŽĨ ďƵƐŝŶĞƐƐ ;ƐƵĐŚ ĂƐ ƚŚĞ ůŝŵŝƚƐ ĚĞƐĐƌŝďĞĚ ĂďŽǀĞ ƚŚĂƚ ĂƌĞ ƚŝĞĚ ƚŽ й ƐŚĂƌĞ ĂŶĚ ŽƵƌ ĚƵƚLJ ƚŽ ƉƵƐŚ ďĂĐŬ ŽŶ
`ĞdžĐůƵĚĞĚ ĐůĂŝŵƐͿ͘ tŚŝůĞ ƚŚĞ ͚ĚĞǀŝů ŝƐ ŝŶ ƚŚĞ ĚĞƚĂŝůƐ͕͛ ǁĞ ƚƌƵƐƚ LJŽƵ ǁŝůů ĨŝŶĚ ƚŚŝƐ ƚŽ ďĞ ĂŶ ĂƚƚĞŵƉƚ ƚŽ ƚŚŝŶŬ
`͚ŽƵƚƐŝĚĞ ŽĨ ƚŚĞ ďŽdž͛ ĂƐ ǁĞ ĂƌĞ ƐŝŶĐĞƌĞ ŝŶ ŽƵƌ ĚĞƐŝƌĞ ƚŽ ĂǀŽŝĚ ĐŽŶĨůŝĐƚ ǁŝƚŚ ƌŝĐƐƐŽŶ͘
`
`ĨƚĞƌ LJŽƵ ŚĂǀĞ ŚĂĚ ƚŝŵĞ ƚŽ ŐŝǀĞ ƚŚŝƐ ƉƌŽƉŽƐĂů ŝƚƐ ĚƵĞ ĐŽŶƐŝĚĞƌĂƚŝŽŶ͕ ƉůĞĂƐĞ ůĞƚ ŵĞ ŬŶŽǁ ǁŚĞŶ ǁĞ ĐĂŶ ĚŝƐĐƵƐƐ
`ƚŚŝƐ ŝŶ ŐƌĞĂƚĞƌ ĚĞƚĂŝů͘ DLJ ŵŽďŝůĞ ŝƐ нϭ ϵϰϵ ϯϱϭ ϯϯϬϬ ĂŶĚ LJŽƵ ŚĂǀĞ ŵLJ ĞŵĂŝů ĨƌŽŵ ĂďŽǀĞ͘
`
`dŽŵ
`
`
`22/08/2012
`22/08/2012
`
`

`

`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 1 of 22 PageID #: 2019
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`Civil Action No. 6:10-CV-473
`
`JURY TRIAL DEMANDED
`
`§ § § § § § § § § § §
`
`ERICSSON INC. et al.
`
`Plaintiffs,
`
`vs.
`
`D-LINK CORPORATION, et al.
`
`Defendants.
`
`AGREED PROTECTIVE ORDER
`
`To expedite the flow of discovery material, to facilitate the prompt resolution of disputes
`
`over the confidentiality of discovery materials, to adequately protect the parties’ confidential
`
`information, to ensure that only materials that are confidential are treated as such, and to ensure
`
`that the parties are permitted reasonably necessary uses of such materials in preparation for and
`
`in the conduct of trial, pursuant to Fed. R. Civ. P. 26(c), it is hereby ORDERED THAT:
`
`MATERIAL DESIGNATED AS “CONFIDENTIAL”1
`
`1.
`
`A Producing Party may designate material as “CONFIDENTIAL” information if
`
`the Producing Party considers the material to contain or reflect non-public: trade secrets,
`
`research, development, or commercial information, whether embodied in physical objects,
`
`documents, or the factual knowledge of persons. Unless otherwise ordered by the Court,
`
`Discovery Material designated as “CONFIDENTIAL” may be disclosed only to the following:
`
`(a)
`
`The Receiving Party’s Outside Counsel;
`
`1 The headings as provided herein are included as convenient references only.
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 2 of 22 PageID #: 2020
`
`(b)
`
`Outside Counsel’s paralegals and staff, and any copying or clerical
`
`litigation support services working at the direction of such counsel, paralegals, and staff;
`
`(c)
`
`Employees of Parties having responsibility for supervising this action;
`
`(d)
`
`Any outside expert or consultant retained by the Receiving Party to assist
`
`in this action, provided that disclosure is only to the extent necessary to perform such work; and
`
`provided that: (i) such expert or consultant has agreed to be bound by the provisions of the
`
`Protective Order by signing a copy of Exhibit A; and (ii) no unresolved objections to such
`
`disclosure exist after proper notice has been given to all Parties as set forth in Paragraph 9 below;
`
`(e)
`
`Court reporters, stenographers and videographers retained to record
`
`testimony taken in this action;
`
`(f)
`
`The Court, jury, and court personnel;
`
`(g)
`
`Graphics, translation, design, and/or trial consulting services, having first
`
`agreed to be bound by the provisions of the Protective Order by signing a copy of Exhibit A;
`
`(h)
`
`Mock jurors who have signed an undertaking or agreement agreeing not to
`
`publicly disclose Confidential Information and to keep any information concerning Protected
`
`Material confidential;
`
`(i)
`
`Any mediator who is assigned to hear this matter, and his or her staff,
`
`subject to their agreement to maintain confidentiality to the same degree as required by this
`
`Protective Order; and
`
`(j)
`
`Any other person with the prior written consent of the Producing Party.
`
`AGREED PROTECTIVE ORDER
`Page 2
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 3 of 22 PageID #: 2021
`
`MATERIAL DESIGNATED
`“CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY”
`
`2.
`
`A Producing Party may designate material as “CONFIDENTIAL-OUTSIDE
`
`ATTORNEYS’ EYES ONLY” if it contains or reflects information that is extremely
`
`confidential and/or sensitive in nature and the Producing Party reasonably believes that the
`
`disclosure of such Discovery Material is likely to cause economic harm or significant
`
`competitive disadvantage to the Producing Party. The Parties agree that the following
`
`information, if non-public, shall be presumed to merit the “CONFIDENTIAL-OUTSIDE
`
`ATTORNEYS’ EYES ONLY” designation: trade secrets, pricing information, financial data,
`
`sales information, sales or marketing forecasts or plans, business plans, sales or marketing
`
`strategy, product development
`
`information, engineering documents,
`
`testing documents,
`
`employee information, and other non-public information of similar competitive and business
`
`sensitivity. Unless otherwise ordered by the Court, Discovery Material designated as
`
`“CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY” may be disclosed only to:
`
`(a)
`
`(b)
`
`The Receiving Party’s Outside Counsel;
`
`Outside Counsel’s paralegals and staff, and any copying or clerical
`
`litigation support services working at the direction of such counsel, paralegals, and staff;
`
`(c)
`
`Any outside expert or consultant retained by the Receiving Party to assist
`
`in this action, provided that disclosure is only to the extent necessary to perform such work; and
`
`provided that: (i) such expert or consultant has agreed to be bound by the provisions of the
`
`Protective Order by signing a copy of Exhibit A; (ii) no unresolved objections to such disclosure
`
`exist after proper notice has been given to all Parties as set forth in Paragraph 9 below;
`
`(d)
`
`Court reporters, stenographers and videographers retained to record
`
`testimony taken in this action;
`
`AGREED PROTECTIVE ORDER
`Page 3
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 4 of 22 PageID #: 2022
`
`(e)
`
`(f)
`
`The Court, jury, and court personnel;
`
`Graphics, translation, design, and/or trial consulting services, etc., having
`
`first agreed to be bound by the provisions of the Protective Order by signing a copy of Exhibit A;
`
`(g)
`
`Any mediator who is assigned to hear this matter, and his or her staff,
`
`subject to their agreement to maintain confidentiality to the same degree as required by this
`
`Protective Order; and
`
`(h)
`
`Any other person with the prior written consent of the Producing Party.
`
`DEPOSITION TESTIMONY AND TRANSCRIPTS
`
`3.
`
`Any Party may designate as “CONFIDENTIAL” or “CONFIDENTIAL-
`
`OUTSIDE ATTORNEYS’ EYES ONLY” documents or information that is disclosed at a
`
`deposition by
`
`indicating on
`
`the
`
`record at
`
`the deposition
`
`that
`
`the
`
`testimony
`
`is
`
`“CONFIDENTIAL” or “CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY” and is
`
`subject to the provisions of this Protective Order. Any Party may also designate documents or
`
`information as “CONFIDENTIAL” or “CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES
`
`ONLY” by notifying the court reporter and all of the parties, in writing within seven (7) days
`
`after receipt of the final deposition transcript, of the specific pages and lines of the final
`
`transcript that should be treated thereafter as “CONFIDENTIAL” or “CONFIDENTIAL-
`
`OUTSIDE ATTORNEYS’ EYES ONLY.” Each Party shall attach a copy of such written
`
`notice or notices to the face of the transcript and each copy thereof in his/her possession,
`
`custody, or control. All deposition transcripts shall be treated as “CONFIDENTIAL-OUTSIDE
`
`ATTORNEYS’ EYES ONLY” for at least a period of seven (7) days after receipt of the final
`
`transcript unless otherwise designated ahead of such time period.
`
`AGREED PROTECTIVE ORDER
`Page 4
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 5 of 22 PageID #: 2023
`
`MATERIAL DESIGNATED AS “SOURCE CODE”
`
`4.
`
`A Producing Party may designate material as “SOURCE CODE” if it comprises
`
`or includes confidential, proprietary, and/or trade secret source code. Unless otherwise ordered
`
`by the Court, Discovery Material designated as “SOURCE CODE” shall be subject to the
`
`review provisions set forth in Paragraph 5 below, and may be disclosed, subject to Paragraphs
`
`12-14, 16-17 below, solely to:
`
`(a)
`
`The Receiving Party’s Outside Counsel;
`
`(b)
`
`Outside Counsel’s paralegals and staff, and any copying or clerical
`
`litigation support services working at the direction of such counsel, paralegals, and staff;
`
`(c)
`
`Any outside expert or consultant retained by the Receiving Party to assist
`
`in this action, provided that disclosure is only to the extent necessary to perform such work; and
`
`provided that: (i) such expert or consultant has agreed to be bound by the provisions of the
`
`Protective Order by signing a copy of Exhibit A; (ii) no unresolved objections to such disclosure
`
`exist after proper notice has been given to all Parties as set forth in Paragraph 6 below.
`
`(d)
`
`Court reporters, stenographers and videographers retained to record
`
`testimony taken in this action;
`
`(e)
`
`(f)
`
`The Court, jury, and court personnel;
`
`Graphics, translation, design, and/or trial consulting services, having first
`
`agreed to be bound by the provisions of the Protective Order by signing a copy of Exhibit A;
`
`(g)
`
`Any mediator who is assigned to hear this matter, and his or her staff,
`
`subject to their agreement to maintain confidentiality to the same degree as required by this
`
`Protective Order; and
`
`(h)
`
`Any other person with the prior written consent of the Producing Party.
`
`AGREED PROTECTIVE ORDER
`Page 5
`
`McKool 401091v1
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`

`

`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 6 of 22 PageID #: 2024
`
`REVIEW OF SOFTWARE CODE
`
`5.
`
`Access to the machine-readable version of code may be permitted only to those
`
`persons authorized to receive SOURCE CODE (as defined in paragraph 4) and subject to the
`
`PROSECUTION BAR in Paragraph 8, and only on “stand-alone” computers (that is, computers
`
`not connected to a network, internet or peripheral device, except that the stand-alone computers
`
`may be connected to a printer or printers) at the offices of the producing party’s counsel, the
`
`facilities of the producing party, or another mutually agreeable location, to be made available
`
`during regular business hours (9:00 a.m. to 6:00 p.m. local time) on three 3 business days notice
`
`until the close of expert discovery in this action, subject to the requirements of Paragraph 9. A
`
`Producing Party will meet and confer with the Receiving Party regarding accommodating
`
`reasonable requests for access to such secure locations on Saturdays and Sundays, and access
`
`during weekdays past 6:00 p.m. local time with sufficient lead time. Two stand-alone computers,
`
`as defined above, must be provided at the offices of the producing party’s counsel, the facilities
`
`of the producing party, or the mutually agreeable location for review of source code. No
`
`recording devices (e.g., cell phones, cameras) shall be permitted inside the source code review
`
`room. The Producing Party must secure the source code reviewer’s cell phone and other
`
`personal effects not allowed in the source code computer room and the Producing Party must
`
`also provide a room in which the source code reviewer can talk on his cell phone in private.
`
`(a) At the pretrial conference in this case, a party may ask the Court for access to the
`
`source code under the same conditions and with the same limitations and restrictions as provided
`
`in this Paragraph 5 herein in Tyler, Texas one week prior to the beginning of trial and continuing
`
`through the end of trial. However, there is no agreement, stipulation or obligation for the parties
`
`AGREED PROTECTIVE ORDER
`Page 6
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 7 of 22 PageID #: 2025
`
`to address this issue at the pretrial conference, or to grant access to the source code beyond the
`
`expert discovery period absent an order from the Court.
`
`(b)
`
`The parties must produce code in computer-searchable format in its native format
`
`and in a file structure that mirrors the file structure of the SOURCE CODE as maintained by the
`
`Producing Party. If requested by the Receiving Party, the producing party shall install tools
`
`reasonably necessary to review the source code on the Source Code Computers including, but
`
`not limited to: Grep, Understand C, Visual Slick Edit, Source-Navigator, PowerGrep and/or
`
`ExamDiff Pro. Licensed copies of agreed upon tool software shall be paid for or provided by the
`
`Receiving Party. If the Producing Party does not possess an appropriate license to any such
`
`software tools, then, if the Requesting Party desires to use such software tools it will provide the
`
`Producing Party with a licensed copy of such software tools, and the Producing Party shall install
`
`such software tools on the source code computers. The Receiving Party must provide the
`
`Producing Party with the CD or DVD containing such licensed software tool(s) at least five (5)
`
`days in advance of the date upon which the Receiving Party wishes to have the additional
`
`software tools available for use on the Source Code Computers.
`
`(c)
`
`The Producing Party must allow printing of limited aspects of code that are
`
`reasonably related to this case at the time of inspection by the requesting party. At the election
`
`of the Producing Party, the Requesting Party, upon completing an inspection, may take away
`
`copies of the printed code printed on yellow, pre-Bates numbered paper to be provided by the
`
`Producing Party (as discussed below), or alternatively, the Producing Party may provide yellow
`
`paper copies of the requested code within two (2) business days of a request for copies following
`
`a code review. Outside Counsel for the Producing Party shall keep the originals of the printed
`
`code. The Producing Party must provide yellow, pre-Bates-labeled, pre-SOURCE CODE
`
`AGREED PROTECTIVE ORDER
`Page 7
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 8 of 22 PageID #: 2026
`
`labeled paper for printing source code. The party receiving paper copies of such code must keep
`
`that code in a secured container or location at all times. Subject to the foregoing, the Receiving
`
`Party may make three copies (on yellow paper) of printed source code. The Receiving Party
`
`must keep printed source code in a secured container unless in a secured, private area. Attorneys
`
`may make copies of the paper copies of code for use as exhibits in court proceedings, expert
`
`reports, and at depositions and trial. Furthermore, the parties will also exchange (by hand
`
`delivery) copies of the paper copies of code used as exhibits for court proceedings, expert
`
`reports, and at depositions, when so used. Any additional copies will be treated the same as the
`
`original print-outs. No electronic copies of the source code shall be made by the receiving party
`
`except for in connection with (i) filing (under seal) and service of papers, motions, and
`
`pleadings; (ii) expert reports; and (iii) a hearing or trial in this matter. The Requesting Party
`
`must maintain a complete log of bates numbered pages printed, and must produce such log at the
`
`time its burden expert reports are served, regardless of the restrictions on expert discovery
`
`provided below. The log must be supplemented with each new expert report and within 10 days
`
`after trial. For security purposes, a copy of the log must be produced to the producing party at
`
`the time its burden expert reports are served.
`
`(d)
`
`Paper copies of code must include bates number and confidentiality labels when
`
`printed, but the Producing Party may not undertake any effort to track or otherwise determine
`
`which pages of code have been printed. The Producing Party may not videotape or otherwise
`
`monitor review of code by the Requesting Party. However, Counsel for the Producing Party may
`
`visually monitor the Receiving Party's review of source code, but only to ensure that there is no
`
`unauthorized recording, copying or transmission of the code.
`
`AGREED PROTECTIVE ORDER
`Page 8
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 9 of 22 PageID #: 2027
`
`(e) Within sixty (60) days after the issuance of a final, non-appealable decision
`
`resolving all issues in the case, the Receiving Party must either serve upon the Producing Party,
`
`or certify the destruction of, all paper copies of the Producing Party’s source code as well as
`
`documents, pleadings, reports, and notes reflecting or referring to such source code.
`
`(f)
`
`Access to and review of source code shall be strictly for the purpose of
`
`investigating the claims and defenses at issue in the above-styled case. No person shall review
`
`or analyze source code for purposes unrelated to this case.
`
`(g)
`
`Nothing herein shall be deemed a waiver of a Party’s right to object to the
`
`production of source code. Absent a subsequent and specific court order, nothing herein shall
`
`obligate a Party to breach any agreement with a third party relating to such source code.
`
`(h)
`
`Non-parties who may have relevant source code may have different requirements
`
`for and objections to producing source code. Nothing in this Agreed Protective Order shall
`
`affect or be deemed a waiver of any non-party’s right to object to the production of source code
`
`or to object to the manner of any such production. The existing parties to this litigation who
`
`have negotiated this Agreed Protective Order acknowledge that this Agreed Protective Order
`
`may need to be amended or supplemented to accommodate such non-parties’ requirements
`
`and/or objections.
`
`MAKING OF CONFIDENTIALITY DESIGNATIONS
`
`6.
`
`The designation of documents, discovery responses, or other tangible materials
`
`(other than depositions or other pre-trial testimony) shall be made by the Designating Party by
`
`conspicuously affixing (physically or electronically)
`
`the
`
`legend “CONFIDENTIAL,”
`
`“CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY,” or “SOURCE CODE” on
`
`each page containing information to which the designation applies (or in the case of computer
`
`AGREED PROTECTIVE ORDER
`Page 9
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`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 10 of 22 PageID #: 2028
`
`medium on the medium label and/or cover). To the extent practical, the legend shall be placed
`
`near the Bates number identifying the document. If a document has more than one designation,
`
`the more restrictive or higher designation applies. Further, in the case of electronic documents, a
`
`party may provide a confidentiality designation by appending or pre-pending a confidentiality
`
`designation onto the filename of the electronic documents.
`
`7.
`
`The term “Designated Materials” shall be used to refer to any documents,
`
`discovery responses, or other materials designated with one of the following legends:
`
`“CONFIDENTIAL,” “CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY,” or
`
`“SOURCE CODE.” All Designated Materials that are not reduced to documentary, tangible, or
`
`physical form or that cannot be conveniently designated in the manner set forth above shall be
`
`designated by the Designating Party by informing the Receiving Party in writing.
`
`PROSECUTION BAR
`
`8.
`
`Any document designated as CONFIDENTIAL, CONFIDENTIAL-OUTSIDE
`
`ATTORNEYS’ EYES ONLY, or SOURCE CODE, is automatically designated as subject to a
`
`PROSECUTION BAR. Any person who reviews a document designated subject to a
`
`PROSECUTION BAR may not participate, directly or indirectly, in the drafting, preparation, or
`
`amending of any patent claim on behalf of any named party to this action relating to any method,
`
`system, or apparatus for the manipulation, either separately or jointly, of wireless signal
`
`processing directed to the claimed subject matter of the patents-in-suit from the time of receipt of
`
`such information through and including one (1) year following the entry of a final non-
`
`appealable judgment or order or the complete settlement of all claims against all parties in this
`
`action or (2) year after the person ceases to represent a party in this action, whichever occurs
`
`first. In addition to and notwithstanding the preceding sentence, any person subject to the
`
`AGREED PROTECTIVE ORDER
`Page 10
`
`McKool 401091v1
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`

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`Case 6:10-cv-00473-LED Document 148 Filed 10/18/11 Page 11 of 22 PageID #: 2029
`
`PROSECUTION BAR shall not draft or assist in the drafting of any claim or amendment to any
`
`claim of the patents-in-suit pursuant to a re-examination proceeding for a period ending one (1)
`
`year after the final resolution of this litigation (including any appeals). Outside Counsel or
`
`experts qualified by this Protective Order who have seen or reviewed the contents of
`
`CONFIDENTIAL, CONFIDENTIAL-OUTSIDE ATTORNEYS’ EYES ONLY, or
`
`SOURCE CODE materials are permitted to review communications from the United States
`
`Patent & Trademark Office regarding a reexamination proceeding, to discuss claim interpretation
`
`issues or ways of distinguishing claims in any such reexamination from any cited prior art,
`
`including with reexamination patent counsel, and to assist in discharging duties of candor and
`
`good faith.
`
` However, such Outside Counsel and experts may not prosecute any
`
`such reexamination and may not reveal the content of CONFIDENTIAL, CONFIDENTIAL-
`
`OUTSIDE ATTORNEYS’ EYES ONLY, or SOURCE CODE materials to reexamination
`
`counsel or agents.
`
`QUALIFICATION OF EXPERTS
`
`9.
`
`Prior to disclosing any material designated by any confidentiality