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`JOINT MOTION FOR ENTRY OF OPPOSED PROTECTIVE ORDER
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`
`APPLE INC.,
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`
`v.
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`Defendant.
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`
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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 1 of 16 PageID #: 607
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`QUEST NETTECH CORPORATION,
`
`
`Plaintiff,
`
`
`Case No. 2:19-cv-00118-JRG
`
`
`JURY TRIAL DEMANDED
`
`Plaintiff Quest NetTech Corporation (“NetTech”) and Defendant Apple, Inc. (“Apple”)
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`hereby file this Joint Motion seeking entry of a Protective Order. The Parties have met and
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`conferred and have agreed to all aspects of the protective order except for two issues:
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`(1) whether outside counsel who are competitive decision-makers should be barred from
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`having access to competitively-sensitive Protected Material; and
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`(2) whether outside counsel who receive Protected Material should be subject to a patent
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`acquisition bar.
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`NetTech’s proposed Protective Order is attached hereto as Exhibit A, Apple’s proposed
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`Protective Order is attached hereto as Exhibit B, and a redline showing the differences between
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`the two is attached hereto as Exhibit C.
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`I.
`
`Issue 1: Competitive Decisionmaker Issues (Protective Order ¶¶ 12, 13(f))
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`Plaintiff’s Proposal
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`Defendant’s Proposal
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`12. For Protected Material designated
`RESTRICTED - ATTORNEYS’ EYES
`ONLY, access to, and disclosure of, such
`
`
`12. For Protected Material designated
`RESTRICTED - ATTORNEYS’ EYES
`ONLY, access to, and disclosure of, such
`
`

`

`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 2 of 16 PageID #: 608
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`
`Plaintiff’s Proposal
`Protected Material shall be limited to:
`individuals listed in paragraphs 8(a-b), 8(e-g)
`and 8(i-j), provided, however, that access by
`individuals pursuant to paragraph 8(b, e) be
`limited to individuals who exercise no
`competitive decision- making authority on
`behalf of the client . . .
`[Paragraph 8(a), removed from Plaintiff’s
`proposal and present in Defendant’s proposal,
`is “outside counsel of record in this Action for
`the Parties”]
`
`Defendant’s Proposal
`Protected Material shall be limited to:
`individuals listed in paragraphs 8(a-b), 8(e-g)
`and 8(i-j), provided, however, that access by
`individuals pursuant to paragraph 8(a-b, e)
`be limited to individuals who exercise no
`competitive decision- making authority on
`behalf of the client . . .
`[Paragraph 8(a), removed from Plaintiff’s
`proposal and present in Defendant’s
`proposal, is “outside counsel of record in this
`Action for the Parties”]
`
`13(f) Access to Protected Material
`designated RESTRICTED CONFIDENTIAL
`- SOURCE CODE shall be limited to (i)
`outside counsel; (ii) up to three (3) outside
`consultants or experts (i.e., not existing
`employees or affiliates of a Party or an affiliate
`of a Party) retained for the purpose of this
`litigation and approved to access such
`Protected Materials pursuant to paragraph 7
`above; (iii) Court reporters, stenographers and
`videographers retained to record testimony
`taken in this action; (iv) the Court (including
`any Court-appointed mediators or advisors)
`and its personnel; and (v) any other person
`with the prior written consent of the producing
`Party. 
`
`13(f) Access to Protected Material
`designated RESTRICTED CONFIDENTIAL
`- SOURCE CODE shall be limited to (i)
`outside counsel provided that such Outside
`Counsel be limited to outside counsel who
`exercise no competitive decision-making
`authority, as defined by U.S. Steel v. United
`States, 730 F.2d 1465, 1468 n.3 (Fed. Cir.
`1984), on behalf of the client; (ii) up to three
`(3) outside consultants or experts (i.e., not
`existing employees or affiliates of a Party or
`an affiliate of a Party) retained for the
`purpose of this litigation and approved to
`access such Protected Materials pursuant to
`paragraph 8 above; (iii) Court reporters,
`stenographers and videographers retained to
`record testimony taken in this action; (iv) the
`Court (including any Court-appointed
`mediators or advisors) and its personnel; and
`(v) any other person with the prior written
`consent of the producing Party. 
`
`
`
`Plaintiff’s Statement
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`Defendant seeks a clause prohibiting outside counsel from viewing its protected
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`information if that counsel is involved in “competitive decisionmaking,” in a departure from the
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`model order that has serious and wide-ranging consequences. Such a requirement has the
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`potential to serve as a disqualification of outside counsel, and should be rejected for several
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`2
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 3 of 16 PageID #: 609
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`reasons.1 First, limiting disclosure of information to those in non-competitive decisionmaker
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`roles is typically done in the context of in-house counsel, not outside counsel. U.S. Steel Corp. v.
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`United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). Second, outside counsel is already
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`restricted by the prosecution bar and the other requirements of the protective order in receiving,
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`handling, and using Apple's protected information. A complete bar on outside counsel's ability
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`to view Apple's source code, including for the purposes of litigating this case, is a drastic
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`measure considering the other protections in the protective order and that Apple's perceived
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`harms are speculative at best. See PACid Group, LLC v. Apple, Inc., No. 6;09-cv-143, 2010 WL
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`10094684, at *4 (E.D. Tex. Feb. 19, 2010) (finding absence of good cause for protective order
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`restricting access to confidential materials by plaintiff's counsel, because a “reason to believe”
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`that outside counsel was a competitive decisionmaker "cannot be the basis for restricting an
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`ongoing attorney-client relationship.") (emphasis added). Here, like in PACid, Apple has not
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`met its burden in showing the propriety of such a provision.
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`Should the Court disagree, Plaintiff requests that outside counsel who are competitive
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`decisionmakers only be disallowed from conducting the source code review (e.g., restricted from
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`having access to Apple's native source code files), but not be restricted from viewing Apple
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`source code that is used in expert reports, pleadings, motions, and at trial. Such a provision
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`would protect the overwhelming majority of Apple's source code without impacting outside
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`counsel's ability to litigate this case.
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`
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`1 Plaintiff does not concede that any of its outside counsel are, have been, or will be its
`competitive decisionmakers. Rather, Plaintiff opposes this addition out of an abundance of
`caution and to prevent further motions practice regarding its outside counsel's activities which
`could be used to harass, and also interfere with the attorney client relationship.
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`3
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 4 of 16 PageID #: 610
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`Defendant’s Statement
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`NetTech’s outside counsel should not be allowed to use Apple’s source code and other
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`highly confidential information to help NetTech make business decisions. NetTech’s proposal
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`would, for example, permit its counsel to advise NetTech on additional, unrelated patents that it
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`could acquire to assert against Apple. Such a use of confidential information is indisputably
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`improper and contrary to the very purpose of a Protective Order, which is universally well-
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`established in this and other courts. Yet that is precisely what NetTech’s proposals would allow,
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`especially when considering that NetTech alarmingly also opposes a patent acquisition bar.
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`Such a result is manifestly unfair and prejudicial to Apple and should not be countenanced.
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`The provision Apple requests is routinely entered in patent cases like this one. See, e.g.,
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`AGIS Software Development LLC v. Apple Inc., No. 17-cv-00516-JRG, Dkt. 51 (E.D. Tex. Oct.
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`26, 2017) (containing provisions substantially identical to those proposed by Apple here); Uniloc
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`USA, Inc. v. Samsung Elecs. Am., Inc., No. 2:18-CV-00040, Protective Order (Dkt. No. 38) at 12
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`(E.D. Tex. May 30, 2018); Smartflash LLC v. Apple, Inc., et al., No. 6:13-CV-447, Revised
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`Agreed Protective Order (Dkt. No. 176) at 4, 11-12, 13-14 (E.D. Tex. Jul. 10, 2014);
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`ContentGuard Holdings, Inc. v. Amazon.com, Inc., et al., No. 2:13-CV-01112, Am. Protective
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`Order (Dkt. No. 152) at 13-15 (E.D. Tex. Jun. 6, 2014); Personal Audio, LLC v. Apple Inc., et
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`al., No. 9:09-CV-00111, Protective Order (Dkt. No. 118) at 10-14 (E.D. Tex. May 6, 2010);
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`Online News Link LLC v. Apple Inc., et al., No. 2:09-CV-312, Agreed Protective Order (Dkt. No.
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`86) at 10-11 (E.D. Tex. Apr. 8, 2010).
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`The policy reasons for restricting access to highly sensitive litigation materials to
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`opposing counsel (whether outside counsel or in-house counsel) that are not competitive decision
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`4
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 5 of 16 PageID #: 611
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`makers2 are well-established. See, e.g., ST Sales Tech Holdings, LLC v. Daimler Chrysler Co.,
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`No. 6:07-CV-346, 2008 WL 5634214, *8 (E.D. Tex. Mar. 14, 2008) (hereinafter “ST Sales
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`Tech”) (“Defendants would ultimately be at a high risk of continued litigation [due to inadvertent
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`disclosure or use]”). Indeed, in tacit acknowledgement of these policy considerations, NetTech
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`does not dispute that “outside consultants or experts” who are competitive decision makers for
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`NetTech cannot access discovery materials designated “RESTRICTED - ATTORNEYS’ EYES
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`ONLY” or “RESTRICTED CONFIDENTIAL SOURCE CODE.” The result should be no
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`different for NetTech’s outside counsel.
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`Concerning the facts of this case, NetTech publicly admits in its annual report as recently
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`as April 16, 2019 that its business model is acquiring patents for licensing and assertion, which
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`confirms that the heightened protections proposed by Apple are necessary and critical in this case
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`specifically. See ST Sales Tech, 2008 WL 5634214, at *7; see also Infosint S.A. v. H. Lundbeck
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`A.S., et al., No. 06-CIV-2869, 2007 WL 1467784, at *4-5 (S.D.N.Y. May 16, 2007) (preventing
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`patent assertion entity’s outside counsel from accessing confidential materials, as he performed
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`competitive decision-making by counseling the entity for years “based on his scientific and legal
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`expertise”); NetTech’s Annual Report (Dkt. 20-3) at 1 (“Our principal operations include the
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`development, acquisition, licensing and enforcement of intellectual property rights”).
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`Indeed, the risks of harm to Apple—even through inadvertent use of Apple’s
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`information—are acute given NetTech’s litigation history of filing more than 40 patent cases in
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`the last six years and the fact that NetTech’s outside counsel have represented other plaintiffs
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`against Apple. See AGIS Software Development LLC v. Apple, Inc., No. 17-cv-00516-JRG, Dkt.
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`
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`2 At NetTech’s suggestion, Apple added the reference to the U.S. Steel case to provide clarity regarding the criteria
`used for determining who is a competitive decision maker.
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`5
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 6 of 16 PageID #: 612
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`1 (E.D. Tex., June 21, 2017) (listing same law firm and attorneys as this case). Notably, in the
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`AGIS case, the same opposing counsel that represent NetTech here stipulated to the very
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`provision Apple is currently proposing, which underscores the reasonableness (and importance)
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`of the protection Apple is requesting. Id. NetTech is a non-practicing entity with very few
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`employees (see https://www.qprc.com/about-quest), which leaves it to rely heavily on outside
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`counsel for legal and business advice, with counsel’s role likely going “well-beyond the typical
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`role of outside counsel, even [when compared with] outside counsel who might work with an
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`entity for years.” ST Sales Tech, 2008 WL 5634214, at *7-8.
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`In situations like these, where the plaintiff’s business model revolves entirely around
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`acquiring, enforcing, and licensing patents, “it is difficult to argue that [outside counsel], who is
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`so heavily involved in these aspects of the business, is somehow not a competitive
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`decisionmaker.” Id. at *5. Indeed, although NetTech and Apple might not be competitors in the
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`traditional sense, they nevertheless both “seek to utilize, in one manner or another, intellectual
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`property as part of a business model for pecuniary gain.” Id. at 6. They are “competitors for the
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`rights to use the accused systems,” id., and outside counsel who qualify as Plaintiff’s competitive
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`decisionmakers should be barred from access to Apple’s source code and other sensitive,
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`confidential materials.
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`The harm to Apple does not require that NetTech’s counsel intentionally use Apple’s
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`confidential information outside the context of this litigation; rather, it can occur through
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`inadvertent disclosure or use. Indeed, courts have long recognized that “[i]t is very difficult for
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`the human mind to compartmentalize and selectively suppress information once learned, no
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`matter how well-intentioned the effort may be to do so.” In re Deutsche Bank Trust Co. Ams.,
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`605 F.3d 1373, 1378 (Fed. Cir. 2010); see also ST Sales Tech, 2008 WL 5634214, at *5 (“Courts
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`6
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 7 of 16 PageID #: 613
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`have continuously determined that attempting to compartmentalize knowledge is an exercise in
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`futility.”).
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`NetTech’s argument is that it would be prejudiced if its outside counsel could not see
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`Apple’s source code or other highly-confidential material. But this is a red herring since
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`NetTech’s outside counsel firm has several attorneys, so it can preclude those attorneys who
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`review Protected Materials from participating in competitive decision-making and conversely
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`screen those who are competitive decision makers from reviewing Protected Material. See
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`Notices of Attorney Appearances (Dkt. 7-10) (showing at least 4 attorneys of record for
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`NetTech). Indeed, in similar circumstances, courts have rejected this same argument. See ST
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`Sales Tech, 2008 WL 5634214, at *7-8 (“While the Court notes that Plaintiff will be harmed by
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`having one of its counsel screened from accessing certain information in the case, that harm is
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`minor compared to the risk of continued harm to Defendants since [plaintiff] has other highly
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`competent attorneys that have been involved since the beginning of the case.”); see also Infosint,
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`2007 WL 1467784, at *5 (“While [plaintiff’s] desire to have its trusted [outside] counsel
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`involved in the litigation is understandable, [defendant’s] desire to keep its proprietary
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`information protected is a superior interest.”).
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`To prevent NetTech and its counsel from using Apple’s source code and other highly
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`confidential information for inappropriate purposes, Apple proposes that access to such
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`information be limited to NetTech’s outside counsel who are not involved in competitive
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`decision-making. As noted above, similar provisions have appeared in other protective orders in
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`this district. Without such provisions, NetTech’s outside counsel who are involved in
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`competitive decision-making could review Apple’s proprietary materials and use that knowledge
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`7
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 8 of 16 PageID #: 614
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`– deliberately or accidentally – to advise NetTech on competitive issues, such as patent
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`monetization or acquisition strategies. This is simply too great a risk for Apple.
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`
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`II.
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`Issue 2: Acquisition Bar (Protective Order ¶ 14)
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`Plaintiff’s Proposal
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`Defendant’s Proposal
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`[None]
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`Absent written consent by the
`14.
`producing Party, any attorney representing a
`Party, whether in-house or outside counsel, and
`any person associated with a Party and
`permitted to receive the other Party’s Protected
`Material that is designated RESTRICTED --
`ATTORNEYS’ EYES ONLY and/or
`RESTRICTED CONFIDENTIAL SOURCE
`CODE (collectively “HIGHLY SENSITIVE
`MATERIAL”), who obtains, receives, or
`otherwise learns of, in whole or in part, the
`other Party’s HIGHLY SENSITIVE
`MATERIAL of a technical nature under this
`Order shall not: … (ii) be involved in the
`acquisition of patents (including patent
`applications), or the rights to any such
`patents or patent applications with the right to
`sublicense, for assertion against or licensing
`to a Party, pertaining to the field of invention
`of the patent-in-suit on behalf of the receiving
`Party or its acquirer, successor, predecessor,
`or affiliate during the pendency of this Action
`and for 18-months after its conclusion,
`including any appeals, except with respect to
`the acquisition, licensing, or any other
`transaction involving the patent-in-suit
`and/or all patents and patent applications
`related thereto.
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`
`
`Plaintiff’s Statement
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`In addition to the agreed-upon prosecution bar, Defendant also seeks the addition of a
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`non-standard acquisition bar that would prevent outside counsel in this case from any
`
`8
`
`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 9 of 16 PageID #: 615
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`involvement in the acquisition of patents in the pertinent field of technology. Such a provision is
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`not in the model protective order for good reason. It is Apple’s burden to show that such a bar is
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`warranted, and Apple cannot to do so. A party seeking a bar must show (1) that the risk of
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`inadvertent disclosure exists; and (2) that the balance of interests suggests a bar is appropriate.
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`In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010).3
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`First, Apple cannot show a risk of inadvertent disclosure because none exists. The
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`plaintiff's status as an NPE similarly does not support handicapping the plaintiff with such a bar.
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`Garnet Digital, LLC v. Apple, Inc., et al., Civ. No. 6:11-cv-647-LED, Dkt. 374 (E.D. Tex. Sept.
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`20, 2012) (citing In re Deutsche Bank, 605 F.3d at 1378). Because Apple cannot make a
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`showing of any risk of inadvertent disclosure, and thus its proposed acquisition bar is not
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`appropriate.
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`Second, in balancing the interests of both parties, courts have denied acquisition bars
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`because they are burdensome to plaintiffs. Sol IP, LLC v. AT&T Mobility LLC, 2:18-cv-0526-
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`RWS-RSP, Dkt. 129 (E.D. Tex. May 29, 2019) (“[I]n light of the broad scope of activities
`
`covered by the requested acquisition bar and its extended duration, the balance of interests
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`supports that the proposed acquisition bar is not appropriate.”). Here, such a restriction would
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`burden Plaintiff’s counsel as well, as such counsel would be unnecessarily bound by the
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`Protective Order’s restrictions based on nothing but conjecture. Plaintiff’s counsel has already
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`agreed to be bound by an 18-month prosecution bar, longer than the typical one year. Yet Apple
`
`
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`3 In this District, prosecution bars and acquisition bars are both analyzed under the In re
`Deutsche Bank framework. See E-Contact Techs., LLC v. Apple, Inc., No. 1:11-CV-426-LED-
`KFG, 2012 WL 11924448, at *1 (E.D. Tex. June 19, 2012)
`
`9
`
`

`

`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 10 of 16 PageID #: 616
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`also insists on further handicaps to Plaintiff’s counsel in the form of a burdensome and wide-
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`ranging acquisition bar.
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`That outside counsel in this case previously agreed to an acquisition bar for a different
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`client is unavailing. First, Quest Nettech is a separate client and should not be bound by
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`decisions it had no involvement in making in cases where it was not a party. Second, one of
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`Brown Rudnick's other clients, AGIS Software, was not and is not a patent acquisition entity,
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`whereas Quest Nettech is regularly involved in the acquisition of patents and such a bar would
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`likely have a material impact on its business.
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`Should the Court disagree with Plaintiff, it requests a narrow acquisition bar that applies
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`to patents in the field of the patent-in-suit and is limited only to the activities of Quest Nettech
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`(rather than all of its related entities and affiliates) against only Apple. Plaintiff also requests
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`that such a bar be limited to a time period of 1 year after the conclusion of this action.
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`Defendant’s Statement
`
`NetTech should not be allowed to use Apple’s source code (or other highly confidential
`
`information) to acquire additional patents to assert against Apple. Yet that is precisely what
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`NetTech’s proposal would allow. Such a result is manifestly unjust and prejudicial to Apple and
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`should not be allowed.
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`By agreeing to a patent prosecution bar, NetTech has tacitly acknowledged the possibility
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`of inadvertent disclosure or use of Apple’s confidential information, and has offered no reasoned
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`explanation for why Apple would not suffer the same or similar harms without an acquisition
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`bar. See E-Contact Techs. LLC v. Apple Inc., No. 1:11-CV-00426, 2012 U.S. Dist. LEXIS
`
`190475, at *8-9 (E.D. Tex. Jun. 19, 2012) (finding that by acquiescing to prosecution bar,
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`plaintiff’s counsel “apparently agree[d]” that there might be a risk of inadvertent disclosure of
`
`10
`
`

`

`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 11 of 16 PageID #: 617
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`Apple’s confidential information: “it is hard to conceive that there would be little or no risk of
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`inadvertent disclosure when these same attorneys advise their client in matters regarding
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`acquisitions of patents.”); see also Keranos LLC v. Analog Devices, No. 2:10-cv-207, 2012 U.S.
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`Dist. LEXIS 191605, at *21 (E.D. Tex. Sept. 28, 2012) (“The use of Defendant’s AEO and
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`Confidential Source Code Information poses an equally high risk to defendants in the context of
`
`patent acquisition as it does in the patent prosecution context”).
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`Apple proposes a narrowly tailored patent acquisition bar that is limited in time, scope,
`
`and subject matter, which appropriately balances NetTech’s need to litigate the current case and
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`Apple’s need to protect against inadvertent or improper use of its highly-confidential information
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`(including source code) for use in acquiring other patents for licensing or litigation against
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`Apple. Here, the plaintiff NetTech is a non-practicing entity whose sole business is monetizing
`
`patents, including through dozens of lawsuits as discussed above. In circumstances such as
`
`these, courts regularly impose patent acquisition bars, including bars that are broader than that
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`proposed by Apple. See, e.g., AGIS Software Development LLC v. Apple Inc., No. 17-cv-00516-
`
`JRG, Dkt. 51 (E.D. Tex. Oct. 26, 2017) (containing provisions substantially identical to those
`
`proposed by Apple here); E-Contact Techs., 2012 U.S. Dist. LEXIS 190475, at *6-13, and
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`associated Protective Order (Dkt. No. 351) at 16-17 (Jul. 5, 2012) (imposing three-year bar on
`
`acquisitions relating to the “functionality, operation, and design” of five technologies, as well as
`
`their “related functionalities,” over plaintiff’s objections); ContentGuard Holdings, Inc. v.
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`Amazon.com, Inc., et al., No. 2:13-cv-1112, Am. Protective Order (Dkt. No. 152) at 22, 26 (E.D.
`
`Tex. Jun. 6, 2014); Mobile Telecomms. Techs., LLC v. ZTE (USA) Inc., No. 2:13-CV-00946,
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`Supplemental Protective Order (Dkt. No. 74) at 3-4 (E.D. Tex. Nov. 12, 2015); Mobile
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`Telecomms. Techs., LLC v. HTC Am., Inc., No. 2:13-CV-00948, Supplemental Protective Order
`
`11
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 12 of 16 PageID #: 618
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`(Dkt. No. 74) at 3-4 (E.D. Tex. Nov. 12, 2015); and Long Corner Consumer Elecs. LLC v. Acer
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`Am. Corp., et al., No. 2:13-CV-00998, Protective Order (Dkt. No. 77) at 10-12 (E.D. Tex. Jun. 5,
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`2014).
`
`In particular, Apple proposes that the protective order include an 18-month patent
`
`acquisition bar, which would prohibit NetTech’s (or Apple’s) representatives who receive
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`information from the opposing party designated “RESTRICTED - ATTORNEYS’ EYES
`
`ONLY” or “RESTRICTED CONFIDENTIAL SOURCE CODE” in this case from acquiring
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`patents (including patent applications) pertaining to the field of the invention, or the rights to any
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`such patents or applications with the right to sublicense, for assertion against or licensing to the
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`opposing party.
`
`Apple’s proposed 18-month time period is reasonable and shorter than other disputed
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`acquisition bars that have been entered in this district. See, e.g., Hyundai Motor Am. v. Clear
`
`with Computers LLC, No. 6:08-CV-302, 2009 U.S. Dist. LEXIS 132160, at *12-13 (E.D. Tex.
`
`May 11, 2009) (imposing two-year acquisition bar); Karamelion LLC v. ADT LLC, No. 2:18-cv-
`
`00330-JRG, Order on Protective Order (Dkt. No. 36) at 5 (Jan. 24, 2019) (imposing two-year
`
`prosecution bar). Indeed, NetTech has agreed to an 18-month prosecution bar and has offered no
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`justification for why the same time period should not apply to patent acquisitions.
`
`Apple has carefully tailored the proposed acquisition bar to cover only individuals who
`
`receive information designated “RESTRICTED -- ATTORNEYS’ EYES ONLY” or
`
`“RESTRICTED CONFIDENTIAL SOURCE CODE,” similarly to Long Corner. See Opposed
`
`Mot. for Entry of Protective Order at 11-13 (Dkt. 76) (Jun. 3, 2014) and associated Protective
`
`Order (Dkt. 77) at 10-11 (Jun. 5, 2014).
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`12
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 13 of 16 PageID #: 619
`
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`In requesting this acquisition bar Apple has taken into account the “quantity and
`
`sensitivity” of its confidential and proprietary information by still allowing NetTech to acquire
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`patents for licensing against non-parties, or even against Apple, if the patents are in a different
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`field of endeavor. See Karamelion, Order on Protective Order at 5 (finding that “quantity and
`
`sensitivity” of Defendants’ confidential information warranted a two-year prosecution bar
`
`against Plaintiff, who maintained an “acquir[e] and assert[]” patent strategy).
`
`The sole Asserted Patent in this case has long since expired, with the total damages
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`period spanning less than one year. This fact alone raises a concern that NetTech is seeking
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`Apple’s highly confidential and proprietary technology so it can acquire additional patents to
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`assert against Apple. This is precisely the type of situation that warrants an acquisition bar. See,
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`e.g., Hyundai Motor Am. v. Clear with Computers, 2009 U.S. Dist. LEXIS 132160, at *9-13
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`(imposing acquisition bar in case where plaintiff’s “entire business model…revolves around the
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`acquisition, enforcement (through litigation), and licensing of patents,” as without acquisition
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`bar, there was significant risk that defendant’s confidential information would be used against it
`
`in other litigation); see also E-Contact Techs., 2012 U.S. Dist. LEXIS 190475, at *9.
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`The risk of harm to Apple exists independently of whether NetTech or its counsel would
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`intentionally use Apple’s confidential information to acquire patent for licensing or assertion
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`against Apple. As courts have long recognized, “[i]t is very difficult for the human mind to
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`compartmentalize and selectively suppress information once learned, no matter how well-
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`intentioned the effort may be to do so.” In re Deutsche Bank, 605 F.3d at 1378; see also ST
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`Sales Tech, 2008 WL 5634214 at *2, n.4 (“The inquiry is not directed at the attorney’s ethical
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`standards, since even if the competitor’s counsel acted in the best of faith and in accordance with
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`the highest ethical standards, the question remains whether access to the moving party’s
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`13
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`

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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 14 of 16 PageID #: 620
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`confidential information would create an unacceptable opportunity for inadvertent disclosure.”)
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`(internal quotes omitted).
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`Plaintiff’s request—i.e., the exclusion of any acquisition bar from the protective order—
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`does not balance the parties’ needs, and is not tailored to protect Apple or its confidential
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`information. The Court should adopt Apple’s narrowly tailored patent acquisition bar.
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`Dated: August 19, 2019
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`
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`Respectfully submitted,
`
`
`
`
`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
`Facsimile: (212) 209-4801
`
`Justin Kurt Truelove
`Texas Bar No. 24013653
`Email: kurt@truelovelawfirm.com
`TRUELOVE LAW FIRM, PLLC
`100 West Houston
`Marshall, Texas 75670
`Telephone: (903) 938-8321
`Facsimile: (903) 215-8510
`
`ATTORNEYS FOR PLAINTIFF
`QUEST NETTECH CORPORATION
`
`
`/s/ Travis Jensen (With permission)
`Claudia Wilson Frost – LEAD COUNSEL
`State Bar No. 21671300
`ORRICK, HERRINGTON & SUTCLIFFE
`LLP
`609 Main, 40th Floor
`
`
`
`14
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`

`

`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 15 of 16 PageID #: 621
`
`
`Houston, TX 77002
`Telephone: 713.658.6400
`Facsimile: 713.658.6401
`cfrost@orrick.com
`
`Travis Jensen
`CA Bar No. 259925
`ORRICK, HERRINGTON & SUTCLIFFE
`LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`Telephone: 650.614.7400
`Facsimile: 650.614.7401
`tjensen@orrick.com
`
`Tyler S. Miller
`NY State Bar No. 5122262
`ORRICK, HERRINGTON & SUTCLIFFE
`LLP
`51 West 52nd Street
`New York, NY 10019
`Telephone: 212.506.5338
`Facsimile: 212.506.5151
`tmiller@orrick.com
`
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM&SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`15
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`Case 2:19-cv-00118-JRG Document 46 Filed 08/19/19 Page 16 of 16 PageID #: 622
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on August 19, 2019, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
` /s/ Alfred R. Fabricant
` Alfred R. Fabricant
`
`
`
`
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`16
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`