Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 1 of 11 PageID #: 1951
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
`
`LYFT, INC.,
`
`
`
`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
`
`
`
`WHATSAPP, INC.,
`
`
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`JOINT MOTION FOR ENTRY OF PARTIALLY DISPUTED PROPOSED
`PROTECTIVE ORDER AND STIPULATED FEDERAL RULES OF EVIDENCE 502(d)
`ORDER AND CLAWBACK AGREEMENT
`
`
`Case No. 2:21-cv-00072-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`Case No. 2:21-cv-00024-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`Case No. 2:21-cv-00029-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`
`Pursuant to the Court’s Order dated April 19, 2021 (Dkt. 15), Plaintiff AGIS Software
`
`Development LLC (“AGIS”) and Defendants T-Mobile USA, Inc., T-Mobile US, Inc., Lyft, Inc.,
`
`Uber Technologies, Inc., d/b/a Uber, and WhatsApp, Inc. (“Defendants”) (collectively, the
`
`“Parties”), hereby submit the Partially Disputed Proposed Protective Order attached as Exhibit
`
`A and the Stipulated Federal Rules of Evidence 502(d) Order and Clawback Agreement attached
`
`as Exhibit B.
`
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 2 of 11 PageID #: 1952
`
`The Parties have indicated their competing proposals using highlighting and square
`
`brackets in Exhibit A (the Parties’ respective proposals are indicated with Plaintiff’s Proposal
`
`and Defendants’ Proposal). The Parties were able to reach agreement on almost all provisions of
`
`the Protective Order, but have two disputes regarding (1) whether the Protective Order should
`
`include a so-called “acquisition bar” preventing individuals with access to designated discovery
`
`from subsequently engaging in activities related to the acquisition of patents related to the
`
`subject matter of that designated discovery, (2) whether the scope of an otherwise agreed upon
`
`“prosecution bar” should extend to designated discovery. The Parties’ competing proposals and
`
`arguments in favor of their proposals are presented below:
`
`Plaintiff’s Position
`
`
`
`AGIS submits that Defendants’ proposed acquisition and prosecution bars are
`
`inappropriate. First, Defendants’ proposed acquisition bar relates to (a) acquiring patents or
`
`patent applications relating to both the field of the invention of the patents-in-suit and
`
`Defendants’ designated discovery, and (b) advising or counseling its clients regarding such
`
`acquisitions during the pendency of this case and for two years after the final disposition of this
`
`action. Second, Defendants propose to extend the scope of an agreed upon prosecution bar from
`
`the field of the invention of the patents-in-suit to include Defendants’ designated discovery.
`
`Defendants bear the burden of showing that each proposed bar is appropriate because (1) the risk
`
`of inadvertent disclosure exists; and (2) the balance of interests suggest a bar is appropriate. In
`
`re Deutsche Bank Tr. Co. Ams., 605 F.3d 1373, 1378 (Fed. Cir. 2010).
`
`
`
`Regarding the proposed acquisition bar, Defendants have not shown good cause to
`
`prevent Plaintiff’s counsel from any activities relating to acquiring patents or patent applications
`
`relating to both the field of the invention of the patents-in-suit and Defendants’ designated
`
`
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 3 of 11 PageID #: 1953
`
`discovery, and advising or counseling its clients regarding such acquisitions, for two years after
`
`the final disposition of this action. Defendants have not shown that there is a real risk of
`
`inadvertent disclosure or that the balance of interests indicates a bar is appropriate. The balance
`
`of interests does not favor the bar, and Defendants cannot demonstrate that any potential harm
`
`may occur without the bar. By contrast, imposing the bar will drastically harm both Plaintiff’s
`
`counsel and other parties, including AGIS, who would be denied the counsel of their choice. See
`
`In re Deutsche Bank, 605 F.3d at 1379 (“[T]he district court must balance the risk against the
`
`potential harm to the opposing party from restrictions imposed on that party’s right to have the
`
`benefit of counsel of its choice.”). Moreover, the proposed acquisition bar is overbroad and
`
`unascertainable because the bar extends to Defendants’ designated discovery, which can include
`
`documents and testimony concerning irrelevant matters. Because Defendants have failed to
`
`show that there is a risk of inadvertent disclosure and that the balance of interests favors a bar,
`
`the Court should decline to enter Defendants’ proposed Acquisition Bar. Jenam Tech., LLC v.
`
`Samsung Elecs. Am., Inc., No. 4:19-cv-00250-ALM-KPJ, 2020 WL 757097, at *1-*2 (E.D. Tex.
`
`Feb. 4, 2020) (“The Court finds Defendants have not met their burden, particularly considering
`
`the broad restriction the proposed Acquisition Bar would impose upon Plaintiff’s counsel and
`
`Defendants’ failure to demonstrate the potential harm of not including the Bar.”).
`
`
`
`Regarding Defendants’ proposal to broaden the scope of the prosecution bar to the
`
`Defendants’ designated discovery, Defendants similarly have not met their burden. Basing the
`
`prosecution bar on Defendants’ designated documents and testimony renders the prosecution bar
`
`overbroad and unascertainable, which can include documents and testimony concerning
`
`irrelevant matters. The proposed breadth of the prosecution bar is harmful to Plaintiff’s counsel
`
`and other parties and extends well beyond the scope of cases in this District. See AGIS Software
`
`
`
`3
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 4 of 11 PageID #: 1954
`
`Dev. LLC v. Google LLC, No. 2:19-cv-00361-JRG, Dkt. 89 (E.D. Tex. Apr. 22, 2020); see also
`
`Vocalife LLC v. Amazon.com, Inc., No. 2:19-cv-00123-JRG, Dkt. 53 (E.D. Tex. Nov. 7, 2019).
`
`
`
`Defendants’ Position
`
`The provisions of the protective order proposed by Plaintiff do not provide adequate
`
`protection to Defendants’ highly confidential information and source code. First, Plaintiff disputes
`
`the propriety of an acquisition bar, barring attorneys and experts that access highly confidential
`
`information from advising or counseling clients on the acquisition of patents or patent applications
`
`pertaining to such information. Such a provision is necessary to protect against the inadvertent
`
`disclosure of Defendants’ highly confidential information. The Federal Circuit has recognized that
`
`attorneys and retained experts cannot always separate what they learned from legitimate sources
`
`from what they learned by analyzing a defendant’s confidential information. See In re Deutsche
`
`Bank Trust Co. Am., 605 F.3d 1373, 1378 (Fed. Cir. 2010). Thus, courts routinely impose
`
`acquisition bars on attorneys and experts. See, e.g., E-Contact Techs., LLC v. Apple, Inc., No.
`
`1:11-cv-426, 2012 WL 11924448, at *1-2 (E.D. Tex. June 19, 2012); Catch A Wave Techs., Inc. v.
`
`Sirius XM Radio, Inc., No. C 12-05791, 2013 WL 9868422, at *1 (N.D. Cal. Aug. 6, 2013). Here,
`
`as the Court found in E-Contact Technologies., counsel for plaintiff here “has acquiesced to the
`
`imposition of a patent prosecution bar, and, therefore, apparently agrees that there could possibly
`
`be a risk of inadvertent disclosure of Defendants’ confidential information in the course of
`
`representing their client before the PTO.” E-Contact Techs., 2012 WL 11924448, at *2. As the
`
`Court further explained, “it is hard to conceive that there would be little or no risk of inadvertent
`
`disclosure when these same attorneys advise their client in matters regarding acquisitions of
`
`patents.” Id. Because Plaintiff is seeking discovery of Defendants’ highly confidential
`
`
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 5 of 11 PageID #: 1955
`
`information, including source code, “the potential harm of inadvertent disclosure outweighs the
`
`restriction imposed” by the acquisition bar. Id. Defendants do not doubt that Plaintiff’s attorneys’
`
`and experts are of high moral character and would not intentionally use Defendants’ highly
`
`confidential information outside of these litigations. Still, courts recognize that even with the best
`
`intentions, it is extremely difficult to separate what one learns legitimately from what he or she
`
`learns through a litigation. See Safe Flight Instrument Corp. v. Sundstrand Data Control Inc., 682
`
`F. Supp. 20, 22 (D. Del. 1988) (“[A]ccepting that Mr. Greene is a man of great moral fiber, we
`
`nonetheless question his human ability during future years of research to separate the applications
`
`he has extrapolated from Sundstrand's documents from those he develops from his own ideas.).
`
`Second, the scope of the prosecution and acquisition bars proposed by Plaintiff is far too
`
`narrow. Plaintiff would limit the scope of the prosecution and acquisition bars to “location display
`
`technology” and “the patents asserted in this Action and any patent or application claiming priority
`
`to or otherwise related to the patents asserted in this Action.” Through discovery in this action,
`
`however, Plaintiff and its experts will have access to highly confidential technical information that
`
`does not fall into either of those two categories. That is, Defendants’ documents and source code
`
`related to the accused features in this case will certainly contain information about other unaccused
`
`features. Unless the prosecution and acquisition bars are broad enough to cover the full scope of
`
`discovery to be provided to Plaintiff, there remains a risk of inadvertent disclosure of Defendants’
`
`information.
`
`Thus, Defendants respectfully request this Court impose the requested acquisition bar on
`
`attorneys and experts who review Defendants’ confidential technical documents and source code to
`
`prevent inadvertent disclosure, and that the prosecution and acquisition bars be broad enough to
`
`cover the subject of any highly confidential or source code information disclosed in discovery.
`
`
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 6 of 11 PageID #: 1956
`
`
`
`Dated: June 2, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FABRICANT LLP
`
`
`
`
`
` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`ATTORNEYS FOR PLAINTIFF,
`AGIS SOFTWARE DEVELOPMENT LLC
`
`
`/s/ Nathan Curtis
`Melissa R. Smith
`State Bar No. 24001351
`Email: melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Mark N. Reiter
`Texas Bar No. 16759900
`Email: mreiter@gibsondunn.com
`Robert A. Vincent
`Texas Bar No. 24056474
`Email: rvincent@gibsondunn.com
`Ashbey N. Morgan
`Texas Bar No. 24106339
`Email: anmorgan@gibsondunn.com
`Nathan R. Curtis
`Texas Bar No. 24078390
`
`
`
`
`
`
`
`6
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 7 of 11 PageID #: 1957
`
`
`
`Email: ncurtis@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, Texas 75201
`Telephone: (214) 698-3360
`Facsimile: (214) 571-2907
`
`Ryan K. Iwahashi
`CA Bar No. 284766
`Email: riwahashi@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`1881 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 849-5367
`Facsimile: (650) 849-5067
`
`ATTORNEYS FOR DEFENDANT
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER
`
`/s/ Miguel Bombach
`Melissa R. Smith
`State Bar No. 24001351
`Email: melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Miguel Bombach
`Email: MBombach@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real Ste. 300
`San Diego, CA 92130-2080
`Phone: (858) 720-5747
`Facsimile: (858) 720-5847
`
`Ryan J. McBrayer, WSBA No. 28338
`Email: RMcBrayer@perkinscoie.com
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`Phone: (206) 359-8000
`Fax: (206) 359-9000
`
`
`
`
`7
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 8 of 11 PageID #: 1958
`
`
`
`
`
`ATTORNEYS FOR DEFENDANTS
`T-MOBILE USA, INC. and T-MOBILE
`US, INC.
`
`/s/ Lisa K. Nguyen
`Michael E. Jones
`Texas State Bar No. 10929400
`Email: mikejones@potterminton.com
`Patrick C. Clutter
`Texas State Bar No. 24036374
`Email: patrickclutter@potterminton.com
`POTTER MINTON, PC
`10 North College, Suite 500
`Tyler, Texas 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
`
`Richard G. Frenkel
`Email: rick.frenkel@lw.com
`Lisa K. Nguyen
`Email: lisa.nguyen@lw.com
`Clara Wang
`Email: clara.wang@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, California 94025-1008
`Telephone: (650) 328-4600
`Facsimile: (650) 463-2600
`
`Alan M. Billharz
`Email: alan.billharz@lw.com
`Tiffany C. Weston
`Email: tiffany.weston@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW, Suite 1000
`Washington, D.C. 2000-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`ATTORNEYS FOR DEFENDANT
`WHATSAPP, INC.
`
`/s/ Bethany Salpietra
`Jeremy Taylor
`Baker Botts L.L.P.
`Email: jeremy.taylor@bakerbotts.com
`
`
`
`
`
`
`
`8
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 9 of 11 PageID #: 1959
`
`101 California St., Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
`
`Bethany R. Salpietra
`Baker Botts L.L.P.
`Email: bethany.salpietra@bakerbotts.com
`2001 Ross Ave., Suite 900
`Dallas, TX 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`Deron R. Dacus
`The Dacus Firm, P.C.
`Email: ddacus@dacusfirm.com
`821 ESE Loop 323, Suite 430
`Tyler, Texas 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
`
`ATTORNEYS FOR DEFENDANT LYFT,
`INC.
`
`
`
`
`
`
`
`9
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 10 of 11 PageID #: 1960
`
`CERTIFICATE OF CONFERENCE
`
`I hereby certify that Plaintiff’s counsel has met and conferred with counsel for
`
`Defendants, and all parties have agreed to submission of the proposed disputed order submitted
`
`herewith.
`
`
`
`
`
`
`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
`
`
`
`
`
`
`
`10
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 76 Filed 06/02/21 Page 11 of 11 PageID #: 1961
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that, on June 2, 2021, all counsel of record who are
`
`deemed to have consented to electronic service are being served with a copy of this document via
`
`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
`
`
`
`
`
`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
`
`
`
`
`
`
`
`11
`
`