Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 1 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`GOOGLE LLC,
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`Defendant.
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`Plaintiff,
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`v.
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`§
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`Civil Case No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`JOINT MOTION FOR ENTRY OF DISPUTED PROTECTIVE ORDER
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`The parties jointly move for entry of a protective order. While the parties have reached
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`agreement on most items, multiple items remain in dispute. The parties’ respective positions are set
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`forth below. For each disputed item, the party seeking a departure from this Court’s default
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`protective order has described its position first. A proposed protective order with the disputes
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`highlighted is attached.
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`Section 11(g): Encryption of Electronic Images of Source Code
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`I.
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`Plaintiff’s Proposal
`Do not include Defendant’s proposal.
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`Defendant’s Proposal
`The receiving Party may create an electronic
`image of a selected portion of the Source Code
`Material only when the electronic file
`containing such image has been encrypted
`using commercially reasonable encryption
`software including password protection.
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`Defendant’s Position
`A.
`At bottom, Google’s proposals in this submission concern reasonable security measures
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`needed to protect the company’s sensitive source code and other confidential data. Plaintiff’s counter
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`proposals instead trade off reasonable security measures in favor of minor conveniences. Source
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 2 of 33
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`code and other confidential documents exchanged in this litigation pose a serious risk if leaked or
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`breached, especially for a company like Google that faces constant threats.
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`Google proposes that the Protective Order include a requirement that electronic images of
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`Source Code Material be protected using commercially available and industry-standard techniques.
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`In particular, while the parties have agreed that no electronic images of source code are allowed
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`“except as necessary” pursuant to § 11(g), there is no restriction on how documents containing such
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`source code may be transmitted (for example, by email or file sharing service). Google simply
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`proposes that documents that include such sensitive electronic images be encrypted and password
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`protected, so that if the document is received by an unintended recipient, the sensitive information
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`will have some measure of protection.
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`Source code is among the most important and confidential information that Google
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`possesses. Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1300 n.13 (Fed. Cir. 2016) (“[I]t is well
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`recognized among lower courts that source code requires additional protections to prevent improper
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`disclosure because it is often a company’s most sensitive and most valuable property.”). In
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`electronic form, source code is inherently susceptible to rapid duplication and dissemination. If
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`Google’s source code were to be exposed, even inadvertently, Google would suffer potentially
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`devastating competitive harm.1 Id. (advising caution regarding the “significant consequences that
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`might result from unauthorized or inadvertent disclosure” of source code). This is why courts are
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`often protective of source code in electronic form, even barring such copies. See, e.g., Finjan, Inc.
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`v. Cisco Sys., Inc., No. 5:17-cv-72-BLK-SVK, 2019 WL 667766, at *14–16 (N.D. Cal. Feb. 19,
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`1 Despite the best efforts of attorneys and their staff, law firms, large and small, are still susceptible to data breaches or
`leaks, potentially exposing sensitive information. See, e.g., Amid BigLaw Data Attacks, Breaches Surge For Smaller
`Firms, June 15, 2022, available at https://www.law360.com/articles/1498395/amid-biglaw-data-attacks-breaches-
`surge-for-smaller-firms; The Top 11 Legal Industry Cyber Attacks, Arctic Wolf, March 29, 2022, available at
`https://arcticwolf.com/resources/blog/top-legal-industry-cyber-attacks.
`2
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 3 of 33
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`2019) (“The Receiving Party shall not create any electronic copies or other images of the paper
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`copies and shall not convert any information contained in the paper copies into any electronic format
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`without the agreement of the Producing Party or further order of the Court.”); Rockstar Consortium
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`US LP v. Google Inc., No. 2:31-cv-893, 2014 WL 5831041, at *6–7, 9 (E.D. Tex. June 19, 2014)
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`(ordering that “the Receiving Party may not create electronic images, or any other images, of the
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`Source Code,” except for filing in a sealed “Court document”).
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`Google’s proposal seeks to further protect against inadvertent disclosure by requiring
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`encryption and password protection. During the meet and confer process, Google explained that this
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`provision merely requires using commercially available software included within Microsoft Word
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`and Adobe Acrobat. Both programs (in addition to other commercially available software) can be
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`used to apply passwords solely to documents that contain the electronic images. This does not
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`impose an onerous burden on Plaintiff, and any burden is outweighed by the importance of
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`maintaining the security of Defendant’s source code. See EPL Holdings, LLC v. Apple Inc., No. C-
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`12-04306 JST (JSC), 2013 WL 2181584, at *7 (N.D. Cal. May 20, 2013) (concluding that an
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`inconvenience to the plaintiff “does not outweigh the risk posed by creating electronic copies of
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`source code unnecessarily”). Moreover, this only applies to a small subset of documents (as defined
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`in the Protective Order) and any burden can be reduced by omitting any such electronic images in
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`draft documents until final (while instead referencing production and line numbers in the drafts).
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`With the increased risk created by electronic images of source code, additional protections are
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`warranted here to help avoid inadvertent disclosure.
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`B.
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`Plaintiff’s Position
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`A court may issue a protective order, upon a showing of good cause, “to protect a party or
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`person from annoyance, embarrassment, oppression, or undue burden or expense.” Fed. R. Civ. P.
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`26(c)(1). The burden is on the moving party to show why disputed provisions in the protective order
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`should be added. Jenam Tech, LLC v. Samsung Elecs. Am., Inc., 419CV00250ALMKPJ, 2020 WL
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`757097, at *1 (E.D. Tex. Feb. 4, 2020). For a disputed provision to meet the “good cause”
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`requirement, the moving party must show “the necessity of its issuance.” Morgan v. Parc Plaza
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`Dev., L.P., 3:17-CV-0492-G-BK, 2018 WL 11211461, at *2 (N.D. Tex. Feb. 8, 2018). The moving
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`party cannot rely on stereotyped and conclusory statements; rather, it must make “a particular and
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`specific demonstration of fact.” In re Terra Int’l, Inc., 134 F.3d 302, 306 (5th Cir. 1998).
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`For five of the six disputes addressed in this motion, Google seeks to modify this Court’s
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`default protective order, meaning that Google has the burden to show why those extra protections
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`are needed. But throughout this submission, Google relies on speculation and hypotheticals
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`regarding potential harm without articulating actual case-specific facts giving rise to its concerns.
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`More than just “minor” inconveniences, Google’s proposals would place cumbersome restrictions
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`on Touchstream, and Google’s rank speculation does not justify the changes it seeks.
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`Touchstream has already agreed to restrictions on source code reproduction that go well
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`beyond this Court’s default provisions. The Court’s default order states that “no electronic copies or
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`images of Source Code Material shall be made without prior written consent of the producing Party,
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`except as necessary to create documents that, pursuant to the Court’s rules, procedures, and orders,
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`must be filed or served electronically,” but Touchstream has further agreed to “only include such
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`excerpts as are reasonably necessary for the purposes for which such part of the Source Code
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`Material is used,” to refrain from including “images or copies of Source Code Material in
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`correspondence between the parties,” and to label all electronic copies “CONFIDENTIAL –
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`SOURCE CODE.” Ex. A at § 11(g). Now Google seeks to add another, more onerous provision,
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`under which Touchstream’s counsel and experts will have to enter a password every single time they
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`open a draft of a document─such as an expert report or briefing on a dispositive motion─that
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`contains even the tiniest fragment of Google’s source code. But Google has provided no “particular
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`and specific demonstration of fact” to justify including this burdensome provision (see Terra Int’l,
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`134 F.3d at 306), instead alleging in the most general terms that the provision is needed “to further
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`protect against inadvertent disclosure.” Google cannot meet its burden with speculation and
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`generalization.
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`In an attempt to downplay the burden its addition would place on Touchstream’s counsel,
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`Google argues that it would apply only to a small set of documents because the protective order
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`already limits how source code can be produced. But those agreed-to protections (which already
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`exceed this Court’s baseline) are sufficient, and Google cannot show that the disputed provision is
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`needed by focusing only on the burden to Touchstream. United States v. Aetna Inc., 1:16-CV-01494,
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`2016 WL 8738421, at *8 (D.D.C. Sept. 14, 2016) (“Relative degree of burdensomeness, however,
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`is not the sole element of the ‘good cause’ standard; rather, an entity must provide specific examples
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`of the feared harm in order to obtain additional protection.”). Because it has not pointed to any
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`“specific examples” that might create a heightened risk of disclosure, “for example, that any party
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`is being careless with confidential information, or that any party is unusually vulnerable to electronic
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`hacking or similar threats” (id.), Google further fails to meet its burden.
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`Nor does Google find support in the authority it cites. EPL Holdings does not address
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`encryption at all; rather, the court in that case restricted the creation of electronic copies, finding that
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`“[t]he restrictions ensure that only those electronic copies that are absolutely necessary will be made
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`and transferred.” EPL Holdings, LLC v. Apple Inc., C-12-04306 JST JSC, 2013 WL 2181584, at *6
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`(N.D. Cal. May 20, 2013). Here, Touchstream has already agreed to additional provisions, not in the
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`Court’s default order, that ensure that only necessary copies are made, as described above. And in
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`the two cases Google cites that actually address encryption, the parties had already agreed to the
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`encryption provisions, so there was never any dispute for the court to decide. See, e.g., Finjan, Inc.
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`v. Cisco Sys., Inc., No. 5:17-cv-72-BLK-SVK, 2019 WL 667766, at *14–16 (N.D. Cal. Feb. 19,
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`2019); Rockstar Consortium US LP v. Google Inc., No. 2:31-cv-893, 2014 WL 5831041, at *6–7, 9.
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`In short, Google has not offered any case law supporting its position. It has failed to meet its burden
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`for including this provision, and the Court should deny its request accordingly.
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`Section 11(q): Deposition Source Code Computer
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`II.
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`Defendant’s Proposal
`Do not include Plaintiff’s proposal
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`Plaintiff’s Proposal
`Upon request by the receiving Party as set
`forth herein, the producing Party shall make a
`secured, stand-alone computer with a
`searchable version of the produced Source
`Code Material (“Deposition Computer”)
`available at any deposition that relates to the
`produced Source Code Material. The
`producing Party shall inform the receiving
`Party of what tools will be installed on the
`Deposition Computer. The receiving Party
`shall notify the producing Party at least seven
`(7) calendar days in advance of the deposition
`that they intend to make use of the Source
`Code Material. The receiving Party may
`request that additional commercially available
`software tools for viewing and searching
`Source Code Material be installed on the
`Deposition Computer, provided, however, that
`(a) the receiving party possesses an appropriate
`license to such software tools; and (b) there is
`a lack of a reasonable objection to such
`software tools by the producing party. The
`receiving Party must provide the producing
`Party with a CD, DVD, or e-mail containing
`such licensed additional software tool(s) at
`least five (5) business days in advance of the
`deposition.
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`A.
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`Plaintiff’s Position
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`6
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 7 of 33
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`Under Touchstream’s proposal, Google─as the party producing source code─would bring a
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`computer with a searchable version of all produced source code to depositions of witnesses
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`knowledgeable about that code. Touchstream does not anticipate deposing more than one or two
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`source code witnesses, meaning any burdens to Google caused by this provision will be limited in
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`scope.
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`Touchstream requests this deposition computer because it cannot anticipate when a source
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`code deponent will need to see portions of the code not included in Touchstream’s printout requests,
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`for instance to provide proper context in answering questions about the printed portions.
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`Touchstream and its source code expert(s) will make best efforts to request printouts of all relevant
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`portions of the source code, but Google’s own witnesses are most familiar with Google’s code, and
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`they may find it necessary to view unprinted portions of the code to give the most complete answers
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`to Touchstream’s questions in depositions. By having the source code available in the deposition
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`room in a searchable format, Google’s source code witness(es) can efficiently locate and identify
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`any other portions of the source code needed to answer questions as completely and accurately as
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`possible. Therefore, to get the full benefit of Touchstream’s limited time with Google’s source code
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`witnesses, and to minimize the chances that Touchstream will need to reconvene a deposition after
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`the witness has refreshed his or her memory outside of the deposition, Touchstream respectfully
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`requests that the Court include this provision in the Protective Order.
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`While Touchstream understands Google’s sensitivity around source code, Google will have
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`complete control over the security measures it chooses to protect the requested computer and over
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`the manner of transport. Google may even choose to use the same machine that it provides for
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`Touchstream’s source code inspections, as covered elsewhere in § 10 of the parties’ proposed
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`protective order, eliminating the need to set up a new machine with new security measures. Any
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 8 of 33
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`burdens associated with setting up and transporting this computer will be outweighed by the benefits
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`to both parties in allowing Touchstream to elicit full responses to its questions during any source
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`code deposition.
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`Touchstream’s requested deposition computer will likely be at issue in only one or two
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`depositions, and it has the potential to save the parties substantial resources by ensuring that
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`Google’s witnesses have access to the source code they need to give full and complete answers.
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`Touchstream therefore respectfully requests inclusion of this provision.
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`B.
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`Defendant’s Position
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`Plaintiff requests that Google provide an additional source code computer available for any
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`deposition at Touchstream’s request, outside the protections of the locked source code review room
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`(see § 11(a)) defined in the Protective Order. Not only does this provision significantly increase
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`Google's logistical burden in preparing for depositions, but the security risks associated with such
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`an approach far outweigh any alleged benefit to Plaintiff. Google would be required to expose its
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`valuable source code on yet another computer in an unsecured environment with even more non-
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`parties in the room (including a court reporter and videographer).
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`The parties have already agreed to print reasonable requests for source code relevant to the
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`case–a process that respects the security concerns of source code while also granting the receiving
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`Party with advance access to the code before depositions. Under the undisputed provisions of the
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`Protective Order, Plaintiff is able to request reasonable print outs of source code, receive the printed
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`pages of source code promptly, and then prepare notes or other work product as needed independent
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`of source code review and use that printed source code during depositions. However, the agreed-
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`upon Protective Order is clear that source code review is intended to take place within the locked
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`room with the stand-alone computer. In contrast, Plaintiff’s proposal seeks to obviate the
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 9 of 33
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`requirement that Touchstream review source code in the first instance in a secured environment and
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`allows it to examine Google witnesses on any portion of source code regardless of the code’s
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`designation and without the added security of the locked room. Beyond just a security risk for
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`current employee witnesses, Plaintiff’s proposal would be even more worrisome for potential
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`former-employee witnesses. To the extent Touchstream demands to question third parties about the
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`source code, such a request goes beyond the bounds of traditional limits on discovery.
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`Touchstream claims that it requires this computer so that it can examine Google fact
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`witnesses on source code that it did not previously identify and print during the Source Code Review.
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`However, Touchstream fails to explain why its experts and source code reviewers cannot obtain the
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`necessary Source Code Printouts during the required review. Rather, Touchstream claims that
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`Google’s witnesses are the most familiar with Google’s code. But that does not explain why the
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`Court’s default provision should be watered down to offer less source code security in this case, or
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`why this particular case requires use of a source code computer in addition to Source Code Printouts.
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`The point of Source Code Printouts, among other things, is to facilitate use of source code outside
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`of the secured room, safely and efficiently, including for depositions. In fact, this additional source
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`code discovery proposed by Touchstream is exactly what the Protective Order provisions on source
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`code seek to curtail. And any inconvenience to Touchstream at depositions should be outweighed
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`by the importance of maintaining the security of Defendant’s source code. Indeed, use of a source
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`code computer within a deposition would undermine the heightened security restrictions for the
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`source code computer and circumvent the agreed upon page limits on Source Code Printouts. See,
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`e.g., Trans Video Electronics Ltd. v. Time Warner Cable Inc., No. 1:12-cv-01740-LPS, D.I. 38 at 1
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`(D. Del. Jan. 22, 2015) (holding “Plaintiff's proposal to require a source-code computer at
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`depositions is DENIED, as it is unnecessary, burdensome (possibly requiring Defendants to set up a
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 10 of 33
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`secure computer at multiple sites), and the risk of harm to Defendants outweighs any incremental
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`benefit to Plaintiff, particularly given the allowance for printing of source code, to which the parties
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`have already agreed.”); Int’l Bus. Machines Corp. v. The Priceline Grp. Inc, No. 1:15-cv-00137-
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`LPS, 2016 WL 6305981, at *2 (D. Del. Sept. 29, 2016) (denying “request that the Court order that
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`Defendants make available source code computers at the depositions of witnesses who testify about
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`source code . . . in light of Defendants' concerns with respect to the request, and in the absence of
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`any authority from IBM suggesting that this should be required.” (citations omitted)). Touchstream
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`has not identified any decision from this Court adopting such a proposal in a contested situation.
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`Moreover, Plaintiff’s provision would increase the burden on Google and its witnesses over
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`the course of discovery. Google is already required to make available the stand-alone source code
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`computer and a corresponding note-taking computer to Plaintiff, print out identified pages of source
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`code, and deliver multiple copies to Touchstream. Now, Plaintiff is requesting that Google also
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`provide potentially multiple source code computers for multiple fact and/or expert depositions.
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`Touchstream claims in this brief that this will only be required for one or two witnesses, but its actual
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`proposal is not so limiting and makes no exclusions for expert depositions. Electronic code review
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`in the context of a deposition is also cumbersome, owing to lengthy delays while a large body of
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`source code is being searched and creates logistical problems. Plaintiff’s proposal would require
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`removal of any phones, laptops, and cameras from the deposition room—including those of the court
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`reporter and videographer, who are not excepted. See Section 11(a). And unlike paper copies of
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`source code, which can be identified with exhibit numbers, it is difficult to reflect on the record what
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`electronic source code is being discussed. Finally, many of such depositions may also occur
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`remotely due to ongoing concerns of COVID-19, making the logistics of such a request even more
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`complex and uncertain, and it would be impossible to ensure the level of protection necessary for
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 11 of 33
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`the source code computer under Section 11(a). Thus, Touchstream’s request to go beyond the default
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`Protective Order here should be denied.
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`Section 13: Acquisition Bar
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`III.
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`Plaintiff’s Proposal
`Do not include Defendant’s proposal
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`Defendant’s Proposal
`Absent written consent from the producing
`Party, any individual affiliated with the
`receiving Party who obtains, receives, has
`access to, or otherwise learns, in whole or in
`part, any other Party’s HIGHLY SENSITIVE
`MATERIAL under this Order shall not be
`involved in any activity related to: the (i) the
`acquisition of patents or patent applications
`relating to the Field of Invention or (ii) the
`advising or counseling clients regarding the
`same. This Acquisition Bar shall begin when
`such HIGHLY SENSITIVE MATERIAL is
`first received by the affected individual and
`shall end two (2) years after the conclusion of
`this Action, including any appeals.
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`A.
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`Defendant’s Position
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`The Federal Circuit has recognized
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`that, despite an attorney’s best efforts
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`to
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`compartmentalize separate cases and representations, “it 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 Tr. Co. Americas, 605 F.3d 1373, 1378
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`(Fed. Cir. 2010) (citation omitted); see also In re Sibia Neurosciences, Inc., No. 525, 1997 WL
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`688174 (Fed. Cir. 1997). When attorneys involved in litigation represent a client before the Patent
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`Office, there is inherently a risk of disclosing defendant’s confidential information: “it is hard to
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`conceive that there would be little or no risk of inadvertent disclosure when these same attorneys
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`advise their client in matters regarding acquisitions of patents.” E-Contact Techs., LLC v. Apple,
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`Inc., No. 1:11-cv-426, 2012 WL 11924448, at *2 (E.D. Tex. June 19, 2012); see also Telebuyer,
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`LLC v. Amazon.com, Inc., 2014 U.S. Dist. LEXIS 147049, at *20 (W.D. Wash. July 7, 2014) (“Patent
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`acquisition creates the same risks of inadvertent use as patent prosecution, in that ‘litigation counsel
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`may consciously or subconsciously use their knowledge of … confidential information to advise a
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`client on which patents to acquire.’”).
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`Courts have recognized that the rationale for prosecution bars also applies to acquisition bars.
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`“Litigation counsel who have access to Google’s critical source code and other highly confidential
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`information should not be permitted to consult with their client strategically under circumstances
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`where an inadvertent disclosure of what they have seen at the defendant’s stand-alone computer
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`could potentially be used to harm the defendant.” Inventor Holdings, LLC v. Google, Inc., No. 1:14-
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`cv-186, 2014 WL 4369504, at *2 (D. Del. Aug. 27, 2014). Similarly, another court entered a
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`disputed acquisition bar, reasoning that in exchange for “the disclosure of [defendant’s] confidential,
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`‘crown jewel’ technology to opposing counsel,” an acquisition bar “prevents attorneys from—
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`inadvertently or otherwise—relying on the confidential information when they advise other parties
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`anticipating litigation against” the defendant. Catch A Wave Techs., Inc. v. Sirius XM Radio, Inc.,
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`No. C 12-05791, 2013 WL 9868422, at *1 (N.D. Cal. Aug. 6, 2013).
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`The acquisition bar will prevent Touchstream’s counsel, or other persons with access to
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`Google’s highly sensitive materials (which includes the scope of documents consistent with the
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`prosecution bar), from inadvertently using Google’s confidential information while advising clients
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`on potential patents to acquire, which might be asserted against Google. Both this Court and the
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`Eastern District of Texas have endorsed similar provisions in similar situations. See, e.g., Infogation
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`Corporation, v. Google LLC, 6:20-cv-00366-ADA, Dkt. No. 47 at § 12; Multimedia Content
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`Management LLC v. Dish Network LLC, 6:18-cv-00207-ADA, Dkt. No. 94 at 16; Eolas
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`Technologies, Inc. v. Amazon.com, Inc., No. 15-01038, Dkt. Nos. 81, 82, 98. In balancing the
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 13 of 33
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`interests of both parties, the significant potential harm to Google outweighs the modest restriction
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`an acquisition bar would place on Touchstream’s counsel and other designated persons with access
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`to Google highly sensitive material. E-Contact Techs., 2012 WL 11924448, at *2 (“This Court finds
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`that the potential harm of inadvertent disclosure outweighs the restriction imposed on counsel for
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`Plaintiff. An acquisition bar should be included in the protective order.”); see also Unwired Planet
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`LLC v. Apple Inc., No. 12-0505, 2013 WL 1501489, at *7 (D. Nev. Apr. 11, 2013) (finding that
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`“good cause exists to include in the protective order the bar that Unwired’s outside counsel cannot
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`use the confidential information obtained in this lawsuit for the purpose of giving advice on patent
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`acquisitions”).
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`B.
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`Plaintiff’s Position
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`The party seeking an acquisition bar carries the burden of showing good cause for its
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`inclusion. In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010)
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`(addressing prosecution bars); Jenam Tech, LLC v. Samsung Elecs. Am., Inc., 4:19-cv-00250, 2020
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`WL 757097, at *1-2 (E.D. Tex. Feb. 4, 2020) (applying same standard to acquisition bars). This
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`burden is a heavy one, requiring the moving party to show “that the information designated to trigger
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`the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter
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`covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive
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`information.” In re Deutsche Bank, 605 F.3d at 1381. Whether this risk for disclosure exists is
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`determined “by the facts on a counsel-by-counsel basis.” Id. at 1378. Before evaluating whether to
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`grant an acquisition bar, a court must first be satisfied that the bar is triggered by the relevant kind
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`of information. Id. at 1381.
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`Google has not met its heavy burden to justify an acquisition bar here. The only risk Google
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`has cited in support of its proposed bar is both generic and speculative: namely, that Touchstream
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`Case 6:21-cv-00569-ADA Document 74 Filed 07/18/22 Page 14 of 33
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`may inadvertently use “Google’s confidential information while advising clients on potential patents
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`to acquire, which might be asserted against Google.” But Google has not named these “clients” or
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`pointed to any particular facts to substantiate the alleged risk, which is fatal to its position. Id. at
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`1378.
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`Google further undercuts its position by relying primarily on disputes involving patent
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`assertion entities whose business models involve acquiring patent portfolios for serial suits against
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`the same defendants, which may create sufficient risk to justify including a bar. See Unwired Planet
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`LLC v. Apple Inc., No. 3:12-CV-00505-RCJ, 2013 WL 1501489, at *3 (D. Nev. Apr. 11, 2013)
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`(“Apple believes it would be highly prejudicial to allow Unwired—a patent holding company—to
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`benefit from having Apple’s confidential information and to use that information to acquire patents
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`to assert against Apple’s products.”); E–Contact Techs., LLC v. Apple, Inc., No. 1:11-CV-426
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`LED/KFG, 2012 WL 11924448, at *1 (E.D. Tex. June 19, 2012) (“Defendants respond that Plaintiff
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`is a non-practicing patent assertion entity which sues multiple defendants for infringement.”);
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`Inventor Holdings, LLC v. Google, Inc., No. 1:14-CV-00186 (GMS), 2014 WL 4369504, at *1 (D.
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`Del. Aug. 27, 2014) (“Given . . . the fact that the plaintiff is a non-practicing entity it is difficult to
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`envision circumstances in which the inadvertent disclosure of highly confidential information would
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`not be a risk.”); see also Eolas Techs., Inc. v. Amazon.com, Inc., No. 6:15-cv-01038 (E.D. Tex.),
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`Dkt. 81 at 16 (describing how the plaintiff had “demonstrated a proclivity for filing continuation
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`patent applications and then bringing successive lawsuits against individual defendants”). But
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`Touchstream is not asserting acquired patents─it developed all three asserted patents in-house─and
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`Google has pointed to no evidence that Touchstream has ever acquired a patent from a third party or
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`ever intends to do so. Unlike those cases, then, this case does not involve any particularized risk that
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`justifies the inclusion of a bar.2 Nor has Google pointed to any other clients of Touchstream’s
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`counsel that might raise similar concerns. Yet Google insists on a broad bar that could cause
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`Touchstream’s counsel substantial harm by prohibiting otherwise legitimate activities, such as
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`providing routine advice to clients that has nothing to do with Google’s protected information.
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`Jenam Tech is instructive here. In that case, a court in the Eastern District of Texas denied
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`the defendant’s request to enter a nearly identical acquisition bar:
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`Absent written consent from the Designating Party, any individual who receives
`access to HIGHLY CONFIDENTIAL – ATTORNEYS' EYES ONLY” or
`“HIGHLY CONFIDENTIAL – SOURCE CODE” information designated by the
`Designating Party shall not be involved in activity related to: (i) the acquisition of
`patents or patent applications (for any person or entity) relating to the field of the
`invention of the patents in suit (allowing two TCP-variant (or separate protocol)
`connection endpoints to cooperate in supporting a “keepalive” option and having
`an idle time period policy as described therein); or (ii) advising or counseling clients
`regarding the same. This Acquisition Bar shall begin when access to “HIGHLY
`CONFIDENTIAL
`– ATTORNEYS' EYES ONLY”
`or
`“HIGHLY
`CONFIDENTIAL – SOURCE CODE” information is first received by the affected
`individual and shall end two (2) years after final disposition of this action as
`provided herein.
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`2020 WL 757097 at *1-2, n.1. The plaintiff in Jenam Tech had filed a previous patent suit against
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`the same defendants (id. at *2), yet the court found even this fact insufficient to demonstrate the
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`need for the acquisition bar and concluded that the defendants failed to “present[] evidence or
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`argument necessary” for the court to weigh “the potential harm of inadvertent disclosure against the
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`restriction upon counsel.” Id. Here, Google requests essentially the same acquisition bar as in Jenam
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`Tech, yet provides even less justification for it. As i