Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
`Plaintiff,
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`v.
`APPLE INC.,
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`Defendant.
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`Case No. 6:21-CV-00984-ADA
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`PATENT CASE
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`JURY TRIAL DEMANDED
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`FILED UNDER SEAL
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`APPLE’S RESPONSE TO JAWBONE’S OPPOSED MOTION FOR ENTRY OF
`DISPUTED PROTECTIVE ORDER
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`I.
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`INTRODUCTION
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`Defendant Apple Inc. (“Apple”) respectfully requests that this Court enter Apple’s
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`Proposed Protective Order (Exhibit 1) because it balances Apple’s need to safeguard its source
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`code and highly confidential information with ensuring fair and available access to discovery to
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`Plaintiff Jawbone Innovations, LLC (“Jawbone”). Indeed, Apple was the first to initiate
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`negotiations for a fair protective order in February so that Apple could securely and timely produce
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`its confidential information to Jawbone. Yet Jawbone and its counsel refused to negotiate in good
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`faith. Jawbone declared impasse after just one meet and confer and refused all further attempts to
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`narrow the dispute. In doing so, Plaintiff also reneged on earlier compromises in favor of a new
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`proposal on which it is refusing to further confer. Plaintiff’s counsel, Fabricant, is taking the same
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`unreasonable positions with respect to Apple in its other active case, RFCyber Corp. v. Apple Inc.
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`(Case No. 6:21-cv-00916-ADA). (Exhibit 2.)
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`Adopting Apple’s Protective Order is not only appropriate given the sensitivity of Apple’s
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`confidential information at issue in this matter, but it would send a clear message to Jawbone—
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`Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 2 of 12
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`and to future litigants—that parties should negotiate in good faith over protective order provisions
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`tailored to the individual needs of each case. And, in doing so, deter Jawbone (for the remainder
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`of this matter) and future litigants from refusing all attempts to engage in meaningful meet and
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`confer efforts and simply declaring impasse at any and all deviations from the default protective
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`order. Therefore, and for the reasons set forth below, this Court should adopt Apple’s proposed
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`protective order, attached as Exhibit 1.1
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`II.
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`ARGUMENT
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`Apple’s proposed protective order fairly balances Apple’s need to safeguard its source code
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`and highly confidential information with its discovery obligations. The Court’s default protective
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`order is the foundation for Apple’s proposal, and the additional protections and clarifications in
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`Apple’s proposal further ensure secure and efficient access to confidential information in this
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`matter for both Apple and Jawbone. Apple’s proposal is not “replete with restrictions that would
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`make discovery unduly burdensome, if not impossible.” Dkt. 40 at 3. Apple’s proposed provisions
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`reflect the real-world restrictions and protections Apple employs for access to and review of its
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`source code outside of litigation. See Declaration of Robin Goldberg (Exhibit 4, hereinafter
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`“Goldberg Decl.”) Apple’s proposed additions are reasonable and indeed similar provisions have
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`been agreed to in other cases before this Court. See, e.g., Koss Corp. v. Apple Inc., Case No. 20-
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`1 A redline version reflecting modifications to the Court’s default order is attached as Exhibit 3.
`Apple has struck provision 5(d) that was in previous proposals sent to Jawbone. Provision 5(d)
`provided that “CONFIDENTIAL” documents, information, and material could be disclosed to:
`“Up to and including three (3) designated representatives of the Receiving Party, who may be,
`but need not be, in-house counsel for the Receiving Party, as well as their immediate paralegals
`and staff, to whom disclosure is reasonably necessary for this case, provided that: (a) each such
`person has agreed to be bound by the provisions of the Protective Order by signing a copy of
`Exhibit 1; and (b) no unresolved objections to such disclosure exist after proper notice has been
`given to all Parties.” Apple does not know whether Jawbone disputes the deletion.
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`2
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`Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 3 of 12
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`cv-00665-ADA, Dkt. No. 70; Fintiv, Inc. v. Apple, Inc., Case No. 18-cv-372-ADA. Apple’s
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`versions of the following disputed provisions are fair and warranted.
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`A. Section 10—Source Code Security
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`Apple’s revolutionary products outperform competitors due in large part to its trade secret-
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`protected source code. (Goldberg Decl. ¶¶ 3, 6.) Apple invested billions of dollars in R&D to
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`create and maintain a business model built on its novel integration of software and hardware.
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`(Goldberg Decl. ¶ 5.) Apple’s proposed safeguards are commensurate with the level of security
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`that Apple employs internally to protect its core assets from inadvertent disclosure. (Goldberg
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`Decl. ¶¶ 6,7.) Jawbone’s proposal unjustifiably risks disclosure of Apple’s source code, a risk that
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`is especially pronounced given the broad scope of Jawbone’s infringement allegations, which
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`accuse nearly every Apple product of infringing the nine patents in suit, and resulting broad scope
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`of source code produced. (Exhibit 5 at 2-3 (identifying various versions of the iPhone, AirPods,
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`HomePod, and Mac products).)
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`Sections 10(b), (d)-(f) safeguard Apple’s source code during inspection. Despite the fact
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`Apple’s proposal accommodates Jawbone’s request for peripheral devices to be provided with the
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`source code machine, Jawbone still complains, without basis, about Apple’s provisions for
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`notification regarding the types of source code review tools that Jawbone prefers to use. The form
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`order requires a “stand-alone” computer connected to a printer, which Apple is offering. Apple’s
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`draft proposal further accommodates Jawbone’s request that the review machine “have USB ports
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`enabled for the use of peripheral devices.” (See Exhibit 1.) Section 10(b) clarifies the machine
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`will be equipped with a screen, keyboard, and mouse. (Id.; Goldberg Decl. ¶ 13.) Section 10(d)
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`requires Apple to install source code review tools on the machine that are presently used in the
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`ordinary course of business. With respect to requests for additional software tools, Apple will not
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`“reject any tool for any reason” (Dkt. 40 at 5) because “approval shall not be unreasonably
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`withheld.” (Ex. 1 at § 10(d)). Jawbone anticipates using “standard tools,” so Apple’s proposal
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`should be a non-issue for Jawbone. Moreover, Jawbone did not explain why it would be
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`burdensome to identify desired review tools 10 days in advance of its review. The notice period
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`is necessary to allow Apple a fair opportunity to evaluate the security risk posed by the requested
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`applications and install the applications on the source code machine. Sections 10(e)-(f) ban
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`recordable devices in the source code review room to prevent the creation of electronic copies of
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`source code, and the provisions mirror protections Apple has implemented internally. (Goldberg
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`Decl. ¶ 10.) Jawbone offers no good reason why Apple should compromise its established security
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`protocols.
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`Section 10(k), contrary to Jawbone’s misreading, allows an expert’s “direct reports and
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`other support personnel” (Dkt. 40 at 6) to access the source code, so long as Jawbone discloses
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`those personnel and secures prior written consent. (Section 10(k)(vi)). This approach is consistent
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`both with Apple’s internal policy of limiting access to individuals on a “need-to-know” basis
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`(Goldberg Decl. ¶¶ 8, 9) and with the form Protective Order at footnote 2 to Section 11(e), which
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`requires “personnel helping in the analysis of Source Code Material shall be disclosed pursuant to
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`Paragraph 5(e).” In sum, there is no real dispute regarding this provision.
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`Sections 10(l), (m) reduce risk of inadvertent disclosure of source code material in Court
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`filings and discovery correspondence. Jawbone contends that the safeguards make written
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`discovery and court filings “practically impossible.” Dkt. 40 at 4-5. But Section 10(l) merely
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`requires a meet and confer to agree on a procedure “as to how to make such a [Court] filing while
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`protecting the confidentiality of the Source Code” and limits the number of continuous blocks of
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`source code to 5 pages for inclusion in filings or expert reports. Jawbone’s position that Section
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`10(l) poses an “unnecessary burden” (Dkt. 40 at 5) ignores the consequence of source code
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`appearing on PACER, where it is instantly available to the general public, which would be near-
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`impossible to cure. And Jawbone’s concerns about Section 10(m) hindering discovery
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`correspondence are unfounded. Section 10(m) prohibits the inclusion of “Source Code Material”
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`in party correspondence, including Hardware Description Language (HDL), Register Transfer
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`Level (RTL) and Computer Aided Design (CAD) files that describe the hardware design of
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`components in Apple’s products, as Apple treats this information as akin to source code.
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`(Goldberg Decl. ¶ 4.) Section 8, however, excludes functions, parameters, file names, path
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`structures, and other “Source Code-adjacent material” from the definition of “Source Code
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`Material.” (Exhibit 1 at 9 n.6.) The parties are free to use “Source Code-adjacent material” as
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`shorthand in discovery correspondence to communicate effectively about source code without
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`risking exposure of the source code itself.
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`Sections 10(n), (o), (v) reduce the risk of inadvertent disclosure by limiting the number
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`and nature of source code copies. Section 10(n) prohibits making electronic copies of source code
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`without prior written consent, except as provided in Section 10(l). Section 10(l) limits the number
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`of printouts to a “reasonable number” that presumptively does not exceed 750 pages.2 Should the
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`parties disagree about a “reasonable number” of pages to be printed upon request, the provision
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`requires the “Receiving Party to demonstrate that such printed portions are no more than is
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`reasonably necessary for a permitted purpose and not merely printed for the purposes of review
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`and analysis elsewhere.” Having the “Receiving Party” explain its need for printouts beyond the
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`presumptive limit removes speculation over the Receiving Party’s motives. Jawbone glosses over
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`2 Apple has agreed to increase its previously proposed 200 page presumptive limit to 750 pages.
`This change is reflected in Apple’s proposed protective order (Exhibit 1, § 10(o).).
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`Apple’s legitimate interests in reducing the risk of inadvertent disclosure by limiting the amount
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`of continuous blocks of code and instead asserts that Apple should not be allowed to “dictate the
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`amount of source code on which a party relies on to prove their case.” (Dkt. 40 at 5-6.) Jawbone’s
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`position is at odds with this Court’s recognition that plaintiffs do not enjoy unlimited source code
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`printouts. See Verain, LLC v. Micron Tech, Inc., No. 6:21-cv-487-ADA, slip op. at 1, 9 (W.D.
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`Tex. Apr. 20, 2022) (granting source code printouts in excess of the agreed limits only after
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`plaintiff identified specific code that it required after completing four full days of in-person
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`review).
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`Section 10(q) states “no expectations of confidentiality for any items left in the [review
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`room] following each inspection session,” to clarify that Apple will inspect abandoned materials
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`in the secure source code room to determine what they are and ensure that they are appropriately
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`secured.
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`Section 10(t) assigns to Apple the expense and burden of securely transporting the source
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`code to a deposition. Because the printouts brought to the deposition are not released to Jawbone,
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`the copies do not count against the total number of allotted pages. Jawbone’s “work product”
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`(Dkt. 40 at 7) complaint rings hollow because parties often rely in deposition on documents
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`identified or otherwise prepared by the other side. Similarly, Jawbone is wrong to contend that
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`allowing Apple fair notice of the source code Jawbone needs for the deposition would prejudice
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`Jawbone. If anything, Jawbone benefits from a fact witness prepared to testify on specific source
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`code files Jawbone is interested in. Finally, Jawbone’s contention that “it is also impractical” to
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`require 10 days of notice because it may not even know which set of source code it plans to use
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`defies logic. (Dkt. 40 at 7.) Jawbone must have identified what it contends to be the relevant
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`source code by the time it serves final infringement contentions on September 21, 2022. (Dkt. 23.)
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`That leaves Jawbone five months until the close of fact discovery to identify the set of source code
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`it plans to use in each deposition.
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`B. Section 1—Confidentiality Designations
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`Section 1(b) does not “presumptively deem all deposition transcripts” as confidential for
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`“no good reason.” (Dkt. 40 at 9.) Rather, Section 1(b) provides a time-limited 30-day grace period
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`to designate a transcript as confidential if there is an inadvertent failure to designate a deposition
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`transcript as confidential on the record. Given the sensitive nature of the subject matter covered
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`during depositions, this is an appropriate safeguard that reduces the risk of inadvertent
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`dissemination of confidential deposition transcripts.
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`Section 1(d) provides a safeguard against the inadvertent dissemination of native files or
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`documents by (1) requiring the parties to affix a legend corresponding to the confidentiality
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`designation to any printed native file and (2) providing a copy of said printed document to the
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`Producing Party for confirmation that the information in the document has not been altered.
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`Notably, this provision would only apply when native files are printed “for use at a deposition” or
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`“for provision in printed form to an expert or consultant,” and Jawbone fails to explain how these
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`steps require the “disclos[ure] [of] its work product.” (Dkt. 40 at 8.)
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`C. Section 6—“CONFIDENTIAL” Information
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`Section 6 ensures documents containing confidential
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`information are marked
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`“CONFIDENTIAL.” Jawbone does not explain how this simple clarification “creates the
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`possibility of a party attempting to designate publicly available documents.” (Dkt. 40 at 10.)
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`Section 6 applies only to “documents, information, or material that contain or reflect confidential,
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`proprietary, and/or commercially sensitive information.”
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`D. Sections 9(b), 11, 12 —Disclosure of “CONFIDENTIAL – ATTORNEYS’
`EYES ONLY” Information to Experts
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`Section 9(b) is consistent with Apple’s internal policies concerning access to highly
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`sensitive material, which limits access to known individuals on a “need-to-know” basis to reduce
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`the risk of inadvertent dissemination. (Goldberg Decl. ¶ 8.) Jawbone, on the other hand, proposes
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`giving consultants and experts indiscriminate and unfettered access to highly sensitive material,
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`even before the consultant or expert has agreed to be bound by the operative Protective Order.
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`Section 11 proposes modestly increasing the default timetable to object to consultants or
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`experts from 10 to 14 days, and adjusting the 15-day period to seek relief with the Court to 14 days
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`(up to seven days to meet and confer and up to seven days to seek relief). The modifications are
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`bilateral, and Jawbone has not identified any reason why it will be unable to comply.
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`Section 12 provides both parties with the ability to object to additional disclosure of
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`confidential information to “continued access by that Person for good cause,” along with a
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`procedure to meet and confer regarding the objection and the ability to file for a protective order
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`if the objection is not withdrawn. For instance, if previously undisclosed information regarding
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`an expert is later revealed or otherwise becomes known to a party, this provision preserves that
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`party’s ability to subsequently object to additional disclosure of Confidential information to that
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`expert.
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`E. Section 11—Notice of Disclosure
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`Section 11 mitigates risk of improper use of “HIGHLY SENSITIVE MATERIAL” (i.e.,
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`material
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`that
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`is designated “CONFIDENTIAL
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`- ATTORNEY’S EYES ONLY” or
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`“CONFIDENTIAL - OUTSIDE ATTORNEY’S EYES ONLY - SOURCE CODE”) by requiring
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`the disclosing Party to notify the Producing Party if a person receiving the material becomes
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`involved in the design, development, operation, or patenting of audio processing hardware or
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`Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 9 of 12
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`software. Given the value of said Protected Material to the Producing Party, it is prudent to require
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`the consultant or expert (and, by extension, the Party who elected to provide the Protected Material
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`to the consultant or expert) to provide notice that the consultant or expert is now working in a field
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`in which he or she recently had access to the Producing Party’s “HIGHLY SENSITIVE
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`MATERIAL” in that same field. Doing so would allow the Producing Party to investigate and
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`seek relief from the Court in order to safeguard its Protected Material.
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`F. Section 13—Prosecution and Acquisition Bar
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`Section 13 prohibits any counsel for Jawbone that has received “HIGHLY SENSITIVE
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`MATERIAL” from (1) participating in the prosecution of patents or patent applications within the
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`field of microphone design, voice activity detection, and audio processing, including noise
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`suppression; (2) being involved in the acquisition of patents or patent applications within the field
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`of microphone design, voice activity detection, and audio processing, including noise suppression;
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`or (3) preparing, drafting, editing, and/or amending claims during post-grant proceedings
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`involving patents within the field of microphone design, voice activity detection, and audio
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`processing, including noise suppression.
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`The purpose of a prosecution bar is to mitigate the risk of inadvertent use of confidential
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`information learned in litigation by barring litigation counsel’s involvement in strategic decision-
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`making related to the subject matter of the litigation. Because it is “very difficult for the human
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`mind to compartmentalize and selectively suppress information once learned,” there is a danger
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`that a party’s litigation counsel who had accessed another party’s confidential information could
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`misuse that information, either intentionally or unintentionally, for purposes of competitive
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`decision-making in proceedings before the Patent Office. In re Deutsche Bank Trust Co. Americas,
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`605 F.3d 1373, 1379 (Fed. Cir. 2010). “[M]aking strategic decisions on the type and scope of
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`Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 10 of 12
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`patent protection” and “strategically amending or surrendering claim scope” are examples of such
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`competitive decision making. Id. at 1380. Because Jawbone’s litigation counsel will have access
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`to Apple’s source code and other sensitive information, there is a heightened danger of misuse or
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`inadvertent disclosure of that information in proceedings before the Patent Office because Jawbone
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`can draft or modify patent claims to cover Apple’s products based on confidential information that
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`Jawbone’s litigation counsel obtained in litigation. This concern also applies to the acquisition of
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`patents because litigation counsel may consciously or subconsciously use knowledge of Apple’s
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`confidential information to advise a client on which patents to acquire—i.e., patents that may be
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`asserted against Apple. Apple’s proposed Section 13 is limited to patents and patent applications
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`within the field of microphone design, voice activity detection, and audio processing, including
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`noise suppression and is thus narrowly tailored to the technology at issue.
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`In contrast, there is no rationale for imposing a prosecution or acquisition bar on Apple in
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`this case. As far as Apple can tell, Jawbone’s only business is licensing and enforcing its patents,
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`and Jawbone does not sell or otherwise offer products of any kind. Thus, even if, as Jawbone
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`contends, it has or will produce “highly sensitive material” in this case, there is no danger that
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`Apple’s attorneys will inadvertently use that material to prosecute or acquire patent claims that
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`cover Jawbone’s products because there are no such products. See Ring Plus, Inc. v. Cingular
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`Wireless, LLC, No. 2:06-cv-159, 2007 U.S. Dist. LEXIS 102190, at *11-13 (E.D. Tex. Jul. 24,
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`2007) (Dkt. No. 127) (explaining that that “[a] one-way prosecution bar is not uncommon” and is
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`appropriate in circumstances where “the parties are not similarly situated,” such as in the case of
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`a non-practicing entity who has sued a product manufacturer) (citing cases)); Smartflash LLC v.
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`Apple Inc., No. 6:13-cv-447, 2014 WL 10986995 (E.D. Tex. May 12, 2014) (Dkt. No. 139)
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`(implementing unilateral prosecution bar against plaintiff and its counsel).
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`III. CONCLUSION
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`Apple respectfully requests that the Court enter Apple’s proposed PO over Jawbone’s
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`proposal.
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`Dated: May 17, 2022
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`FISH & RICHARDSON P.C.
`
`By: /s/ Ricardo J. Bonilla
`
`J. Stephen Ravel
`
`Texas Bar No. 16584975
`steve.ravel@kellyhart.com
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, Texas 78701
`Telephone: (512) 495-6429
`Facsimile: (512) 495-6401
`
`Ricardo J. Bonilla
`Texas Bar No. 24082704
`rbonilla@fr.com
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`Telephone: (214) 747-5070
`Facsimile: (214) 747-2091
`
`Benjamin C. Elacqua
`Texas Bar No. 24055443
`elacqua@fr.com
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, Texas 77010
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`Katherine D. Prescott
`(Pro Hac Vice)
`prescott@fr.com
`Betty H. Chen
`Texas Bar No. 24056720
`bchen@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 400
`Redwood City, CA 94063
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`11
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`Case 6:21-cv-00984-ADA Document 51 Filed 05/24/22 Page 12 of 12
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`Telephone: (650) 839-5067
`Facsimile: (650) 839-5071
`
`Daniel R. Gopenko
`DC Bar No. 1018019
`gopenko@fr.com
`FISH & RICHARDSON P.C.
`1000 Maine Avenue, SW, Suite 1000
`Washington, DC 20024
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Qiuyi Wu
`(Pro Hac Vice)
`qwu@fr.com
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`Facsimile: (617) 8906
`
`
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`COUNSEL FOR DEFENDANT
`APPLE INC.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on May 17, 2022, to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system.
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`/s/ Ricardo J. Bonilla
`Ricardo J. Bonilla
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`12
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