JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER

JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER - PAGE 1 Dallas 279637v1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

WI-LAN, INC. v. ACER, INC., et al. WI-LAN, INC. v. WESTELL TECHNOLOGIES, INC., et al.

§§§§§§§§§§§§§

CIVIL ACTION NO. 2:07-CV-473[TJW] CONSOLIDATED WITH: CIVIL ACTION NO. 2:07-CV-474[TJW]

JURY TRIAL REQUESTED

JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER

Plaintiff Wi-LAN, Inc. and Defendants jointly request that the Court enter a Stipulated

Protective Order in this case. The parties have spent considerable time discussing the provisions

of the attached order and have compromised and resolved all disputes but one, that is, Wi-LAN's

proposed "Employee Bar" provision, which concerns whether Defendants' in-house attorneys

may have access to Wi-LAN's documents relating to Wi-LAN's ongoing research and

development and its current and future business plans and strategies. Wi-LAN's proposed draft

of the Protective Order is attached as Exhibit A. Defendants' proposed draft of the Protective

Order is attached as Exhibit B. For the Court's convenience, a blacklined comparison of the two

versions is attached as Exhibit C. For the Court's consideration, the parties submit below the two

portions of the protective order where this one remaining issue arises, and have highlighted in

Case 2:07-cv-00473-TJW Document 322 Filed 06/09/2009 Page 1 of 29


bold the text that Wi-LAN seeks to retain, but that Defendants seek to delete.1 Following these

two portions are Wi-LAN's and Defendants' arguments in support of their respective positions.

7. "ATTORNEYS' EYES ONLY – SUBJECT TO EMPLOYEE BAR" OR "SUBJECT TO PROSECUTION BAR": these designations may be used only for ATTORNEYS' EYES ONLY information, documents, and things the Designating Party believes in good faith would create a substantial risk of serious injury if known to in-house attorneys or other employees of a Receiving Party, including, but not limited to, among the following categories of documents:

(a) a Designating Party's source code and other technical documents describing the structure and operation of the Designating Party's products;

(b) a Designating Party's research and development activities; and (c) a Designating party's business planning, development, and strategy

documents. These designations, however, shall not be used for a Designating Party's sales records regarding its products, license agreements or related communications with parties to the agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE BAR” designation shall not be used for any document created prior to January 1, 2006.

~ and ~

16. "ATTORNEYS' EYES ONLY" Material and "ATTORNEYS' EYES ONLY – SOURCE CODE" Material: Unless otherwise ordered by the Court or permitted in writing by the Designating Party, a Receiving Party may disclose any information, documents or things designated "ATTORNEYS' EYES ONLY" or "ATTORNEYS' EYES ONLY – SOURCE CODE" Material only to the following, in addition to those identified in Paragraphs 27-28 below regarding use of Designated Material at depositions:

(a) Persons who appear on the face of Designated Material as an author, addressee or recipient thereof;

(b) Counsel of Record;

(c) For "ATTORNEYS' EYES ONLY" material:

With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house foreign patent attorneys) of each Receiving Party or their respective parent companies, and necessary secretarial staff, having responsibility for providing oversight of or assistance in the litigation, provided that each such attorney must

1 The parties have also highlighted surrounding text that would have to be modified should the Court agree with Defendants.



keep all such documents and information in segregated files access to which is restricted to the designated attorney and necessary secretarial staff. The designated in-house attorneys will not have access to any information about any Defendant Producing Party's current or future products that are not accused of infringement in this case and further provided that Defendants' Receiving Party attorneys shall be allowed to review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no circumstances shall Defendants' in-house attorneys or employees be permitted access to or be allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant, unless so authorized by the Producing Party. Nothing in this section restricts designated in-house attorneys' access to information concerning their own companies' current or future products. The "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance in the litigation, who have signed the "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material. The substituted employees shall have the same duties and obligations of in-house counsel who are designated under this paragraph. Defendants Sony Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two (2) employees of their parent companies and their necessary secretarial staff having responsibility for providing oversight of or assistance in the litigation, who have signed the "Acknowledgement and Agreement To Be Bound By Protective Order" attached hereto as Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material. The substituted employees shall have the same duties and obligations of in-house counsel who are designated under this paragraph;

With respect to Designated Material from third parties or for which third party permission is required for production, absent a court order or agreement of the third party, such Designated Material may not be disclosed to employees of a Receiving Party;

This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE CODE," "ATTORNEYS' EYES ONLY – SUBJECT TO EMPLOYEE BAR" OR "SUBJECT TO PROSECUTION BAR."



I. Wi-LAN's Argument in Support of Its Proposal

The parties have agreed to a Protective Order with an ATTORNEYS' EYES ONLY

designation that limits access to a party’s confidential documents to outside counsel and up to

three in-house counsel for Wi-LAN and for each of the nineteen defendants. See Exhibit A, ¶¶ 5,

16. In addition, as reflected in the above-quoted portions of the Protective Order, Wi-LAN has

also agreed to place certain further restrictions on its in-house counsel, preventing access to (i)

Defendants’ source code and other technical documents describing the structure and operation of

Defendants’ products, (ii) Defendants’ research and development activities, and (iii) Defendants’

business plans and strategies, including for its products and intellectual property. See, e.g., ¶¶ 7

(a), (b), and (c) (an "ATTORNEYS' EYES ONLY - PROSECUTION BAR" designation). Wi-

LAN agreed to these restrictions to facilitate entry of a protective order and to address

Defendants concern that such information could potentially be used (even inadvertently) to

further strengthen Wi-LAN’s intellectual property position with respect to Defendants. Wi-LAN

agreed to these additional restrictions, however, with the expectation that Defendants would

reciprocate by similarly limiting their in-house counsel’s access to Wi-LAN’s confidential

documents that could be used (even inadvertently) to strengthen Defendants’ intellectual

property position with respect to Wi-LAN, including its ability to defend against, settle, or

otherwise compete with Wi-LAN’s current and any future intellectual property claims.

The remaining dispute between the parties is thus focused on whether defendants' in-

house counsel should be permitted access to Wi-LAN's current and future research and

development activities and its current and future business plans and strategies, while Wi-LAN’s

in-house counsel are denied that same level of access to Defendants’ documents. What is good

for the goose, should be good for the gander. While Defendants may contend otherwise, the



reality is that such information is as sensitive to Wi-LAN as it is to Defendants because it can be

used (even inadvertently) to enhance Defendants’ ability to defend against, settle, or otherwise

compete with Wi-LAN’s current and future intellectual property rights. Specifically, Wi-LAN

seeks the inclusion of a designation "ATTORNEYS' EYES ONLY - SUBJECT TO EMPLOYEE

BAR" in paragraphs 7 (a definitional section) and 16(c) to make it clear -- as it is for the

"ATTORNEYS' EYES ONLY - PROSECUTION BAR" designation (which applies only to Wi-

LAN’s in-house counsel and other employees) -- that each defendant’s three in-house attorneys

permitted to see Wi-LAN’s "ATTORNEYS' EYES ONLY" designated materials not be

permitted access to this particularly sensitive Wi-LAN information. Wi-LAN thus does not seek

an “absolute ban” on in-house counsel receiving documents, or the creation of a per se

distinction between in-house and outside counsel, as Defendants suggest below.2

Rather, Wi-LAN seeks a limited and reciprocal exception to protect access to its

documents that reflect its current and future research and development activities as well as its

current and future business plans and strategies. These narrowly defined Wi-LAN documents

are not relevant to the substance of the ongoing dispute and a limitation on access to these

documents by in-house attorneys would not prejudice Defendants' ability to prosecute this

litigation or engage in meaningful settlement discussions. Other than these documents,

Defendants' in-house counsel would have complete and unfettered access to Wi-LAN's

documents – and indisputably have access to everything they could possibly need to manage the

2 Defendants seek to distract the Court from the issue by quarrelling over whether it is appropriate to treat in-house and outside counsel differently. Defendants themselves have already agreed that such disparate treatment is appropriate in these circumstances. See, e.g., Exh. B, ¶7 (limiting definition of SUBJECT TO PROSECUTION BAR “to in-house attorneys or other employees of a Receiving Party”).



litigation and make appropriate settlement determinations regarding the matters being litigated in

this suit.3

By contrast, as discussed above, the Protective Order already provides Defendants with

broader protections against access by Wi-LAN's in-house counsel than Wi-LAN seeks to impose

on defendants' in-house counsel. Because of the nature of its business, each of Wi-LAN's in-

house attorneys managing this litigation are arguably involved in some manner in the

prosecution of its patent applications. As such, while the literal words of the Protective Order

appear to permit access by Wi-LAN’s in-house counsel to defendants' ATTORNEYS' EYES

ONLY information (just like defendants), as Defendants well know (because of the nature of Wi-

LAN’s current business) the "ATTORNEYS' EYES ONLY – SUBJECT TO PROSECUTION

BAR" designation takes that access away, preventing access by Wi-LAN's in-house attorneys to

Defendants' documents relating to their research and development efforts, as well as their past,

present and future business plans and strategies, not just Defendants’ source code and other

documents describing the structure and operation of Defendants’ products.

Federal Rule of Civil Procedure 26(c) authorizes courts to protect parties from "undue

burden or expense" by ordering "that a trade secret or other confidential research, development,

or commercial information not be disclosed or be disclosed only in a designated way." See also

Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992) (affirming district

court's denial of access by in-house counsel to its adversary's information). In evaluating this

issue, courts apply a balancing test that weighs the risk of inadvertent disclosure (such as the

potential for irreparable harm to the disclosing party and the potential for inadvertent disclosure) 3 Wi-LAN does not understand how Defendants can claim, as they do, that this limitation could be used to prevent Defendants’ in-house attorneys from reviewing litigation briefs.



against the risk of impairing the litigation by denying access to in-house counsel (including the

party's need for in-house access to the information). See id. at 1470-71. In addition to these

risks, courts evaluate whether the people receiving the information are involved in related

scientific research or in competitive decisionmaking4, the timing of the remedy and its scope.

See ST Sales Tech Holdings, LLC v. Daimler Chrysler Co., LLC., 2008 WL 5634214, *2 (E.D.

Tex. March 14, 2008) (citing U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 n.3 (Fed.

Cir.1984) and Infosint S .A. v. H. Lundbeck A.S., 2007 WL 1467784, at *3 (S.D.N.Y. 2007)).

Thus, while courts may not favor across-the-board restrictions on access by in-house counsel,

see, e.g., U.S. Steel, 730 F.2d at 1468, they evaluate the propriety of such per se restrictions to

certain information on a case-by-case basis within the context of the protections and distinctions

already negotiated by the parties to protect their competing interests. Id.

The fact that the parties in this case are not product competitors in the traditional sense

does not change the balancing test because the documents nonetheless reflect competitive

information. Indeed, the parties compete for the right to control use of the wireless technologies

at issue in this litigation. Thus, discovery of Wi-LAN’s business plans and strategies for

strengthening its intellectual protection in these areas or related areas through ongoing and future

research activities, and through the development and acquisition of additional intellectual

property rights, is information that indisputably could be used by defendants to undermine or

otherwise compete with these efforts by Wi-LAN. Indeed, in-house counsel responsible for 4 Although determining whether the in-house counsel is a competitive decisionmaker is one factor in denying access, see ST Sales, 2008 WL 5634214 *3 (“the oft-cited most critical factor weighing in favor of denial of access”) (emphasis added)), it is not the sole inquiry, id. at n.5, as Defendants would have this Court believe. Although the ST Sales court notes that plaintiff is “in the business of acquiring, licensing, and enforcing patents” (id. at *1), its analysis as to who can be a competitor, or whether the opposing party’s in-house counsel can be a competitive decisionmaker such that disclosure creates the potential for damaging use, does not turn on plaintiff’s business model.



managing the defense and settlement of Wi-LAN’s intellectual property claims in this litigation

(because of the very nature of their role in the company and in this litigation) are in a competitive

decision making position vis a vis Wi-LAN and its intellectual property as it is their job to see

that the company is successful in competing with Wi-LAN regarding intellectual property rights.

In this district, Magistrate Judge Love explained that competition over intellectual property

rights is sufficient to make two parties competitors:

Moreover, it is somewhat disingenuous to argue Sales Tech is not Defendants' competitor simply because Sales Tech is in the business of acquiring and enforcing patents, while Defendants manufacture and design automobiles. Plaintiff and Defendants all seek to utilize, in one manner or another, intellectual property as part of a business model for pecuniary gain. The fact that Sales Tech is before the Court seeking to enforce its attained intellectual property, and has sued on similar patents against these same Defendants on the same systems many times before, indicates Sales Tech views Defendants as competitors for the rights to use the accused systems. To the extent Sales Tech and Defendants are not direct competitors in the traditional understanding of the term, competitor status is not the sole relevant inquiry, and it certainly is not determinative of the matter. See MGP Ingredients, Inc. v. Mars, Inc., 245 F.R.D. 497, 500-01 (D. Kan. 2007).

ST Sales, 2008 WL 5634214, *6.5

A. The Risks Resulting From Disclosure Are Too High in This Case

Wi-LAN is a pioneer in the design and development of wireless technologies and

products. In the early 1990s, its founders invented the basic technology that makes possible the

Wi-Fi and Wi-MAX capabilities in notebooks, routers, and handsets: wideband orthogonal

frequency division multiplexing ("wideband OFDM"). In exchange for disclosing its' inventions

to the public, Wi-LAN sought and was granted patent protection. Wi-LAN also introduced the

5 Regardless, parties need not be competitors for there to be a competitive decisionmaker who should be denied access. See, e.g., R.R. Donnelley & Sons Co. v. Quark, Inc., 2007 WL 61885, at *2 n. 2 (D. Del. 2007) (rejecting the notion that the parties must be "direct competitors" for the sensitive information to have value and access to be denied).



first ever product incorporating this technology in the 1990s and a series of follow-on products

that popularized W-OFDM as the choice for all existing and future wireless data networks

(which it indisputably has now become). Wi-LAN also worked to obtain FCC permission for the

use of such technology in the United States, enabling the markets for Wi-Fi and Wi-Max markets

from which defendants now profit. (See Intel White Paper: WiMAX and Wi-Fi Together:

Synergies for Next-Generation Broadband, DI# 191-16 at 3-4: “The IEEE 802.11 and IEEE

802.16 standards are referred to as Wi-Fi and WiMAX, respectively…. The most widespread

Wi-Fi technology being shipped today is IEEE 802.11g, which is based on orthogonal frequency

division multiplexing (OFDM) …. Common underlying technologies of OFDM and MIMO

between WiMAX and Wi-Fi technologies enables the sharing of silicon blocks ….”)

In 2006, Wi-LAN focused its business on developing and licensing its patented

inventions and it maintains ongoing technology research and development activities. To date,

Wi-LAN has licensed 65 companies to use its patented wireless technologies for building Wi-Fi

and Wi-MAX products, including large brand-named companies such as Cisco, Fujitsu,

Matsushita, and Nokia. Because Defendants use, but have chosen not to pay to license Wi-

LAN's patented technologies, Wi-LAN reluctantly (after several years of licensing efforts) has

been forced to adopt a business strategy that includes litigation to protect its' property rights as

well as the on-going value of its existing licenses. As a result, Wi-LAN's on-going business

planning and strategy documents are focused on its intellectual property development,

acquisition, licensing, and litigation strategies, and its research and development activities.

These documents evaluate the legal, technical and financial issues between the various

companies from competitive perspectives. These documents reflect highly sensitive information

in the same way that a product manufacturer would have documents reflecting future product



designs, customer plans and marketing strategies, and less restricted access to them will

undoubtedly help Defendants to better compete against Wi-LAN or its licensees.

Wi-LAN does not want these documents to find their way into the hands of its

competitors, so as not to educate its litigation opponents about its on-going and future

intellectual property business plans and its litigation strategy. Similarly, Wi-LAN does not want

documents reflecting its on-going research and development efforts to find their way into the

hands of the very same litigants who have demonstrated that they are willing to use Wi-LAN's

technology without proper compensation.

In this case, the parties desire to have their in-house counsel who are managing this

litigation see a much broader group of documents than those that would be available to them

under a standard ATTORNEYS' EYES ONLY designation. Thus, the parties have rejected a

single tiered protective order, in favor of multiple tiers, to protect against the risks from

disclosure of trade secrets and other highly confidential information – thus distinguishing this

case from MGP Ingredients v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007) (multi-tier protective

order designed to permit in house technical staff access to certain technical documents), and

Turic v. Yamah Motor Corp., 121 F.R.D. 32, 35 (S.D.N.Y. 1988) (concerning disclosure to

opposing party of documents generally).6 To protect against other risks from disclosure of

confidential information, Wi-LAN has agreed to certain general restrictions on its in-house

attorneys. However, Defendants refuse to address Wi-LAN’s concern that Defendants' own in-

house attorneys do not have reciprocal restrictions and may use, even if inadvertently,

6 Similarly, this case is even further afield from Defendant’s cited cases Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 n.16 (1981) (concerning speech between parties and potential class members); In Re Terra Int'l, Inc., 134 F.3d 302, 306 (5th Cir. 1998) (concerning prejudice from fact witnesses having access to disclosed information); and United States v. Exxon Corp., 94 F.R.D. 250, 251 (D.D.C. 1981) (concerning disclosure to the public).



knowledge of Wi-LAN’s research activities and its intellectual property business planning and

strategies when advising their respective employers about continued litigation of this matter,

settlement,7 and ways to defend against/undermine Wi-LAN’s current and future intellectual

property claims. This is not a case where Wi-LAN is arguing that Defendants’ in-house lawyers

are more likely to breach the protective order than Defendants’ outside attorneys, as Defendants

suggest. Wi-LAN merely seeks to protect a narrowly-focused group of sensitive documents

using restrictions parallel to those Defendants have already argued should be applied to Wi-LAN

and for exactly the same reasons.

Given the nature of this case, Wi-LAN does not believe it is possible for Defendants’

attorneys to erect a wall within their own minds, such that they can use certain of Wi-LAN's

information while evaluating the merits of this action and advising management regarding

settlement, but not use Wi-LAN’s business plans and strategies regarding this litigation,

settlement, and growing and strengthening its research activities and intellectual property

licensing business to improve their settlement position or to defend against, undermine, or

otherwise compete against Wi-LAN’s current and future intellectual property claims (which is

the reason that Wi-LAN agreed to defendants' request to prevent the similar access to Wi-LAN's

in-house counsel of a much broader scope). Courts have approved such restrictions in exactly

these circumstances. See Brown Bag, 960 F2d at 1470; U.S. Steel Corp. v. United States, 730

F.2d 1465, 1467-68 (Fed. Cir. 1984) ("It is humanly impossible to control the inadvertent

disclosure of some of this information in any prolonged working relationship."). In a case

7 While Wi-LAN favors access to documents that aid in realistic appraisals of the case or that better inform settlements, see infra at 22, such access should not include a party’s own strategy, appraisals, or plans for settlement. If it did, such access would most appropriately be reciprocal.



involving one of the defendants in this case, the court found that if Intel’s in-house counsel

obtained confidential information, she would be in the impossible position of having to refuse

her employer legal advice so that she did not risk improperly or indirectly revealing the

defendant's trade secrets. Intel Corp. v. Via Technologies, Inc., 198 F.R.D. 525, 531 (N.D. Cal.

2000) ("good intentions are insufficient to prevent inadvertent disclosure of confidential

information because it is not possible for counsel to 'lock-up trade secrets in [her] mind,' as the

Court in Brown Bag, observed"). Thus, although not the only factor weighed by the courts,

where in-house counsel is involved in "competitive decisionmaking" the risk of disclosure may

outweigh the need for confidential information. See Brown Bag, 960 F.2d at 1470; U.S. Steel,

730 F.2d at 1468; and Intel, 198 F.R.D. at 529.

Because Wi-LAN is in the business of developing and enforcing its intellectual property

rights, and does not currently manufacture competing products offered for sale, in this particular

case Defendants' in-house lawyers are more directly a part of their companies' competitive

decisionmaking process than they would be in the typical litigation, such as Intel v. Via, and

those referenced by Defendants in Exhibits D and E. Here, Defendants must rely more heavily

on the litigation advice and understanding of their in-house litigation counsel in making

competitive decisions regarding the continued use of Wi-LAN’s intellectual property or how to

minimize the risk of future claims by Wi-LAN, because they better – and perhaps uniquely

within their companies – understand the legal and financial considerations and motivations

underlying Wi-LAN's particular decisionmaking. Should Defendants' in-house attorneys have an

understanding of Wi-LAN's current internal patent litigation, licensing, and settlement strategies

from Wi-LAN's own recent documents, it will be impossible for these in-house attorneys to

avoid even inadvertent disclosure of such confidential information in developing their own



business plans and strategies, which are focused on defending against, undermining, and

otherwise competing against Wi-LAN’s claims. The circumstances of this case thus warrant

broader protections than Intel v. Via, which involved product competitors, where the Northern

District of California denied Intel's in-house counsel access to certain of VIA's documents as

follows:

In her declaration, Ms. Fu states that in her role as Senior Counsel in the Intel litigation group, she manages "intellectual property litigation as well as other general commercial litigation and legal disputes." Her involvement in intellectual property licensing is limited to "the extent that it resolves litigation or a legal dispute." At the evidentiary hearing, however, it became evident that Ms. Fu is involved in types of decisionmaking that create an unacceptable risk of disclosure.

Ms. Fu's involvement in licensing through litigation constitutes competitive decisionmaking, because her advice and counsel necessarily affect licensing decisions. Ms. Fu testified that as Senior Counsel she is actively involved in negotiating the terms of licensing agreements as part of settling lawsuits. Ms. Fu estimates that two-thirds of intellectual property suits brought by Intel settle with licensing agreements as part of the settlement. In evaluating these agreements, Ms. Fu testified she evaluates the strength of the patent, Intel's products implicated by the patent, and competitors' products implicated by the patent. Ms. Fu further also testified that licensing agreements reached as part of settlements directly affected Intel's competitiveness in the market by affecting Intel's ability to sell products.

These activities would put Ms. Fu in the untenable position of having either to refuse to offer crucial legal advice at times or risk disclosing protected information. See Brown Bag, 960 F.2d at 1472…. Confidential information in this case may provide Intel a competitive advantage in negotiating related licenses in the future.

Intel, 198 F.R.D. at 530-31 (internal declaration citations omitted).

Here, as in Intel, "even a seemingly insignificant risk of disclosure cannot be ignored due

to the threat of significant potential injury," namely the injury arising from Defendants' ability to

interfere with Wi-LAN’s business plans and strategies intended to further strengthen its current

and future intellectual property position with respect to defendants, and thereby gain a

competitive advantage in the marketplace and the litigation. See Intel, 198 F.R.D. at 531. Such



harm would be irreparable, as it would be impossible for the in-house attorney to unlearn the

knowledge before it is used (especially where it is used inadvertently), and it would be

impossible to restore the market or the litigation to the condition that existed prior to improper

use of the confidential information.

B. There Is No Need For Defendants’ In-House Counsel to Have Access to This Information

In contrast to these substantial risks, Defendants cannot establish a need for their in-house

counsel to access these documents. In assessing a party's need for access to a document by its in-

house attorney, courts evaluate whether protecting the document actually prejudices presentation

of the party's case, not whether it merely makes managing the litigation more difficult. See Intel,

198 F.R.D. at 528, 529 (quoting A. Hirsh Inc., 657 F. Supp. at 1305 ("in view of retained

counsel's competence, it is not clear how plaintiff’s position will be prejudiced by excluding [in-

house] counsel from access")); see also Brown Bag, 960 F.2d at 1471 (holding party's contention

that in-house counsel needed access to information to manage the case was not sufficient to

overcome the risk of inadvertent disclosure). Here, Defendants are all well represented by

competent outside counsel, thus it is difficult to see how Defendants will be prejudiced. See ST

Sales Tech Holdings, LLC v. Daimler Chrysler Co., LLC, 2008 WL 5634214, *8 (E.D. Tex.

2008). This is not an instance where outside counsel cannot handle the specialized technical

nature of the case, see, e.g., MGP Ingredients v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007)

(rejecting two tier protective order to permit in house technical staff to evaluate technology);

Carpenter Technology Corp. v. Armco, Inc., 132 F.R.D. 24, 28 (E.D. Pa. 1990), where outside

counsel lack experience, see, e.g., Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187

F.R.D. 240, 242-43 (E.D. Va. 1999), or where counsel have changed late in the litigation, see,

e.g., U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). In fact, the Brown



Bag court specifically rejected a party's contention that its in-house attorney needed access to

confidential information in part because its outside counsel had withdrawn from the litigation.

Brown Bag, 960 F.2d at 1471 (the protective order provided access to these documents through

an "independent consultant, legal or otherwise").

Providing the reciprocal restriction that Wi-LAN seeks is unlikely to hinder efficient and

effective representation of the Defendants. By the terms of paragraph 7 of the Protective Order,

the employee bar would be limited such that it "shall not be used for a Designating Party's sales

records regarding its products, license agreements or related communications with parties to the

agreements." 8 See Exhibit A, ¶ 7. Thus, the provision is not unduly broad. Further, the parties

have also agreed that Wi-LAN would not use this designation for documents prior to 2006,

thereby not withholding access by Defendants' in-house counsel to Wi-LAN's materials from

time periods relevant to the substantive issues in this litigation.

It is difficult to see how Wi-LAN's on-going research and development documents or its

recent business and strategy related documents (from 2006 to present) are relevant to the subject

matter of the present litigation, let alone are so material that Defendants' in-house counsel need

to see these documents to present their case effectively.9 Defendants have not articulated any

reason why its in-house counsel need access to these documents – other than to insinuate that

Wi-LAN could potentially use the Protective Order to wall-off in-house counsel from litigation 8 This language would provide Defendants' in-house counsel with external communications and license agreements between Wi-LAN and other companies, but it would not provide them with access to Wi-LAN's own internal business planning and strategy documents related to licensing and settlement efforts, which could be used to alter -- in Defendants' favor -- the very same strategic circumstances they were intended to help Wi-LAN navigate.

9 Certainly even with this additional designation Defendants' in-house counsel will have access to a broader range of documents than will Wi-LAN's in-house counsel due to the "ATTORNEYS' EYES ONLY – SUBJECT TO PROSECUTION BAR" designation.



briefs. In contrast and as described above, the risk of improper use of this limited category of

confidential and highly sensitive information, even if inadvertent, strongly weighs in favor of

providing a provision in the Protective Order to limit such risk.

C. Conclusion

For the foregoing reasons, Wi-LAN respectfully request that the Court enter its version of

the proposed Protective Order attached as Exhibit A, and deny Defendants’ request for the Court

to enter Defendants’ "Employee Bar" provision presented in their version of the Protective Order

attached as Exhibit B.

II. Defendants' Argument in Support of Defendants' Proposal

Defendants respectfully request that the Court enter Defendants' version of the proposed

Protective Order attached as Exhibit B, and deny Wi-LAN's request for entry of its version of the

Protective Order with its proposed "Employee Bar" provision.

The parties negotiated the terms of the proposed Protective Order for over a year without

Wi-LAN even once raising its "Employee Bar" provision, or, for that matter, any concerns over

the documents it now contends must be withheld from defendants' in-house counsel. Now, with

all other terms agreed upon, Wi-LAN inserts an "Employee Bar" restriction, arguing that in-

house access to non-privileged documents concerning its core business, patent acquisition and

licensing, would interfere with Wi-LAN's efforts to license Defendants in this lawsuit and

potential future enforcement activities. But such a "per se" restriction on all in-house counsel

would jeopardize in-house counsel's ability to effectively manage this litigation, an ability that

the Federal Circuit explicitly preserved in U.S. Steel Corp. v. United States by prohibiting such

per se bans on in-house counsel's access to sensitive information exchanged in litigation. U.S.

Steel Corp. v. United States, 730 F.2d 1465, 1469 (Fed. Cir. 1984). Rather, U.S. Steel requires



courts to examine the specific duties of particular counsel sought to be excluded by looking

specifically at "the factual circumstances surrounding each individual counsel's activities,

association, and relationship with a party" and placing the burden on the disclosing party to

demonstrate that individual counsel could not be entrusted with confidential material. See id.; ST

Sales Tech v. Daimler Chrysler Co., 2008 WL 564214 at *2 (E.D. Tex.) (quoting U.S. Steel at

1468 n.3). The issue is not solely whether the materials to be disclosed are sensitive, but rather

whether the recipient's particular role at the company creates a risk of inadvertent disclosure.

Wi-LAN focuses on the former, without any analysis of defendants' in-house counsel or their

respective responsibilities.

Instead of the particularized analysis required under U.S. Steel, Wi-LAN attempts to

globally cast Defendants' in-house counsel as "competitors" because information concerning Wi-

LAN's licensing practices would permit Defendants to "enhance Defendants' ability to defend

against, settle, or otherwise compete with Wi-LAN's current and future intellectual property

rights."10 Supra at 5. But defending against patent infringement claims and participating in

settlement discussions alone does not justify barring in-house counsel from access. Wi-LAN's

broad-brush proposal would exclude defendants' in-house counsel whose job responsibilities are

limited to pure litigation management roles within their respective companies, a category of

attorneys to which courts routinely grant access to confidential information, even with respect to

direct, head-to-head competitors in the marketplace. In fact, at least one such in-house attorney

in this litigation has already been deemed by two courts, including this one, not to be a

10 Although Wi-LAN broadly surmises that defendants' in-house counsel will likely disclose information that will enable defendants to compete against it, Wi-LAN fails to set forth particular facts demonstrating a likelihood of inadvertent disclosure or provide examples of "competitive" situations where disclosures might occur beyond defending or settling litigation.



"competitive decision-maker" under particularized and detailed U.S. Steel analyses. As Wi-LAN

would have it, Defendants' in-house counsel who have been permitted access to competitor

documents by two federal courts would be unable to access information from Wi-LAN, a patent

development and enforcement entity with no products business. Wi-LAN nonetheless goes so

far as to argue that its posture as a non-practicing patent plaintiff "warrant[s] broader

protections" than in cases where the parties are direct competitors. Supra at 13. Yet, Wi-LAN is

unable to explain how in-house counsel pose any greater risk of injury than outside counsel, who

also participate in the defense and settlement activities, as well as patent licensing. Wi-LAN's

hypothetical injury is unsupported by any precedent whatsoever, and cannot support Wi-LAN's

request for heightened protection to its information that even head-to-head competitors of

Defendants would be unable to attain. Infosint S.A., v. Lundbeck¸ 2007 WL 1467784, *2

(S.D.N.Y.) ("More than broad allegations of harm unsubstantiated by specific examples or

articulated reasoning, good cause requires the moving party [to] demonstrate that disclosure will

work a clearly defined and very serious injury.") (internal quotations and citations omitted).

Contrary to Wi-LAN's assertions, Wi-LAN's "Employee Bar" restriction will

unnecessarily impede Defendants' in-house counsel from meaningfully participating in and

managing this case. By its own admission, Wi-LAN seeks to restrict access to documents which

would enhance the ability of defendants' in-house counsel to defend and settle this action. Supra

at 5. However, these are precisely the documents that should be provided to in-house counsel,

who, with their unique, specialized knowledge concerning the interworkings of their companies

in relation to the pending litigation are best apt to evaluate the issues and fulfill their function as

litigation managers.



Wi-LAN attempts to justify its "Employee Bar" by arguing for reciprocity in view of the

"Prosecution Bar" provision agreed to by the parties which precludes Wi-LAN's in-house

counsel involved in patent prosecution from having access to Defendants' confidential

documents concerning their products. However, as Wi-LAN recognized in agreeing that the

"Prosecution Bar" should only apply to Wi-LAN and not Defendants, there is no reciprocal risk

of injury to Wi-LAN, as Wi-LAN does not make or sell products. The fact that the "Prosecution

Bar" only applies one-way in this case merely reflects Wi-LAN's status as a pure patent licensing

company, and does not itself justify Wi-LAN's separate "Employee Bar" restriction.

At bottom, Wi-LAN does not provide the required analysis for the broad "Employee Bar"

restriction it seeks to impose. In fact, the parties negotiated the terms of this protective order for

over a year without Wi-LAN even mentioning such a provision. During that period, Wi-LAN

agreed that the prosecution bar provision should only apply to Wi-LAN, acknowledging that

there are unique disclosure risks associated with Wi-LAN's status as a patent licensing company.

Wi-LAN's late attempt to change the protective order without providing the necessary case-

specific analysis should not be adopted.

A. Wi-LAN's Per Se Ban On In-House Counsel Without Regard To The Specific Facts Concerning Each Party Is Improper

In seeking to restrict the use and/or disclosure of information in this matter, Wi-LAN

bears the burden of demonstrating that good cause exists for its proposed "Employee Bar"

restriction. See, e.g., In Re Terra Int'l, Inc., 134 F.3d 302, 306 (5th Cir. 1998); MGP Ingredients

v. Mars, Inc. 245 F.R.D. 497 (D. Kan. 2007) ("It is well settled that defendants have the burden

of proving the competitive harm that would befall them by virtue of plaintiff's disclosure to in-

house personnel and outside consultants.") (citations omitted). The party seeking to restrict

disclosure is required to make "a particular and specific demonstration of fact, as distinguished



from stereotyped and conclusory statements." Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 (1981)

n.16; see also Turic v. Yamah Motor Corp., 121 F.R.D. 32, 35 (S.D.N.Y. 1988) (movant must

demonstrate a "clearly defined and very serious injury"); United States v. Exxon Corp., 94 F.R.D.

250, 251 (D.D.C. 1981)("To establish cause under Rule 26(c) the courts have generally required

a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory

statements."(quoting 8 Wright & Miller, Federal Practice and Procedure § 2035 at 265 (1970))).

The "particular and specific demonstration of fact" required must include a case-by-case

factual analysis of the "circumstances surrounding each counsel's actual activity and relationship

with the party represented, without regard to whether a particular counsel is in-house or

retained." US Steel, 730 F.2d at 1468-69 (denial of in-house counsel access to another party's

sensitive information "cannot rest on a general assumption that one group of lawyers are more

likely or less likely inadvertently to breach their duty under a protective order."); see also

Infosint, 2007 WL 1467784 at *3 ("When conducing an inquiry, courts have adopted a case-by-

case analysis, rather than a category-based exclusion policy.").11

Here, Wi-LAN broadly concludes that each in-house counsel managing this litigation

from twenty Defendants are "competitive decision makers" without offering specific analysis

tailored to a particular person or position. Without qualification, Wi-LAN's proposed "Employee

Bar" applies to "in-house attorneys or other employees of a Receiving party" across all

Defendants, improperly denying access to all in-house counsel, even those whose job duties 11 In U.S. Steel, the Federal Circuit reversed a lower court's denial of access to confidential documents for in-house counsel because the lower court had assumed that in-house counsel was more likely to inadvertently disclose confidential information. The Federal Circuit held that denial or grant of access, "cannot rest on a general assumption that one group of lawyers are more likely or less likely inadvertently to breach their duty under a protective order." Id. at 1469. Instead, courts "must" grant or deny access depending on the "circumstances surrounding each counsel's actual activity and relationship with the party represented, without regard to whether a particular counsel is in-house or retained." Id. at 1468-69.



entail serving in a pure litigation advisory capacity. See R.R. Donnelly & Sons Company v.

Quark, Inc., 2007 WL 61885 (D. Del.) at *1 ("A party's designation as 'in-house counsel' cannot

serve to automatically deny that party access to information deemed confidential."). Such a

categorical restriction violates U.S. Steel and sidesteps the required factual analysis of the

particular roles of in-house counsel and their relationships to the parties. See, e.g., Brown Bag

Software v. Symantec Corp., 960 F.2d 1465, 1471 (9th Cir. 1992) ("examining factually all the

risks and safeguards surrounding inadvertent disclosure by any counsel, whether in-house or

retained" and affirming the magistrate's investigation into "counsel's responsibilities as Brown

Bag's sole legal advisor and personnel manager"); R.R. Donnelley & Sons Co. v. Quark, Inc.,

2007 WL 61885 (D. Del. 2007) (inquiring into Chief Patent Counsel's role in "legal decision

making" and whether such counsel would "report directly to any business person with direct

responsibility for competitive decision-making."); see also Intel Corp v. VIA Technologies, Inc.,

198 F.R.D. 525, 529-531 (N.D. Cal. 2000); ST Sales Tech v. Daimler Chrysler Co., 2008 WL

5634214, at *3-*8 (E.D. Tex. 2008).

B. Wi-LAN Fails To Establish Good Cause For Its Proposed "Employee Bar" Provision

1. Wi-LAN Has Not Established That Defendants' In-House Counsel Are Competitive Decision-Makers

Wi-LAN admits that its Employee Bar would achieve "broader protections" than parties

would otherwise have in "the typical litigation" involving head-to-head competitors, (supra at

19), but Wi-LAN fails to meet its burden to demonstrate that any of defendants' in-house counsel

are in fact competitive decision-makers so as to merit such abnormal protection. See, e.g., US

Steel, 730 F.2d at 1468-69. Wi-LAN merely argues that Defendants' in-house council "are in a

competitive decision making position vis a vis Wi-LAN and its intellectual property" (supra at

8), and that somehow because Wi-LAN is a non-practicing entity, "Defendants' in-house lawyers



are more directly a part of their companies' competitive decision making process" than in normal

patent cases. Supra at 12. But Wi-LAN's conclusory assumption is not supported by any hard

facts, but rather the proposition is that in-house counsel are "competitive" in the sense that they

may be involved in managing and settling this case. Supra at 12-13. If Wi-LAN's unsupported

argument were accepted, virtually any party could argue that in-house (or outside counsel for

that matter) should be barred access to its confidential information because it could be used in a

settlement discussion. Nonetheless, courts commonly allow in-house access to sensitive

business strategy information, despite the fact that such cases may of course at some point settle.

See, e.g. Intervet, Inc. v. Merial Ltd., 241 F.R.D. 55, 55-59 (D.D.C. 2007) ("there is simply no

evidence before me that [the head of intellectual property for the competitor] is a competitive

decision-maker"); Glaxo Inc. v. Genpharm Pharm., Inc., 796 F.Supp. 872, 876 (E.D. N.C. 1992)

(it was improper to preclude in-house counsel from access to confidential information because he

gave no advice to his client about competitive decisions such as pricing, scientific research,

sales, or marketing); Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187 F.R.D. 240, 243-

44 (E.D. Va. 1999) (it was in-house counsel's responsibility to supervise outside counsel in

handling the litigation and she should be granted access to adversary's confidential information

under protective order because she needed the access to effectively supervise outside counsel).

In fact, one purpose of discovery is to encourage settlement. See, e.g., 3Com Corp. v. D-Link

Systems, Inc., 2007 WL 949596 at *4, (N.D. Cal.) ("[D]iscovery of a defendant's financial

situation may facilitate settlement of the action, which is one of the purposes behind the broad

federal discovery rules."); Oakes v. Halvorsen Marine Ltd., 179 F.R.D. 281, 286 (C.D. Cal.

1998) (discovery "is valuable in assisting both sides in making a realistic appraisal of the case,

and may lead to settlement and avoid protracted litigation"); Memry Corp. v. Kentucky Oil



Technology, N.V., 2007 WL 39373 at *5 (N.D. Cal.) (efficient discovery is "needed in most

cases to prepare for trial or make an informed decision about settlement").

Wi-LAN's proposal would also conflict with a prior opinion in this District, in which the

Court permitted one of defendants' in-house counsel (in the present case) access to confidential

information. The court reached this conclusion even though it found the opposing party was a

direct competitor and the in-house counsel testified that as part of her job "she gave [an Intel

business manager] information that would enable him to determine whether the company should

settle the case." Ex. D Broadcom Corp., Order at 5. Similarly, another court allowed the same

Intel counsel access to confidential documents even though she was the "key [plaintiff] decision

maker for this litigation," and permitted her to share "as needed, the contents of confidential

documents" with her superiors. Ex. E, Level One Communications, Inc., Order at 3.

Wi-LAN quotes heavily from Intel Corp v. VIA Technologies for its argument that any

in-house access to Wi-LAN's business strategies will make it "impossible for [Defendants'] in-

house attorneys to avoid even inadvertent disclosure of Wi-LAN's confidential information."

Supra at 12. But Wi-LAN misinterprets that case. In VIA, the defendant (VIA) was Intel's direct

products competitor and, indeed, the "only unlicensed competitor of Intel for chipsets." Id. at

531. As a result, Intel's in-house counsel's work in the area evaluating patents and products and

advising the company on licensing agreements could further Intel's ability to compete against

VIA in the products markets, since VIA was also subject to licensing activities as a products

company.12 Id.

12 Additionally, in the VIA case, unlike here, the party seeking access to confidential documents sought to modify an existing protective order, and thus had the burden to justify access. By contrast, here, Wi-LAN bears the burden of establishing good cause for its proposed "Employee Bar" restriction. In Re Terra Int'l, Inc., 134 F.3d at 306.



2. Wi-LAN Has Not Set Forth a Clearly-Defined Likelihood of Disclosure and Injury

Wi-LAN states that in-house counsel access to its information "will undoubtedly help

Defendants to better compete against Wi-LAN or its licensees." Supra at 10. Wi-LAN provides

no details on how it believes defendants would accomplish this, let alone why in-house counsel

for defendants are likely to inadvertently disclose such information, and thus Wi-LAN does not

meet the requirement of "a particular and specific demonstration of fact, as distinguished from

stereotyped and conclusory statements." Gulf Oil Co., 452 U.S. at 102 n.16; see also Infosint

S.A., v. Lundbeck, 2007 WL 1467784 (S.D.N.Y) at *2 ("More than broad allegations of harm

unsubstantiated by specific examples or articulated reasoning, good cause requires the moving

party to demonstrate that disclosure will work a clearly defined and very serious injury." (citing

Uniroyal Chem. Co. v. Syngenta Crop Prot., 224 F.R.D. 53, 56 (D. Conn. 2004)); MGP

Ingredients, 245 F.R.D. at 501 ("[D]efendants made categorical arguments that they would be

harmed by the disclosure but they really did not discuss in any meaningful detail how they would

suffer the nature or degree of harm that would warrant forcing on plaintiff the far more

cumbersome discovery process that they propose.").

To the contrary, there is little risk of any injury to Wi-LAN for several reasons. First, as

Wi-LAN's Senior Director for Wireless Technologies, Christian Dubuc, testified during

deposition, Wi-LAN offers no devices of any kind. Dubuc Deposition Tr. 119:8-10. With

respect to ongoing design efforts, Mr. Dubuc testified that Wi-LAN's only effort is in the "white

space field," which, as opposed to the accused products in this case, "relates to air waves which

have been made available from the t.v. broadcast channels." Id. at 119:17-120:7. With respect to

the technologies that are at issue in this litigation, Mr. Dubuc testified that Wi-LAN is not



involved in any technology development whatsoever. Id. at 120:22- 121:1 ("Q. Are you

developing any Wi-Fi, WiMAX, or Bluetooth prototypes? A. No").

Second, the parties have agreed that in-house counsel must execute an undertaking that

requires them to abide by the terms of the protective order. See Ex. B, Proposed Protective

Order at Ex. B. The parties further crafted a specific "use" provision prohibiting counsel from

using confidential information for purposes beyond the litigation, including "patent licensing."

Id. at p. 30 § T. In-house counsel are members of the court, and are frequently entrusted to abide

by the terms of protective orders or face heavy consequences under the ethical rules. ST Sales

Tech, 2008 WL 5634214 (E.D. Tex.) at *2.

Third, Wi-LAN has not demonstrated that any particular in-house counsel for defendants

engage in activities that would pose a competitive threat to Wi-LAN. Rather, Courts typically

allow in-house access. Glaxo Inc. v. Genpharm Pharmaceuticals, Inc, 796 F. Supp. 872, 874

(E.D. N.C. 1992) (allowing in-house counsel access to competitor's confidential information

when in-house counsel had "no involvement in and gives no advice to [company] about

competitive decisions such as pricing, scientific research, sales or marketing"); R.R. Donnelley &

Sons Co., 2007 WL 61885 at *1-*2 (D. Del.) (allowing Chief Patent Counsel access to

"attorneys' eyes only" documents when Chief Patent Counsel's role was strictly to "supervise the

legal decision-making related to . . . intellectual property portfolio and its enforcement" and

where Counsel's position does not "report directly to any business person with direct

responsibility for competitive decision-making").

In applying these principles, a court in this District previously held that in-house counsel

for Intel in this case did not engage in "competitive decisionmaking." Ex. D, Broadcom Corp. at

5-6 (Craven, J.) ("She is not a board member or office of the company, and she does not give



business advice. Instead, she is a litigation attorney who advises and participates in issues

regarding litigation. In the Court's opinion, this does not rise to the level necessary to satisfy the

test and definition of 'competitive decisionmaking' outlined above."). In Broadcom, Intel's in-

house counsel would have had access to some of the same types of non-privileged Broadcom

information to which Wi-LAN seeks to restrict access to here. Id. Wi-LAN provides no

justification for why its risk of injury should ban Intel's in-house counsel from access to Wi-LAN

documents whereas Broadcom – a product supplier – was not entitled to similar protection.13

Contrary to Wi-LAN's assertions, ST Sales Tech, 2008 WL 5634214, does not support

Wi-LAN's position. In ST Sales Tech, the plaintiff was a non-practicing entity associated with

other patent-holding companies with a history of suing the defendants for patent infringement

"over and over as they acquire new patents." Id. at *5. Because plaintiff was in the business of

"acquiring and enforcing patents," the Court was concerned about the "ultimate potential for

damaging use of the [defendant's] confidential information" by using defendants' confidential

product information to develop or acquire intellectual property and use it against the defendants

"through continued litigation." Id. at *7. Thus, the focus in ST Sales Tech was on the plaintiff-

licensing company's use of defendants' confidential information to acquire new patents to assert

against defendants. In stating that "competitor status is not the sole relevant inquiry" under the

13 Wi-LAN asserts that it is unfair for defendants' in-house counsel to have access to Wi-LAN confidential information given that it has agreed to not access certain of defendants' confidential information under the "Prosecution Bar." Supra at 4. But Wi-LAN's complaint is unpersuasive. In instances such as this where the plaintiff in a patent case is involved in developing and/or enforcing patents that are related to the defendant's business, federal courts routinely unilaterally limit the plaintiff's access to the defendant's technical trade secrets. See e.g., Northbrook Digital, LLC v. Vendio Services, Inc., No. 07-CV-2250, 2008 WL 2390737 (D. Minn. Jun. 9, 2008); Motorola v. Interdigitial Tech. Corp., 1994 WL 16189689,*4 (D. Del.); Vardon Golf Co. v. BBMG Golf, Ltd., 1991 WL 222258 (N.D. Ill.). Wi-LAN offers no case support for the notion that such restrictions should necessarily be reciprocal. Here, because of Wi-LAN's business model, unique risks of harm to defendants exist that do not apply to Wi-LAN. Wi-LAN essentially concedes this point, as it agreed that the patent prosecution bar should only apply to Wi-LAN, and not defendants.



particular facts present in ST Sales Tech, the Court understandably acknowledged the substantial

risks associated with disclosure of confidential information, such as future product and

marketing plans, to a non-practicing entity who focuses on patent acquisition and assertion. Id.

Nothing in the Court's opinion, however, suggests that a products company's in-house attorneys

may be deemed "competitive decision-makers" in such circumstances.14

C. Wi-LAN's "Employee Bar" Provision Will Unnecessarily Impede Defendants' In-House Counsel Ability To Oversee And Manage This Litigation

In this case, in addition to issues concerning the alleged infringement, invalidity and

unenforceability of the patents-in-suit, numerous other legal and factual issues will be litigated,

including issues regarding technical standards, corporate conduct in standards-setting

organizations, and corporate promises to license on fair, reasonable and non-discriminatory

("FRAND") terms. In circumstances such as these, full participation by defendants' in-house

counsel is routinely permitted. Volvo Penta of the Americas, Inc. v. Brunswick Corp., 187

F.R.D. 240, 243-44 (E.D. Va. 1999) (holding that it was in-house counsel's responsibility to

supervise outside counsel in handling the litigation would be granted access to adversary's

confidential information under protective order because she did not engage in corporation's

competitive decision making and was needed the access to effectively supervise outside

counsel); Intervet, Inc. v. Merial Limited, 241 F.R.D. 55 (D.D.C. 2007) (ruling that accused

infringer's in-house intellectual property counsel would be granted access to confidential

information under protective order where the counsel was an active member of the trial team and 14 Wi-LAN's reliance in note 5 on R.R. Donnelley & Sons Co. v. Quark, Inc., 2007 WL 61885 (D.Del.), is similarly improper. In R.R. Donnelley, the Chief Patent Counsel and the President of Corporate Strategic Initiatives for a non-practicing entity in the business of patent development and licensing were restricted from access to a defendant's confidential information. Nothing in the opinion suggests that defendants' in-house attorneys may be deemed "competitive decision-makers" in such circumstances.



involved in litigation strategy decisions for the case and drafting of briefs). The specialized

mixture of experience and knowledge these attorneys have about both litigation and their inter-

workings of their respective companies make them irreplaceable, including by outside counsel.

Carpenter Technology Corp. v. Armco, Inc., 132 F.R.D. 24, 28 (E.D. Pa. 1990) (allowing access

to confidential information for in-house counsel because "the advice of in-house counsel with

specialized knowledge . . . could be essential to the proper handling of this litigation by outside

counsel"); Volvo Penta of the Americas, Inc., 187 F.R.D. at 242-43 (noting the need for in-house

counsel to provide outside counsel with input and experience "to help make quick tactical

decisions in the instant case").

D. Conclusion

For the foregoing reasons, Defendants respectfully request that the Court enter

Defendants' version of the proposed Protective Order attached as Exhibit B, and deny Wi-LAN's

request for the Court to enter its to its "Employee Bar" provision.

Dated: June 9, 2009 Respectfully submitted,

/s/__Robert M. Parker (w/permission SB)_____

Robert M. Parker (State Bar No. 15498000) PARKER, BUNT & AINSWORTH, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 T: 903.531.3535 F: 903.533.9687 [email protected] ATTORNEYS FOR DEFENDANT INTEL CORPORATION AND BEHALF OF ALL DEFENDANTS



/s/___Sam Baxter__________________________

Samuel Franklin Baxter MCKOOL SMITH P O Box O 104 East Houston St., Suite 300 Marshall, Texas 75670 Telephone: (903) 923-9000 Facsimile: (903) 923-9099 [email protected] Robert A Cote, Jr. MCKOOL SMITH 399 Park Avenue, Suite 3200 New York, New York 10022 Telephone: (212) 402-9495 Facsimile: (212) 402 9444 [email protected] ATTORNEYS FOR PLAINTIFF Wi-LAN INC.

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing Motion was electronically filed in

compliance with Local Rule CV-5(a) and served upon all counsel of record on June 9, 2009.

/s/ Robert A. Cote


EXHIBIT A

Case 2:07-cv-00473-TJW Document 322-2 Filed 06/09/2009 Page 1 of 34


MARSHALL DIVISION WI-LAN, INC.

v.

ACER, INC., et al.

WI-LAN, INC.

v.

WESTELL TECHNOLOGIES, INC., et al.

§ § § § § § § § § § §

CIVIL ACTION NO. 2:07-CV-473 [TJW]

CONSOLIDATED WITH:



PROTECTIVE ORDER

To expedite the flow of discovery material, to facilitate the prompt resolution of disputes

over confidentiality of discovery materials, to adequately protect information the parties are

entitled to keep confidential, to ensure that only materials the parties are entitled to keep

confidential are subject to such treatment, and to ensure that the parties are permitted reasonably

necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R.

Civ. P. 26(c), it is hereby ORDERED THAT:

A. Definitions

1. “Party”: any party to this action, including all of its officers, directors, employees,

consultants, retained experts, and outside counsel (and their support staff).

2. “Material”: all information, documents, testimony, and things produced, served or

otherwise provided in this action by the Parties or by non-parties.

3. “Designating Party”: a Party or non-party that designates information, documents,

or things for production in disclosures, or in responses to discovery as “CONFIDENTIAL”,

PROTECTIVE ORDER 1 Dallas 279576v1


“ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY – SOURCE CODE”, and/or

“SUBJECT TO PROSECUTION BAR.”

4. “CONFIDENTIAL” Material: information, documents, and things the

Designating Party believes in good faith is not generally known to others, and that the

Designating Party (i) would not normally reveal to third parties except in confidence, or has

undertaken with others to maintain in confidence, or (ii) believes in good faith is protected by a

right to privacy under federal or state law, or any other applicable privilege or right related to

confidentiality or privacy.

5. “ATTORNEYS’ EYES ONLY” Material: information, documents, and things

the Designating Party believes in good faith is not generally known to others, and has significant

competitive value such that unrestricted disclosure to others would create a substantial risk of

serious injury, and that the Designating Party (i) would not normally reveal to third parties

except in confidence, or has undertaken with others to maintain in confidence, or (ii) believes in

good faith is significantly sensitive and protected by a right to privacy under federal or state law

or any other applicable privilege or right related to confidentiality or privacy.

6. “ATTORNEYS’ EYES ONLY – SOURCE CODE”: RTL, HDL, microcode, or

other sensitive code (collectively, “SOURCE CODE”) that the Designating Party believes in

good faith is not generally known to others, and has significant competitive value such that

unrestricted disclosure to others would create a substantial risk of serious injury, and that the


undertaken with others to maintain in confidence, or (ii) believes in good faith is significantly

sensitive and protected by a right to privacy under federal or state law, or any other applicable

privilege or right related to confidentiality or privacy. Any document designated as



“ATTORNEYS’ EYES ONLY – SOURCE CODE” information is automatically designated

“SUBJECT TO PROSECUTION BAR,” and shall be treated as provided in Section G Below.

7. “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR

“SUBJECT TO PROSECUTION BAR”: these designations may be used only for

ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party believes

in good faith would create a substantial risk of serious injury if known to in-house attorneys or

other employees of a Receiving Party, including. but not limited to, among the following

categories of documents:

(a) a Designating Party’s source code and other technical documents

describing the structure and operation of the Designating Party’s products;

(b) a Designating Party’s research and development activities; and

(c) a Designating party’s business planning, development, and strategy

documents.

These designations, however, shall not be used for a Designating Party’s sales records

regarding its products, license agreements or related communications with parties to the

agreements. In addition, the “ATTORNEYS’ EYES ONLY - SUBJECT TO EMPLOYEE

BAR” designation shall not be used for any document created prior to January 1, 2006.

8. “Producing Party”: a Party or non-party that produces Material in this action.

9. “Receiving Party”: a Party that receives Material from a Producing Party.

10. “Designated Material”: Material that is designated “CONFIDENTIAL”,

“ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” under

this Order.



11. “Counsel of Record”: (i) outside counsel who appears on the pleadings as counsel

for a Party, (ii) partners, principals, counsel, associates, employees and contract attorneys of such

outside counsel to whom it is reasonably necessary to disclose the information for this litigation,

including supporting personnel employed by the attorneys, such as paralegals, legal translators,

legal secretaries, legal clerks and shorthand reporters, and/or (iii) independent legal translators

retained to translate in connection with this action, or independent shorthand reporters retained to

record and transcribe testimony in connection with this action.

12. “Outside Consultant”: a person with specialized knowledge or experience in a

matter pertinent to the litigation who has been retained by Counsel of Record to serve as an

expert witness, or as a consultant in this action, and who is not a current employee of a Party or

of a competitor of a Party and who, at the time of retention, is not anticipated to become an

employee of a Party or of a competitor of a Party.

13. “Professional Vendors”: persons or entities that provide litigation support services

(e.g., photocopying; videotaping; translating; designing and preparing exhibits, graphics, or

demonstrations; organizing, storing, retrieving data in any form or medium; etc.) and their

employees and subcontractors who have been retained by Counsel of Record in this action, and

who are not current employees of a Party or of a competitor of a Party and who, at the time of

retention, are not anticipated to become employees of a Party or of a competitor of a Party. This

definition includes ESI vendors, professional jury or trial consultants retained in connection with

this litigation, and mock jurors retained by such consultants to assist them in their work.

Professional vendors do not include consultants who fall within the definition of Outside

Consultant.



B. Scope

14. The protections conferred by this Order cover not only Designated Material (as

defined above), but also any information copied or extracted therefrom, as well as all copies,

excerpts, summaries, or compilations thereof. Nothing herein shall alter or change in any way the

discovery provisions of the Federal Rules of Civil Procedure, or the Court’s deadlines provided

in the Docket Control Order and Discovery Order. Identification of any individual pursuant to

this Protective Order does not make that individual available for deposition, or any other form of

discovery outside of the restrictions and procedures of the Federal Rules of Civil Procedure, the

Rules of Practice for Patent Cases before the Honorable T. John Ward, United States District

Court for the Eastern District of Texas (cited as “P.R.”), and the Court’s deadlines provided in

the Docket Control Order and Discovery Order.

C. Access To Designated Material

15. CONFIDENTIAL Material: Unless otherwise ordered by the Court or permitted

in writing by the Designating Party, a Receiving Party may disclose any information, document

or thing designated “CONFIDENTIAL” only to:

(a) Persons who appear on the face of Designated Material as an author,

addressee or recipient thereof;


(c) Up to three (3) employees of a Receiving Party (including a parent

company of a Receiving Party), and necessary secretarial staff, who are

responsible for providing oversight of or assistance in the litigation, who

have signed the “Acknowledgement and Agreement To Be Bound By

Protective Order” attached hereto as Exhibit A, and provided an executed



copy to all Parties prior to receiving Designated Material, however, as to

Designated Material from third parties, absent a court order or agreement

of the third party, Designated Material from third parties may not be

disclosed to employees of a Receiving Party;

(d) If any Receiving Party believes that more than three (3) employees require

access to confidential material, that party may negotiate the issue directly

with the Producing Party;

(e) Outside Consultants of the Receiving Party to whom disclosure is

reasonably necessary for this litigation, and who have signed the

“Acknowledgement and Agreement To Be Bound By Protective Order”

attached hereto as Exhibit A, and the “Certification Of Consultant”

attached hereto as Exhibit B;

(f) Witnesses at deposition and/or trial, provided that such witnesses may not

retain copies of Designated Material unless permitted by other provisions

of this Order;

(g) The Court and its personnel;

(h) Any designated arbitrator or mediator who is assigned to hear this matter,

or who has been selected by the Parties, and his or her staff, who have

signed the “Acknowledgement and Agreement To Be Bound By

Protective Order” attached hereto as Exhibit A, and the “Certification Of

Consultant” attached hereto as Exhibit B;

(i) Court reporters and videographers employed in connection with this case;

and



(j) Professional Vendors to whom disclosure is reasonably necessary for this

litigation, and a representative of which has signed the


attached hereto as Exhibit A.

16. “ATTORNEYS’ EYES ONLY” Material and “ATTORNEYS’ EYES ONLY –

SOURCE CODE” Material: Unless otherwise ordered by the Court or permitted in writing by the

Designating Party, a Receiving Party may disclose any information, documents or things

designated “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE

CODE” Material only to the following, in addition to those identified in Paragraphs 27-28 below

regarding use of Designated Material at depositions:





With respect to a Receiving Party, up to three (3) in-house attorneys (including in-house

foreign patent attorneys) of each Receiving Party or their respective parent companies, and

necessary secretarial staff, having responsibility for providing oversight of or assistance in the

litigation, provided that each such attorney must keep all such documents and information in

segregated files access to which is restricted to the designated attorney and necessary secretarial

staff. The designated in-house attorneys will not have access to any information about any

Defendant Producing Party’s current or future products that are not accused of infringement in

this case and further provided that Defendants’ Receiving Party attorneys shall be allowed to

review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no



circumstances shall Defendants' in-house attorneys or employees be permitted access to or be

allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant,

unless so authorized by the Producing Party. Nothing in this section restricts designated in-

house attorneys' access to information concerning their own companies' current or future

products. The “Acknowledgement and Agreement To Be Bound By Protective Order” attached

hereto as Exhibit A must be executed by each such attorney and provided to all parties prior to

receiving Designated Material. Defendant Buffalo Technology (USA), Inc., which does not have

in-house counsel, may substitute up to two (2) employees and their necessary secretarial staff of

Buffalo, Inc. or its parent company having responsibility for providing oversight of or assistance

in the litigation, who have signed the “Acknowledgement and Agreement To Be Bound By

Protective Order” attached hereto as Exhibit A, and provided an executed copy to all parties prior

to receiving Designated Material. The substituted employees shall have the same duties and

obligations of in-house counsel who are designated under this paragraph. Defendants Sony

Electronics, Inc. and Sony Computer Entertainment America, Inc. may each substitute up to two

(2) employees of their parent companies and their necessary secretarial staff having

responsibility for providing oversight of or assistance in the litigation, who have signed the

“Acknowledgement and Agreement To Be Bound By Protective Order” attached hereto as

Exhibit A, and provided an executed copy to all parties prior to receiving Designated Material.

The substituted employees shall have the same duties and obligations of in-house counsel who

are designated under this paragraph;

With respect to Designated Material from third parties or for which third party

permission is required for production, absent a court order or agreement of the third party, such

Designated Material may not be disclosed to employees of a Receiving Party;



This subparagraph (c) does not apply to "ATTORNEYS' EYES ONLY – SOURCE

CODE," “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR “SUBJECT

TO PROSECUTION BAR.”

(a) Outside Consultants of the Receiving Party to whom disclosure is





(b) The Court and its personnel;

(c) Any designated arbitrator or mediator who is assigned to hear this matter,

or who has been selected by the Parties, and his or her staffs, who have




(d) Court reporters and videographers employed in connection with this case;

and

(e) Professional Vendors to whom disclosure is reasonably necessary for this




“ATTORNEYS’ EYES ONLY” Material cannot be hosted on any system outside the

firewall of a firm representing the Receiving Party, or outside the system of a professional ESI

Vendor retained by Counsel of Record of the Receiving Party. “ATTORNEYS’ EYES ONLY”



Material also cannot be sent or transmitted to any person, location, or vendor outside of the

United States except to Counsel of Record and Outside Consultants designated in subparagraph

(c) above. To the extent that any “ATTORNEYS’ EYES ONLY” Material is transmitted from or

to authorized recipients outside of the Receiving Party’s Outside Counsel’s office, or outside of

the ESI Vendor’s system, the transmission shall be by hand (and encrypted if in electronic

format), by a secure transport carrier (e.g., Federal Express), or by encrypted electronic means.

17. Each person to whom Designated Material may be disclosed, and who is required

to sign the “Acknowledgement and Agreement To Be Bound By Protective Order” attached

hereto as Exhibit A and, if applicable, the “Certification Of Consultant” attached hereto as

Exhibit B, shall do so, prior to the time such Designated Material is disclosed to him or her.

Counsel for a Party who makes any disclosure of Designated Material shall retain each original

executed certificate and, upon written request, shall provide copies to counsel to all other Parties

at the termination of this action.

18. At the request of the Designating Party, persons not permitted access to

Designated Material under the terms of this Protective Order shall not be present at depositions

while the Designating Party’s Designated Material is discussed or otherwise disclosed. Pre-trial

and trial proceedings shall be conducted in a manner, subject to the supervision of the Court, to

protect Designated Material from disclosure to persons not authorized to have access to such

Material. Any Party intending to disclose or discuss Designated Material at pretrial or trial

proceedings must give advance notice to assure the implementation of the terms of this

Protective Order.



D. Access By Outside Consultants

19. Notice. If a Receiving Party wishes to disclose another Party’s Designated

Material to any Outside Consultant, such Receiving Party must provide notice to counsel for the

Designating Party, which notice shall include: (a) the individual’s name and business title; (b)

business address; (c) business or profession; (d) the individual’s CV; (e) any previous or current

relationship (personal or professional) with any of the parties; (f) a list of other cases in which

the individual has testified (at trial or deposition) within the last six years; (g) a list of all

companies with which the individual has consulted or by which the individual has been

employed within the last four years; and (h) a signed copy of the “Acknowledgement and

Agreement To Be Bound By Protective Order” attached as Exhibit A, and the “Certification Of

Consultant” attached hereto as Exhibit B.

20. Objections. The Designating Party shall have five (5) business days from receipt

of the notice specified in Paragraph 18 to object in writing to such disclosure (plus three (3) extra

days if notice is given other than by hand delivery, e-mail transmission or facsimile

transmission). Any such objection must set forth in detail the grounds on which it is based. After

the expiration of the 5-day (plus 3-days, if appropriate) period, if no objection has been asserted,

then Designated Material may be disclosed to the Outside Consultant pursuant to the terms of

this Order. However, if the Designating Party objects within the 5-day (plus 3-days, if

appropriate) period, the Receiving Party may not disclose Designated Material to the challenged

individual absent resolution of the dispute or Court Order. In the event the Designating Party

makes a timely objection, the parties shall promptly meet and confer to try to resolve the matter

by agreement. If the parties cannot reach an agreement, the Objecting Party may, within three (3)

business days following the meet and confer, file a motion for a protective order preventing



disclosure of Designated Material to the Outside Consultant, or for other appropriate relief. If the

objecting party fails to file a motion for protective order within the prescribed period, any

objection to the Outside Consultant is waived, and Designated Material may thereafter be

disclosed to such individual (upon signing the “Acknowledgement and Agreement To Be Bound

By Protective Order” attached hereto as Exhibit A). If the Objecting party files a timely motion

for a protective order, Designated Material shall not be disclosed to the challenged individual

until and unless a final ruling allowing such disclosure is made by this Court, or by the consent

of the Objecting party, whichever occurs first.

E. Production of ATTORNEYS’ EYES ONLY – SOURCE CODE Material

21. Source code.

(a) Unless otherwise agreed to in writing between the Producing Party and the

Receiving Party or otherwise produced by the Producing Party directly to

the Receiving Party, if SOURCE CODE designated as “ATTORNEYS’

EYES ONLY - SOURCE CODE” is to be made available for inspection,

SOURCE CODE designated as “ATTORNEYS’ EYES ONLY –

SOURCE CODE” shall only be provided, upon request, on at least three

stand-alone computers (that is, computers not connected to a network,

Internet or a peripheral device) at secure locations, to be made available

during regular business hours (9:00 am to 5:00 pm, local time) on

reasonable notice of at least two business days, absent exigent

circumstances or otherwise agreed to by the Producing Party. The parties

agree to provide access from 5:00 p.m. through midnight local time on

weekdays and will meet and confer individually in good faith to provide



such access. Upon reasonable notice, the parties agree to provide

reasonable access to secure locations on Saturdays and Sundays and will

meet and confer individually in good faith to provide such access. The

Receiving Party is expected and agrees to make reasonable efforts to

restrict its access to normal business hours except where necessary to

accommodate the work schedules of its source code reviewers. The

Producing Party is expected and agrees to reasonably permit after hours

and weekend access to accommodate such circumstances. At the

Producing Party’s selection, the secure locations will be either in

California, Texas, and/or New York. The secure locations will be at the

offices of Counsel of Record, the offices of the producing party, or an

escrow facility. If the production of source code is at an escrow facility,

all reasonable costs associated therewith will be shared equally between

the Receiving Party and the Producing Party other than costs associated

with software for reviewing the source code which shall be paid for by the

party requesting such software. If the production of source code is at a

location other than an escrow facility, the costs associated with software

for reviewing the SOURCE CODE shall be paid for by the party

requesting such software. Upon written request by the Receiving Party,

beginning one week prior to the beginning of trial and continuing through

the end of trial, access to the source code must be provided under the same

conditions and with the same limitations and restrictions as provided in

this Paragraph in Marshall, Texas.



(b) The Receiving Party (including all experts, consultants, lawyers retained

by the Receiving Party who may review the source code under this

Protective Order) may use and, to the extent necessary, load onto the

secure computer(s) searching or analytical tools for inspection of the

source code, so long as the searching or other analytical tools for

inspection of the source code is disclosed by the Requesting Party at least

two (2) business days in advance of the inspection, providing however that

the Producing Party reserves all objections to any such searching or

analytical tools. The Receiving Party may create a back-up copy of the

source code on the stand-alone computer(s). The searching or analytical

tools may annotate, number the lines of, and label the pages of, the back-

up copy of the code. Any back-up copies will remain on the stand-alone

computer(s) and be subject to all of the provisions of this Protective Order.

The Receiving Party is permitted to use a laptop computer to take notes,

record observations, etc., so long as the laptop computer is never

connected to the stand-alone computer(s) and is not used to record the

source code itself.

(c) The Producing Party must enable the Receiving Party to print paper copies

of code at the time of inspection by the Receiving Party. Furthermore, the

parties will also exchange (by hand delivery or overnight delivery) copies

of the paper copies of source code to be used as exhibits for court

proceedings, expert reports, and at depositions, when so used. These

additional copies will be treated the same as the original print outs.



22. The Producing Party will produce source code in computer searchable format at

the secure location in the manner described above in Paragraph 20, but need not produce

executable code, unless requested by the Receiving Party. The Producing Party also need not

produce prior versions of the source code, unless requested by the Receiving Party. All source

code produced shall be organized in one or more separate directories corresponding to accused

product(s) and/or accused model numbers or in the same directory structure as the source code is

kept and/or compiled in the ordinary course of business. Further, to the extent files for one

particular version of source code are grouped together in a single folder in the ordinary course of

the Producing Party's business, the Producing Party shall produce the source code in that manner.

If, for any reasons, source code files are not produced for review, but, in the Receiving Party’s

sole determination, such missing source code is deemed to be necessary to understand the

operation of the accused products, the parties agree to promptly meet and confer over the

production of any and all missing source code files requested by the Receiving Party in a timely

manner in the format described above. The Producing Party shall not undertake any effort to

determine which pages or portions of source code have been reviewed. The Producing Party

shall not videotape the actual review of the source code by the Receiving Party. The Producing

Party is permitted to audit the review of the source code by the Receiving Party from time to

time with reasonable advance notice (e.g., a knock on the door of the room at the secure

location), but will not interfere with any work-product or listen to other private communications

between the Receiving Party reviewing the source code.

23. The Producing Party will enable the Receiving Party to print paper copies of

specific portions of SOURCE CODE designated as “ATTORNEYS’ EYES ONLY – SOURCE

CODE” at the time of inspection by the Receiving Party, which the Receiving Party may take



when completing an inspection. The Producing Party shall maintain a SOURCE CODE Access

Log identifying, for each and every time any SOURCE CODE is viewed, or accessed at the

secure location: (1) the name of each person who accessed the SOURCE CODE; (2) the date

and time of access; (3) the length of time of access; and (4) whether any hard copies of any

portion of SOURCE CODE were printed. Upon printing, the Producing Party shall promptly

Bates label the printed portions of the code and provide a copy to the Receiving Party. The

Producing Party shall also retain copies of any portions of SOURCE CODE printed. The entire

code or an unnecessarily large portion of the code shall not be printed. The Receiving Party shall

maintain a log of all files that are printed or photocopied. Paper copies of SOURCE CODE

designated as “ATTORNEYS’ EYES ONLY – SOURCE CODE” shall include Bates number

and confidentiality labels when printed. The Receiving Party or Outside Consultants of the

Receiving Party shall keep the printouts or photocopies in a secured locked area in the office of

the Counsel of Record when not in use. The Receiving Party and Outside Consultants may also

temporarily keep the printouts or photocopies at: (i) the sites where any depositions relating to

the SOURCE CODE are taken for the dates associated with the taking of the deposition; (ii) the

Court; or (iii) any intermediate location reasonably necessary to transport the information (e.g., a

hotel prior to a deposition).

F. Financial Summaries

24. For the mutual convenience of the parties, a Producing Party may generate certain

financial summaries for the purpose of this litigation. To the extent a Producing Party produces

such financial summaries in a digital format (e.g., PDF, TIFF, Word, or Excel file), or to the

extent a Receiving Party puts any such financial summary or the information from any such

financial summary into a document in a digital format, the Receiving Party shall password



protect that document on an encrypted media. To the extent that any such financial summaries

are transmitted from or to authorized recipients outside of the Receiving Party’s Outside

Counsel’s office, the transmission shall be by hand, by a secure transport carrier (e.g., Federal

Express), or by encrypted electronic means.

G. Prosecution Bar

25. Unless otherwise agreed to in writing between a Producing Party and a Receiving

Party, Wi-LAN employees, officers, directors, in-house counsel, experts or consultants who

personally receive any material designated “ATTORNEYS’ EYES ONLY – SOURCE CODE”

or “SUBJECT TO PROSECUTION BAR” by a Producing Party, and labeled as such by the

Producing Party, shall not participate in or be responsible for Wi-LAN for preparation or

prosecution before a Patent Office of any patent, patent application, or for drafting or revising

patent claims (excluding such activities conducted in the context of post-grant adversarial

proceedings including reexamination or opposition proceedings filed in relation to the patents-in-

suit or foreign counterparts) directed to wireless or RF communications, DSL, integrated circuits,

semiconductors, microchips or microprocessors of any type, or products incorporating those

items, from the time of receipt of such material through and including one (1) year following the

first to occur of (i) the complete resolution of this case through entry of a final non-appealable

judgment or order for which appeal has been exhausted; (ii) the complete settlement of all claims

against the Producing Party in this action; or (iii) the individual person(s) cease to represent the

Receiving Party or respective client in this case. Nothing in this Paragraph 24 alters any

obligations or restrictions set forth in Paragraph 25 below.



H. Use Of Designated Material

26. Use Of Designated Material By Receiving Party. Unless otherwise ordered by the

Court, or agreed to in writing by the Parties, all Designated Material, and all information derived

therefrom, shall be used by the Receiving Party only for purposes of this litigation, and shall not

be used in any other way, or for any other purpose, including the acquisition, preparation or

prosecution before the Patent Office of any patent, patent application, for drafting or revising

patent claims, or in connection with patent licensing. Information contained or reflected in

Designated Materials shall not be disclosed in conversations, presentations by parties or counsel,

in court or in other settings that might reveal Designated Material, except in accordance with the

terms of this Order.

27. Use Of Designated Material By Designating Party. Nothing in this Order shall

limit any Designating Party’s use of its own documents and information, nor shall it prevent the

Designating Party from disclosing its own confidential information, documents or things to any

person. Such disclosure shall not affect any designations made pursuant to the terms of this

Order, so long as the disclosure is made in a manner that is reasonably calculated to maintain the

confidentiality of the information.

28. Use of Designated Material at Depositions. Except as may be otherwise ordered

by the Court, any person may be examined as a witness at depositions and trial, and may testify

concerning all Designated Material of which such person has prior knowledge, without in any

way limiting the generality of the following

(a) A present director, officer, employee, designated Rule 30(6)(b) witness,

and/or Outside Consultant of a Producing Party may be examined, and



may testify concerning all Designated Material that has been produced by

that party;

(b) A former director, officer, agent and/or employee of a Producing Party

may be interviewed, examined and may testify concerning all Designated

Material of which he or she has prior knowledge, including any

Designated Material that refers to matters of which the witness has

personal knowledge, that has been produced by that Party and that pertains

to the period or periods of his or her employment; and

(c) Non-parties may be examined or may testify concerning any document

containing Designated Material of a Producing Party that appears on its

face, or from other documents or testimony, to have been received from,

or communicated to, the non-party as a result of any contact or

relationship with the Producing Party, or a representative of such

Producing Party. Any person other than the witness, his or her attorney(s),

and any person qualified to receive Designated Material under this Order,

shall be excluded from the portion of the examination concerning such

information, unless the Producing Party consents to persons other than

qualified recipients being present at the examination. If the witness is

represented by an attorney who is not qualified under this Order to receive

such information, then prior to the examination, the attorney shall be

requested to sign the “Acknowledgement and Agreement To Be Bound By

Protective Order” attached as Exhibit A. In the event that such attorney

declines to sign the Acknowledgement and Agreement To Be Bound By



Protective Order prior to the examination, the parties, by their attorneys,

shall jointly seek a protective order from the Court prohibiting such

attorney from disclosing such Designated Material.

29. A witness who previously had access to a document designated “ATTORNEYS’

EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” but who is not under a

present non-disclosure agreement with the Producing Party that covers that document, may be

shown the document if the witness is advised on the record of the existence of the Protective

Order and that the protective order requires the parties to keep confidential any questions,

testimony or documents that are designated as “CONFIDENTIAL”, “ATTORNEYS’ EYES

ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The witnesses may not copy,

take notes on or retain copies of any Designated Material used or reviewed at the deposition. The

witness may not take out of the deposition room any exhibit that is marked “CONFIDENTIAL”,

“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE”. The

Producing Party of any Designated Material used at the deposition may also require that the

transcript and exhibits not be copied by the witness or his counsel, that no notes may be made of

the transcript or the exhibits, and that the transcript and exhibits may only be reviewed by the

witness in the offices of one of the counsel representing a party in this case (or another firm

acting for one of the counsel representing a party in this case and under the supervision of one of

the lawyers who is bound by the terms of this Order). The restrictions in the paragraph apply

only to a witness who is not subject to this Order.

I. Procedure for Designating Materials

30. Subject to the limitations set forth in this Order, a Designating Party may:

designate as “CONFIDENTIAL” information that the Designating Party believes, in good faith,



meets the definition set forth in Paragraph 4 above; designate as “ATTORNEYS’ EYES ONLY”

information that it believes, in good faith, meets the definition set forth in Paragraph 5 above;

designate as “ATTORNEYS’ EYES ONLY – SOURCE CODE” information that it believes, in

good faith, meets the definition set forth in Paragraph 6 above; and designate as “SUBJECT TO

PROSECUTION BAR” information that it believes, in good faith, meets the definition set forth

in Paragraph 24 above.

31. Except as provided above in Section E with respect to “ATTORNEYS’ EYES

ONLY – SOURCE CODE” Material, any material (including physical objects) made available

for initial inspection by counsel for the Receiving Party prior to producing copies of selected

items shall initially be considered, as a whole, to constitute “ATTORNEYS’ EYES ONLY”

information, and shall be subject to this Order. Thereafter, the Producing Party shall have ten

(10) calendar days from the inspection to review and designate the appropriate documents as

“CONFIDENTIAL,” “ATTORNEYS’ EYES ONLY” and/or “SUBJECT TO PROSECUTION

BAR” prior to furnishing copies to the Receiving Party.

32. Except as otherwise provided in this Order or as otherwise stipulated or ordered,

Material that qualifies for protection under this Order must be designated in accordance with this

Section I before the Material is disclosed or produced.

33. Designation in conformity with this Order shall be made as follows:

(a) For information in documentary form (apart from transcripts of

depositions, or other pretrial or trial proceedings), the Producing Party

shall affix the legend “CONFIDENTIAL”, “ATTORNEYS’ EYES

ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and, if



appropriate, “SUBJECT TO PROSECUTION BAR”, on each page that

contains Designated Material.

(b) For testimony given in deposition, or in other pretrial or trial proceedings,

the Designating Party shall specify any portions of the testimony that it

wishes to designate as “CONFIDENTIAL”, “ATTORNEYS’ EYES

ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if

appropriate, “SUBJECT TO PROSECUTION BAR.” In the case of

depositions, the Designating Party may also designate any portion of a

deposition transcript as “CONFIDENTIAL,” “ATTORNEYS’ EYES

ONLY,” or “ATTORNEYS’ EYES ONLY – SOURCE CODE,” and, if

appropriate, “SUBJECT TO PROSECUTION BAR” by informing the

reporter, and opposing Parties, in writing within thirty (30) calendar days

of completion of the deposition of the designations to be applied. All

deposition transcripts not marked at least “CONFIDENTIAL” during the

deposition will nonetheless be treated as “CONFIDENTIAL” until the

thirty (30) day period has expired. Transcript pages containing Designated

Material must be separately bound by the court reporter, who must affix to

the top of each such page the legend “CONFIDENTIAL”,

“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –

SOURCE CODE”, and, if appropriate, “SUBJECT TO PROSECUTION

BAR,” as instructed by the Designating Party.

(c) For information produced in some form other than documentary, and for

any other tangible items, the Producing Party shall affix in a prominent



place on the exterior of the container or containers in which the

information or thing is stored the legend “CONFIDENTIAL”,


SOURCE CODE” and if appropriate, “SUBJECT TO PROSECUTION

BAR”.

(d) The provisions of subparagraphs 32(a)-(c) do not apply to documents

produced in native format. For documents produced in native format, the

parties shall provide written notice to the Receiving Party of any

confidentiality designations at the time of production.

J. No Waiver of Privilege

34. Subject to the provisions of Federal Rule of Evidence 502, inspection or

production of documents (including physical objects) shall not constitute a waiver of the

attorney-client privilege, work product immunity, or any other applicable privilege or immunity,

if, after the Producing Party becomes aware of any such disclosure, the Producing Party

designates any such documents as within the attorney-client privilege, work product immunity or

any other applicable privilege or immunity, and requests in writing return of such documents to

the Producing Party. Upon request by the Producing Party, the Receiving Party shall

immediately retrieve and return all copies of such document(s). Nothing herein shall prevent the

Receiving Party from challenging the propriety of the attorney-client privilege, work product

immunity or other applicable privilege or immunity designation by submitting a written

challenge to the Court; provided, however, that such challenge shall not assert as a ground for

challenge the fact of the initial production or inspection of the documents later designated as

attorney-client privileged, work product, or subject to another applicable privilege or immunity.



K. Inadvertent Failure To Designate

35. An inadvertent failure to designate qualified information, documents or things as

“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, “ATTORNEYS’ EYES ONLY –

SOURCE CODE,” or “SUBJECT TO PROSECUTION BAR” does not, standing alone, waive

the Designating Party’s right to secure protection under this Order for such material. Upon

discovery of an inadvertent failure to designate, a Producing Party may notify the Receiving

Party in writing that the material is to be designated as “CONFIDENTIAL”, “ATTORNEYS’

EYES ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if appropriate,

“SUBJECT TO PROSECUTION BAR”. Upon receipt of such notice, the Receiving Party must

make reasonable efforts to assure that the material is treated in accordance with the terms of this

Order, subject to the right to challenge the propriety of such designation(s). The Producing Party

shall provide substitute copies of documents bearing the confidentiality designation.

L. Filing Designated Material

36. Without written permission from the Designating Party or a Court Order secured

after appropriate notice to all interested persons, a Party may not file in the public record in this

action any Designated Material, but must file such Designated Material under seal in

conformance with the Court’s rules and procedures. Material filed under seal shall bear the title

of this matter, an indication of the nature of the contents of such sealed filing, the words

“CONFIDENTIAL INFORMATION – UNDER PROTECTIVE ORDER”, “ATTORNEYS’

EYES ONLY INFORMATION - UNDER PROTECTIVE ORDER”, or “ATTORNEYS’ EYES

ONLY – SOURCE CODE INFORMATION – UNDER PROTECTIVE ORDER”, as

appropriate, and a statement substantially in the following form:



This filing contains confidential information filed in this case by (name of party) and its

contents shall not be displayed or revealed except by order of the Court presiding over this

matter.

M. Challenges to Confidentiality Designations

37. The Parties will use reasonable care when designating documents or information

as “CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY”, or “ATTORNEYS’ EYES ONLY –

SOURCE CODE” and “SUBJECT TO PROSECUTION BAR”. Nothing in this Order shall

prevent a Receiving Party from contending that any or all documents or information designated

as CONFIDENTIAL Material, ATTORNEYS’ EYES ONLY Material, or “ATTORNEYS’

EYES ONLY – SOURCE CODE” Material and “SUBJECT TO PROSECUTION BAR”

Material have been improperly designated. A Receiving Party may, at any time, request that the

Producing Party cancel or modify the confidentiality designation with respect to any document

or information contained therein.

38. A Party shall not be obligated to challenge the propriety of a “CONFIDENTIAL”,

“ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and

“SUBJECT TO PROSECUTION BAR” designation at the time made, and the failure to do so

shall not preclude a subsequent challenge thereto. Such a challenge shall be written, shall be

served on counsel for the Producing Party, and shall identify particularly the documents or

information that the Receiving Party contends should be differently designated. The parties shall

use their best efforts to resolve promptly and informally such disputes in accordance with all

applicable rules including Local Rule CV-7. If agreement cannot be reached, the Receiving Party

shall request that the Court cancel or modify a “CONFIDENTIAL”, “ATTORNEYS’ EYES



ONLY”, or “ATTORNEYS’ EYES ONLY – SOURCE CODE” and if applicable, “SUBJECT

TO PROSECUTION BAR” designation.

N. Protected Material Subpoenaed or Ordered Produced In Other Litigation

39. If a Receiving Party is served with a subpoena or a court order that would compel

disclosure of any information, documents or things designated in this action as

“CONFIDENTIAL”, “ATTORNEYS’ EYES ONLY” or “ATTORNEYS’ EYES ONLY –

SOURCE CODE”, the Receiving Party must so notify the Designating Party, in writing (by fax

and email) promptly, and in no event more than ten (10) calendar days after receiving the

subpoena or order. Such notification must include a copy of the subpoena or order. The

Receiving Party also must immediately inform, in writing, the party who caused the subpoena or

order to issue that some or all of the material covered by the subpoena or order is subject to this

Protective Order. In addition, the Receiving Party must deliver a copy of this Protective Order

promptly to the party in the other action that caused the subpoena or order to issue. The purpose

of imposing these duties is to alert the interested parties to the existence of this Protective Order

and to afford the Designating Party in this case an opportunity to try to protect its confidentiality

interests in the court from which the subpoena or order issued. The Designating Party shall bear

the burdens and the expenses of seeking protection in that court of its Designated Material.

Nothing in these provisions should be construed as authorizing or encouraging a Receiving Party

in this action to disobey a lawful directive from another court.

O. Unauthorized Disclosure Of Designated Material

40. If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

Designated Material to any person or in any circumstance not authorized under this Order, the

Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized



disclosures, (b) use its best efforts to retrieve all copies of the Designated Material, (c) inform the

person or persons to whom unauthorized disclosures were made of all the terms of this Order,

and (d) request such person or persons to execute the “Acknowledgment and Agreement to Be

Bound” that is attached hereto as Exhibit A.

P. Non-Party Use of this Protective Order

41. A non-party that produces Material voluntarily, or pursuant to a subpoena or a

court order, may designate such Material in the same manner, and shall receive the same level of

protection under this Protective Order, as any Party to this lawsuit.

42. A non-party’s use of this Protective Order to protect its “CONFIDENTIAL”

Material, “ATTORNEYS’ EYES ONLY” Material, or “ATTORNEYS’ EYES ONLY –

SOURCE CODE” Material does not entitle that non-party access to “CONFIDENTIAL”


SOURCE CODE” Material produced by any Party in this case.

Q. Discovery from Outside Consultants

43. Testifying experts’ draft reports, notes, and outlines of draft reports shall not be

subject to discovery in this case, nor shall any such drafts, notes or outlines of draft reports that

the testifying expert prepared in other cases be subject to discovery in this case.

44. Discovery of materials provided to testifying experts shall be limited to those

materials, facts, consulting expert opinions, and other matters actually relied upon by the

testifying expert in forming his or her final report, trial or deposition testimony, or any opinion in

this case. No discovery can be taken from any consulting expert who does not testify, except to

the extent that consulting expert has provided information, opinions or other materials to a



testifying expert, who then relies upon such information, opinions or other materials in forming

his or her final report, trial or deposition testimony or any opinion in this case.

45. No conversations or communications between Counsel of Record and any

testifying or consulting expert will be subject to discovery unless the conversations or

communications are relied upon by such experts in formulating opinions that are presented in

reports, trial or deposition testimony in this case.

46. Materials, communications (including email) and other information exempt from

discovery under the foregoing Paragraphs shall be treated as attorney-work product for the

purposes of this litigation and Protective Order.

R. Communications between Party and Counsel of Record

47. The parties agree that the following privileged or protected communications

occurring on or after January 1, 2007, need not be recorded on the party’s privilege log or

produced in this case except as required under Patent Local Rule 3-7:

(a) communications solely between Wi-LAN and its outside or in-house

counsel regarding litigation or potential litigation over the patents-in-suit

in which Wi-LAN became a party, or litigation or potential litigation over

any other patents allegedly owned or asserted by Wi-LAN; and

(b) communications solely

(1) between a Defendant (or its respective parent company) and its outside counsel;

(2) between in-house counsel for a Defendant (or its respective parent company) and that Defendant (or its parent company); or

(3) among in-house or outside counsel for Defendants (or their respective parent companies);



regarding litigation or potential litigation over the patents-in-suit in which the communicating

Defendants became parties, or litigation or potential litigation over any other patents allegedly

owned or asserted by Wi-LAN.

The above agreements are without prejudice to any party’s ability to make a

particularized request for a limited log relating to specific documents, upon an appropriate

showing of potential discoverability of the documents over privilege or protection objections.

S. Duration

48. Even after the termination of this action, the confidentiality obligations imposed

by this Order shall remain in effect until a Designating Party agrees otherwise in writing or a

court order otherwise directs.

T. Final Disposition

49. Unless otherwise ordered or agreed in writing by the Producing Party, within

sixty (60) calendar days after the final termination of this action, each Receiving Party must

destroy or return, at the Producing Party’s request, all Designated Material to the Producing

Party. As used in this Paragraph, “all Designated Material” includes all copies, abstracts,

compilations, summaries or any other form of reproducing or capturing any of the Designated

Material. The Receiving Party must submit a written confirmation of the return or destruction to

the Producing Party (and, if not the same person or entity, to the Designating Party) by the 60-

day deadline. Notwithstanding this provision, Counsel of Record may retain an archival copy of

all pleadings, motion papers, deposition transcripts (including exhibits), transcripts of other

proceedings (including exhibits), expert reports (including exhibits), discovery requests and

responses (including exhibits), exhibits offered or introduced into evidence at trial, legal

memoranda, correspondence or attorney work product, even if such materials contain Designated



Material. Any such archival copies that contain or constitute Designated Material remain subject

to this Protective Order as set forth in Section R (Duration), above.

U. Miscellaneous

50. Any of the notice requirements herein may be waived, in whole or in part, but

only by a writing signed by the Counsel of Record for the Party against whom such waiver will

be effective.

51. This Order is entered without prejudice to the right of any Party to apply to the

Court at any time for modification of this Order, when convenience or necessity requires.

Nothing in this Order abridges the right of any person to seek to assert other objections. No Party

waives any right it otherwise would have to object to disclosing or producing any information,

documents, or things on any ground not addressed in this Protective Order. Similarly, no Party

waives any right to object on any ground to the use in evidence of any of the material covered by

this Protective Order. The Court shall take appropriate measures to protect Designated Material

at trial and any hearing in this case.

52. This Order shall not diminish any existing obligation or right with respect to

Designated Material, nor shall it prevent a disclosure to which the Designating Party consents in

writing before the disclosure takes place.

53. The United States District Court for the Eastern District of Texas, Marshall

Division, is responsible for the interpretation and enforcement of this Protective Order. All

disputes concerning Designated Material produced under the protection of this Protective Order

shall be resolved by the United States District Court for the Eastern District of Texas, Marshall

Division. Every individual who receives any Designated Material agrees to subject himself or



herself to the jurisdiction of this Court for the purpose of any proceedings related to performance

under, compliance with, or violation of this Order.

SIGNED this ___ day of ______, 2009.

________________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE



EXHIBIT A

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND BY PROTECTIVE ORDER

I, __________________________________________ [print or type full name], state:

1. My business address is ;

2. My present employer is ;

3. My present occupation or job description is ;

4. I agree to keep confidential all information provided to me in the matter of Wi-

LAN Inc. v. Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) in the United States

District Court for the Eastern District of Texas, Marshall Division, in accordance with the

restrictions in the Protective Order, and to be subject to the authority of that Court in the event of

any violation or dispute related to this Protective Order.

5. I have been informed of and have reviewed the Protective Order entered in this

case, and I will not divulge any information, documents or things that are subject to the

Protective Order except in accordance with the provisions of the Order;

6. I state under penalty of perjury under the laws of the United States of America

that the foregoing is true and correct.

Executed on _______________.

________________________________________ [Printed name] ________________________________________ [Signature]

PROTECTIVE ORDER, Exhibit A Dallas 279576v1


EXHIBIT B

CERTIFICATION OF CONSULTANT

I, _______________________________________________ [print or type full name], of

_____________________________________________ am not an employee of the Party who

retained me or of a competitor of the opposing Party and will not use any information,

documents, or things that are subject to the Protective Order in the matter of Wi-LAN Inc. v.

Acer, Inc., et al., Civil Action No. 2-07CV-473 (E.D. Tex.) for any purpose other than this

litigation. If at any time after I execute this Certificate of Consultant and during the pendency of

the Action and my retention, I decide to accept employment by a competitor of the opposing

Party, I will promptly (before I become employed) inform the counsel for the party who retained

me in the Action and the opposing party, and I will not thereafter review any Designated

Materials marked by the opposing Party as “ATTORNEYS’ EYES ONLY” unless and until the

Parties agree or the Court orders otherwise.

I state under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct.

Executed on __________________.


PROTECTIVE ORDER, Exhibit B Dallas 279576v1


EXHIBIT B



MARSHALL DIVISION

WI-LAN, INC.

v.

ACER, INC., et al.

WI-LAN, INC.

v.


§ § § § § § § § § § §


CONSOLIDATED WITH:



PROTECTIVE ORDER







A. Definitions




































7. “SUBJECT TO PROSECUTION BAR”: this designation may be used only for









documents. This designations, however, shall not be used for a

Designating Party’s sales records regarding its products,license

agreements or related communications with parties to the agreements.





this Order.
























Consultant.

B. Scope









































of this Order;








and
















(c) For “ATTORNEYS’ EYES ONLY” material:









review only ATTORNEYS’ EYES ONLY information produced by Wi-LAN and that under no

circumstances shall Defendants’ in-house attorneys or employees be permitted access to or be

allowed to review ATTORNEYS’ EYES ONLY information produced by any other Defendant,


house attorneys’ access to information concerning their own companies’ current or future






















This subparagraph (c) does not apply to “ATTORNEYS’ EYES ONLY - SOURCE

CODE” material OR “SUBJECT TO PROSECUTION BAR.”















and






























Protective Order.





































21. Source code.

























































source code itself.

















the Producing Party’s business, the Producing Party shall produce the source code in that

manner. If, for any reasons, source code files are not produced for review, but, in the Receiving

Party’s sole determination, such missing source code is deemed to be necessary to understand the












































G. Prosecution Bar










































that party;






































































































BAR”.















































matter.






























































































regarding litigation or potential litigation over the patents-in-suit in which

the communicating Defendants became parties, or litigation or potential

litigation over any other patents allegedly owned or asserted by Wi-LAN.




S. Duration





















U. Miscellaneous



be effective.






















_______________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE



EXHIBIT A


I, _______________________________________ [print or type full name], state:














Executed on _______________.

_______________________________________ [Printed name] _______________________________________ [Signature]



EXHIBIT B



_______________________________________________ am not an employee of the Party who





the Action and my retention , I decide to accept employment by a competitor of the opposing







Executed on __________________




EXHIBIT C




v.

ACER, INC., et al.

WI-LAN, INC.

v.


§


CONSOLIDATED WITH:



PROTECTIVE ORDER







A. Definitions





































“SUBJECT TO PROSECUTION BAR”: this designationthese designations may be used only

for ATTORNEYS’ EYES ONLY information, documents, and things the Designating Party

believes in good faith would create a substantial risk of serious injury if known to in-house

attorneys or other employees of a Receiving Party, including. but not limited to, among the

following categories of documents:





documents. This









this Order.
























Consultant.



B. Scope







































of this Order;








and
















(c) For “"ATTORNEYS’' EYES ONLY”" material:









review only ATTORNEYS’' EYES ONLY information produced by Wi-LAN and that under no



circumstances shall Defendants’' in-house attorneys or employees be permitted access to or be

allowed to review ATTORNEYS’' EYES ONLY information produced by any other Defendant,


house attorneys’' access to information concerning their own companies’' current or future























CODE," “ATTORNEYS’ EYES ONLY - SOURCE CODE” material– SUBJECT TO

EMPLOYEE BAR” OR “SUBJECT TO PROSECUTION BAR.”













and






























Protective Order.





































21. Source code.

























































source code itself.

















the Producing Party’'s business, the Producing Party shall produce the source code in that














































G. Prosecution Bar












































that party;






































































































BAR”.















































matter.




































































































S. Duration





















U. Miscellaneous



be effective.

























EXHIBIT A
















Executed on _______________.




EXHIBIT B















Executed on __________________.




Document comparison done by DeltaView on Tuesday, June 09, 2009 1:41:12 PM Input: Document 1 iManageDeskSite://dalimanage2/Dallas/279575/1 Document 2 iManageDeskSite://dalimanage2/Dallas/279576/1 Rendering set Blackline no moves Legend: Insertion Deletion Moved from Moved to Style change Format change Moved deletion Inserted cell Deleted cell Moved cell Split/Merged cell Padding cell Statistics: Count Insertions 25Deletions 17Moved from 0Moved to 0Style change 0Format changed 0Total changes 42


EXHIBIT D












EXHIBIT E


Case 2:99-cv-02488-GEB-GGH Document 27 Filed 04/04/2000 Page 1 of 4Case 2:07-cv-00473-TJW Document 322-6 Filed 06/09/2009 Page 2 of 5






v.

ACER, INC., et al.

WI-LAN, INC.

v.


§ § § § § § § § § § §


CONSOLIDATED WITH:



PROTECTIVE ORDER







A. Definitions





































“SUBJECT TO PROSECUTION BAR”: these designations may be used only for









documents.









this Order.
























Consultant.



B. Scope







































of this Order;








and

























review only ATTORNEYS' EYES ONLY information produced by Wi-LAN and that under no



circumstances shall Defendants' in-house attorneys or employees be permitted access to or be

allowed to review ATTORNEYS' EYES ONLY information produced by any other Defendant,


house attorneys' access to information concerning their own companies' current or future























CODE," “ATTORNEYS’ EYES ONLY – SUBJECT TO EMPLOYEE BAR” OR “SUBJECT

TO PROSECUTION BAR.”













and






























Protective Order.





































21. Source code.

























































source code itself.

















the Producing Party's business, the Producing Party shall produce the source code in that manner.

If, for any reasons, source code files are not produced for review, but, in the Receiving Party’s

sole determination, such missing source code is deemed to be necessary to understand the












































G. Prosecution Bar












































that party;






































































































BAR”.















































matter.




































































































S. Duration





















U. Miscellaneous



be effective.

























EXHIBIT A
















Executed on _______________.




EXHIBIT B



_____________________________________________ am not an employee of the Party who





the Action and my retention, I decide to accept employment by a competitor of the opposing







Executed on __________________.





MARSHALL DIVISION

WI-LAN, INC.

v.

ACER, INC., et al.

WI-LAN, INC.

v.


§ § § § § § § § § § §


CONSOLIDATED WITH:



PROTECTIVE ORDER







A. Definitions




































7. “SUBJECT TO PROSECUTION BAR”: this designation may be used only for









documents. This designations, however, shall not be used for a

Designating Party’s sales records regarding its products,license

agreements or related communications with parties to the agreements.





this Order.
























Consultant.

B. Scope









































of this Order;








and
















(c) For “ATTORNEYS’ EYES ONLY” material:









review only ATTORNEYS’ EYES ONLY information produced by Wi-LAN and that under no

circumstances shall Defendants’ in-house attorneys or employees be permitted access to or be

allowed to review ATTORNEYS’ EYES ONLY information produced by any other Defendant,


house attorneys’ access to information concerning their own companies’ current or future






















This subparagraph (c) does not apply to “ATTORNEYS’ EYES ONLY - SOURCE

CODE” material OR “SUBJECT TO PROSECUTION BAR.”















and






























Protective Order.





































21. Source code.

























































source code itself.

















the Producing Party’s business, the Producing Party shall produce the source code in that














































G. Prosecution Bar










































that party;






































































































BAR”.















































matter.






























































































regarding litigation or potential litigation over the patents-in-suit in which

the communicating Defendants became parties, or litigation or potential

litigation over any other patents allegedly owned or asserted by Wi-LAN.




S. Duration





















U. Miscellaneous



be effective.






















_______________________________________ JOHN WARD UNITED STATES DISTRICT JUDGE



EXHIBIT A


I, _______________________________________ [print or type full name], state:














Executed on _______________.




EXHIBIT B















Executed on __________________




Documents

JOINT MOTION FOR ENTRY OF PROTECTIVE ORDER