From: Mark Siegmund

To: Regan Rundio; Travis Richins; Barry Shelton; Blythe, Andrew Philip

Cc: *** GDC-Dell_WSOU; IPTeam

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Date: Thursday, December 9, 2021 7:36:22 PM

Attachments: image003.png

[WARNING: External Email]

Regan:

WSOU respectively requests reconsideration of inclusion of an acquisition bar. This

acquisition bar will impede the ability of WSOU’s counsel to practice law on behalf of other

clients. It would thus impose significant personal and professional hardships on myself and

Lawyers from the Etheridge Law Group (and restrict WSOU’s ability to choose its counsel)

yet does nothing to prevent WSOU from bringing further suits against Dell or other

defendants. As worded, for example, this language would arguably:

Prevent Steckler Wayne Cochran Cherry from continuing to represent our clients in

other matters already pending before this Court.

Prevent Lawyers from Etheridge Law Group from continuing its representation of

WSOU in other cases pending before this Court.

There are no circumstances present in this case justifying such a draconian measure.

In seeking to bar activities such as the ability of plaintiff’s counsel to practice law on behalf of

other clients, Defendants bore the burden of establishing “good cause” to prohibit such

activities. See In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010) and

Document Generation Corp. v. Allscripts, LLC, No. 6:08-CV-479, 2009 WL 1766096, at *2

(E.D. Tex. June 23, 2009). More particularly, the Federal Circuit requires the party seeking to

impose a bar “show that the information designated to trigger the bar, the scope of activities

prohibited by the bar, the duration of the bar, and the subject matter covered by the bar

reasonably reflect the risk presented by the disclosure of proprietary competitive information.”

In re Deutsche Bank Trust Co. Americas, 605 F.3d 3d 1373, 1381 (Fed. Cir. 2010) (emphasis

added). Here, Defendants have not met their burden to show that their proposed restriction on

the ability of WSOU’s counsel to practice law with regard to other clients is reasonable.

The prosecution bar is drastically different than the acquisition bar. In particular, the

prosecution bar is already part of the Court’s standard protective order (where the acquisition

bar is not). Also, the prosecution bar is limited to work being done on behalf of a party to the

lawsuit – not other clients like the acquisition bar. Finally, Courts routinely allow prosecution

bars but deny acquisition bars. 

This Court recently denied Google’s request for an acquisition bar in WSOU v. Google, Case

Nos. 6:20-cv-571 through 585 (W.D. Tex.) (September 17, 2021) and VideoShare, LLC v.

Google, LLC et al., Case No. 6:19-cv-663 (W.D. Tex., July 23, 2020) (Judge Albright) (Dkt.

45) (Minute hearing denying acquisition bar). Both of those protective orders included a

prosecution bar.

Other courts have done the same. See, e.g., Personalized Media Communications, LLC v.

Google LLC, Case No. 2-19-cv-00090-JRG (E.D. Tex., August 7, 2019); 13 Cases: Uniloc

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 1 of 8
2017, LLC v. Google LLC, Case Nos. 2:18-cv-491-504-JRG-RSP (E.D. Tex., June 14, 2019)

(Judge Payne); Uniloc USA, Inc., et al Amazon Digital Service, Inc., et al. Case No 2:16-cv570 (March 1, 2017) (Judge Schroeder); Rockstar Consortium US LP v. Google, Case No.

2:13-893-JRG (E.D. Tex., June 19, 2014); Data Engine Technologies LLC v. Google Inc.,

Case No. 14-cv-1115 (Apr. 8, 2015 Oral Order at Doc 33);SOL IP, LLC, v. AT&T Mobility,

Case No. 2:18-cv-526-RWS-RSP (E.D. Tex. May 29, 2019) (Overruling Defendants’

objection to magistrate judge denial of acquisition bar); Jenam Tech, LLC v. Samsung Elecs.

Am., Inc., Case No.4:19-cv-00250-ALM-KPJ,(E.D. Tex. Feb. 4, 2020); Karamelion LLC v.

ADT LLC, Cas No. 2-18-cv-00330-JRG (E.D. Tex. Jan. 24, 2019); Rockstar Consortium US

LP v. Google, C.A. No. 2:13-893-JRG (E.D. Tex., June 19, 2014); Data Engine Technologies

LLC v. Google Inc. No. 14-cv-1115 (Apr. 8, 2015 Oral Order at Doc 33); TQ Beta, LLC v.

DISH Network Corporation, et al., No. 14-cv-848-LPS-CJB (Apr. 1, 2015 Oral Order at Doc

32); Copy Protection LLC Netflix Inc., No. 14-cv- 365-LPS (Dec. 16, 2014 Oral Order at Doc

28); IP Learn LLC v. Beeline Acquisition Corp., No. 11-825-RGA (October 23, 2012

transcript at 9); Intellectual Ventures I LLC v. Canon Inc., No. 11-792- SLR (December 18,

2012 transcript at 4-8); Personalized Media Communications, LLC v. Amazon.com, Inc., 13-

1608-RGA (March 21, 2014 transcript at 54)); Intellectual Ventures I LLC, et al. v. AT&T

Mobility LLC, 12-193- LPS (June 5, 2014 transcript at 46-49); Graphics Properties Holdings,

Inc. v. Asus, No. 12-210-LPS (July 1, 2014 transcript at 38); Pragmatus Telecom, LLC v.

Genesys Tele. Lab., Inc., No. 14-cv-26-RGA (Nov. 12, 2014 Oral Order a D.I. 35); CRFD

Research, Inc. v. Netflix Inc., No. 14-cv-314-GMS (Jan. 5, 2015 transcript at 14); Media

Communications, LLC v. Amazon.com, Inc., 13-1608-RGA (March 21, 2014 transcript at 54).

If the Court nevertheless believes Defendants have shown the required good cause sufficient

to impose this kind of personal hardship on WSOU’s counsel, then the patent acquisition bar

should only prohibit such counsel from advising clients about acquiring patents narrowly

related to “the invention,” not the extremely broad “field of invention.” To illustrate, the “field

of invention” of patents at issue here encompasses “communications networks” or “data

communication networks”—extraordinarily broad areas of technology which, if barred, would

impose undue personal and professional hardships on WSOU’s counsel. The bar should also

not prohibit counsel from advising on other legal matters, such as validity and IPRs. Further,

the bar should not apply to litigation settlement negotiations, because such negotiations often

encompass whole patent portfolios. Finally, the limitations should only apply to work done

“on behalf of the receiving Party or its acquirer, successor, predecessor, or other affiliate,”

which is the same scope as the prosecution bar.

Thank you again for your time and consideration.

Sincerely,

Mark

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 2 of 8
From: Regan Rundio <Regan_Rundio@txwd.uscourts.gov> 

Sent: Wednesday, December 8, 2021 2:44 PM

To: Travis Richins <travis@etheridgelaw.com>; Barry Shelton <bshelton@sheltoncoburn.com>;

Blythe, Andrew Philip <ABlythe@gibsondunn.com>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Counsel:

The Court agrees with Dell that an acquisition bar may be appropriate here, especially where the

parties have already agreed to a prosecution bar. But the Court would like to narrow the acquisition

bar’s scope to at least approach that of the prosecution bar, which is limited by “the field of the

invention of the patents-in-suit.” For example:

(a) prepare, prosecute, supervise, or assist in the preparation or prosecution of any

patent application pertaining to the field of the invention of the patents-in-suit on behalf of

the receiving Party or its acquirer, successor, predecessor, or other affiliate;

(b) directly or indirectly advise or participate in the acquisition of any patent or patent

application pertaining to the field of the invention of the patents-in-suit, or interest in the

same, that is or will be asserted against Defendants; or

(c) directly or indirectly advise a patent holder, patent owner, company, or investor, or

any of its subsidiaries or affiliates, on the selection or valuation of any patent or claim

pertaining to the field of the invention of the patents-in-suit asserted or to be asserted

against Defendants,

The Court is satisfied with that scope, but the Court is open to any minor tweaks the parties may

suggest.

Are there any other disputes as to the protective order the parties believe the Court still needs to

resolve?

Regards,

Regan

Regan Rundio

Law Clerk to the

Hon. Alan D Albright

U.S. District Court

Western District of Texas

Office: 254-750-1517

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 3 of 8
From: Travis Richins <travis@etheridgelaw.com> 

Sent: Tuesday, December 7, 2021 2:50 PM

To: Barry Shelton <bshelton@sheltoncoburn.com>; Blythe, Andrew Philip

<ABlythe@gibsondunn.com>; Regan Rundio <Regan_Rundio@txwd.uscourts.gov>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: Re: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

CAUTION - EXTERNAL:

Regan,

WSOU and Dell jointly submit the attached disputed protective order. This version is updated

slightly to reflect additional narrowing of the disputes and should be used instead of the

version I sent several minutes ago. 

Sincerely,

Travis Richins | Etheridge Law Group

2600 East Southlake Blvd | Suite 120-324 |Southlake, TX 76092

travis@etheridgelaw.com | T 214 601 0678 | F 817 887 5950

From: Travis Richins <travis@etheridgelaw.com>

Sent: Tuesday, December 7, 2021 2:08 PM

To: Regan Rundio <Regan_Rundio@txwd.uscourts.gov>; Barry Shelton

<bshelton@sheltoncoburn.com>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: Re: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Regan,

The parties have narrowed the disputes in the PO. Attached for the Court's convenience is a

side-by-side showing the current disputed language, with Dell's proposed language highlighted

in yellow and WSOU's proposed language highlighted in blue. WSOU has invited Dell to join

WSOU in presenting this as a proposed disputed PO. If Dell does not join WSOU in presenting

this as a proposed disputed PO, then it should be considered a demonstrative submitted by

WSOU.

Sincerely,

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 4 of 8
Travis Richins | Etheridge Law Group

2600 East Southlake Blvd | Suite 120-324 |Southlake, TX 76092

travis@etheridgelaw.com | T 214 601 0678 | F 817 887 5950

From: Regan Rundio <Regan_Rundio@txwd.uscourts.gov>

Sent: Monday, November 29, 2021 3:52 PM

To: Barry Shelton <bshelton@sheltoncoburn.com>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Counsel:

The Court will continue to hear this dispute on December 7, 2021 at 3:00 PM CST via Zoom. Please

use the same Zoom info as before.

Regards,

Regan

Regan Rundio

Law Clerk to the

Hon. Alan D Albright

U.S. District Court

Western District of Texas

Office: 254-750-1517

From: Regan Rundio 

Sent: Tuesday, November 16, 2021 6:26 PM

To: Barry Shelton <bshelton@sheltoncoburn.com>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Counsel:

The Court will hear this dispute on November 22, 2021 at 9:30 AM CST via Zoom. The Zoom

information is provided below.

Join ZoomGov Meeting

https://txwd-uscourts.zoomgov.com/j/1613131172?pwd=ek9WOFZLeHZXalNYVmFOdkJabDJoQT09

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 5 of 8
Meeting ID: 161 313 1172

Passcode: 167817

One tap mobile

+16692545252,,1613131172#,,,,*167817# US (San Jose)

+16692161590,,1613131172#,,,,*167817# US (San Jose)

Dial by your location

 +1 669 254 5252 US (San Jose)

 +1 669 216 1590 US (San Jose)

 +1 551 285 1373 US

 +1 646 828 7666 US (New York)

Meeting ID: 161 313 1172

Passcode: 167817

Find your local number: https://txwd-uscourts.zoomgov.com/u/ae3OuAb5i

Regards,

Regan

Regan Rundio

Law Clerk to the

Hon. Alan D Albright

U.S. District Court

Western District of Texas

Office: 254-750-1517

From: Barry Shelton <bshelton@sheltoncoburn.com> 

Sent: Monday, November 15, 2021 5:00 PM

To: Regan Rundio <Regan_Rundio@txwd.uscourts.gov>; TXWDml_LawClerks_WA_JudgeAlbright

<TXWDml_LawClerks_WA_JudgeAlbright@txwd.uscourts.gov>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

CAUTION - EXTERNAL:

Regan,

Defendants note that WSOU’s “side-by-side comparison” does not accurately represent Defendants’

position, which is set forth in full in the exhibits already submitted with the joint discovery table last

week.

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 6 of 8
Defendants will separately respond to WSOU’s unnecessary and improper motion within the time

allowed by the Local Rules. Thank you for your assistance.

Regards,

Barry

From: Regan Rundio <Regan_Rundio@txwd.uscourts.gov> 

Sent: Sunday, November 14, 2021 2:59 PM

To: Barry Shelton <bshelton@sheltoncoburn.com>; TXWDml_LawClerks_WA_JudgeAlbright

<TXWDml_LawClerks_WA_JudgeAlbright@txwd.uscourts.gov>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: RE: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

Counsel:

The Court can confirm receipt of the dispute and will provide guidance shortly.

Regards,

Regan

Regan Rundio

Law Clerk to the

Hon. Alan D Albright

U.S. District Court

Western District of Texas

Office: 254-750-1517

From: Barry Shelton <bshelton@sheltoncoburn.com> 

Sent: Friday, November 12, 2021 5:40 PM

To: TXWDml_LawClerks_WA_JudgeAlbright

<TXWDml_LawClerks_WA_JudgeAlbright@txwd.uscourts.gov>

Cc: *** GDC-Dell_WSOU <GDC-Dell_WSOU@gibsondunn.com>; IPTeam

<IPTeam@etheridgelaw.com>; Mark Siegmund <mark@swclaw.com>

Subject: WSOU v. Dell - 6:20-cv-00473 - 482, 485-486: Request for discovery conference

CAUTION - EXTERNAL:

Defendants in the above-captioned action submit this email to request the Court’s assistance in

resolving the dispute outlined in the attached table. Plaintiff has provided its position therein.

Please let us know if the Court needs any additional information.

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 7 of 8
Regards,

Barry

Barry K. Shelton | Partner

Shelton Coburn LLP

311 RR 620 S, Suite 205

Austin, Texas 78734-4775

T: (512) 263-2165 | F: (512) 263-2166 | M: (512) 517-9998

bshelton@sheltoncoburn.com | www.sheltoncoburn.com

CAUTION - EXTERNAL EMAIL: This email originated outside the Judiciary. Exercise caution

when opening attachments or clicking on links.

CAUTION - EXTERNAL EMAIL: This email originated outside the Judiciary. Exercise caution

when opening attachments or clicking on links.

CAUTION - EXTERNAL EMAIL: This email originated outside the Judiciary. Exercise caution

when opening attachments or clicking on links.

Case 6:20-cv-00486-ADA Document 129-1 Filed 12/15/21 Page 8 of 8