IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL INC., 

AND EMC CORPORATION,

 Defendants.

CIVIL ACTION 6:20-CV-00473-ADA

CIVIL ACTION 6:20-CV-00474-ADA

CIVIL ACTION 6:20-CV-00475-ADA

CIVIL ACTION 6:20-CV-00476-ADA

CIVIL ACTION 6:20-CV-00477-ADA

CIVIL ACTION 6:20-CV-00478-ADA

CIVIL ACTION 6:20-CV-00479-ADA

CIVIL ACTION 6:20-CV-00482-ADA

PATENT CASE

JURY TRIAL DEMANDED

WSOU INVESTMENTS, LLC D/B/A

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL INC., 

EMC CORPORATION, AND VMWARE, 

INC.,

 Defendants.

CIVIL ACTION 6:20-CV-00480-ADA

CIVIL ACTION 6:20-CV-00481-ADA

CIVIL ACTION 6:20-CV-00485-ADA

CIVIL ACTION 6:20-CV-00486-ADA

PATENT CASE

JURY TRIAL DEMANDED

DEFENDANTS’ OPPOSED MOTION FOR DENIAL OF PLAINTIFF’S REQUEST FOR 

RECONSIDERATION OF ENTRY OF ACQUISITION BAR

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 1 of 11
1

After briefing and argument, the Court adopted a narrowly tailored acquisition bar to 

prevent the inadvertent use of Defendants’ highly confidential technical information to acquire 

patents in the area of the accused technology that would be asserted back against Defendants. 

Plaintiff now asks for reconsideration. Plaintiff’s request should be denied.

The need for the acquisition bar is plain; even Plaintiff represents that its outside counsel 

routinely advises clients in the acquisition and valuation of patents and claims, pertaining to the 

subject matter at issue in this litigation, that are or will be asserted against Defendants, and that its 

counsel is doing so presently. (Ex. 1, Dec. 9 Email Requesting Reconsideration.) Plaintiff

nonetheless argues that the same counsel should have access to Defendants’ most sensitive 

technical information, including source code. Allowing that access creates an unacceptable risk

that Plaintiff’s counsel (inadvertently) employs Defendants’ confidential technical information in 

advising clients—to Defendants’ detriment. Here, the proposed acquisition bar simply implements 

the standard that the Federal Circuit set forth in Deutsche Bank, which Plaintiff does not dispute: 

any individual with access to Defendants’ highly sensitive technical information should not be 

engaged in “competitive decisionmaking” that inappropriately risks disclosure/use of that very 

information to Defendants’ detriment. Specifically, no individual with access to Defendants’

“HIGHLY SENSITIVE TECHNICAL INFORMATION” should advise others on the acquisition 

or valuation of patents in the same field as those asserted in the present cases against Defendants.

1

1

 The propriety of the proposed acquisition bar does not depend on Plaintiff’s counsels’ plans to 

participate in competitive decision making, and only Plaintiff’s counsel can attest to such plans

absent discovery. But counsel’s admissions about their extensive involvement in precisely the 

type of competitive decisionmaking that the acquisition bar would preclude supports prohibiting

their access to highly confidential technical information in the first instance. See ST Sales Tech 

Holdings, LLC v. Daimler Chrysler Co., LLC, C.A. No. 6:07-CV-346, 2008 WL 5634214, at *8 

(E.D. Tex. Mar. 14, 2008) (historical involvement by outside counsel in acquisition merited bar 

precluding access to confidential information entirely).

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 2 of 11
2

Acquisition Bars protect against inadvertent disclosure. Courts regularly enter 

protective orders proscribing the intentional misuse of a party’s highly sensitive business 

information obtained during discovery. (See, e.g., Ex. 2, Model Protective Order); Fed. R. Civ. P. 

26(c)(1)(G) (allowing for order “requiring that trade secret or other confidential ... commercial 

information not be revealed”). But “there may be circumstances in which even the most rigorous 

efforts of the recipient of such information to preserve confidentiality in compliance with the 

provisions of such a protective order may not prevent inadvertent compromise.” In re Deutsche 

Bank Tr. Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010). For example, it is unrealistic to 

expect an individual advising a client in making competitive decisions to ignore valuable, 

confidential information about its client’s competitors. Id. (“It is very difficult for the human mind 

to compartmentalize and selectively suppress information once learned, no matter how wellintentioned the effort may be to do so.”) (citation omitted). Providing access to those individuals 

thus creates an “unacceptable opportunity” for inadvertent disclosure and may cause significant 

harm to the producing party. Id. 

In determining whether additional protections are necessary to prevent such inadvertent 

disclosure, the central question is whether the individuals whose access is challenged are engaged 

in “competitive decisionmaking.” Id.; U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. 

Cir. 1984). Accordingly, courts routinely adopt protective orders that either (1) restrict certain 

individuals from accessing confidential information on the basis of their role as competitive 

decisionmakers (e.g., Ex. 2, Model Protective Order ¶¶ 9-10 (precluding in-house counsel from 

access certain highly confidential information)) or (2) prohibit individuals who have already 

accessed such confidential information from future participation in competitive decisionmaking 

(e.g., id. ¶ 12 (prohibiting individuals who accessed “HIGHLY SENSITIVE MATERIAL” from 

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 3 of 11
3

participating in “prosecution of any patent application pertaining to the field of the invention of 

the patents-in-suit”)). The Federal Circuit has recognized that many activities might implicate 

competitive decisionmaking and thus a risk of inadvertent disclosure, including those specific to 

patent law such as patent prosecution.

2

 Deutsche Bank, 605 F.3d at 1378-79.

The Federal Circuit established that a party seeking a bar on “competitive decisionmaking” 

activity to prevent inadvertent disclosure must show good cause and 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.” Id. at 1381. The risk of inadvertent disclosure must be 

“balance[d] ... against the potential harm to the opposing party from restrictions imposed on that 

party’s right to have the benefit of counsel of its choice.” Id. at 1380.3

 

There is good cause for entry of the Court’s narrowly tailored acquisition bar. In this 

litigation, Defendants have produced highly confidential information regarding the function of the 

accused products, including source code. As reflected in the Court’s inclusion of a prosecution 

bar in its model protective order, there is good cause to protect against the inadvertent disclosure 

of Defendants’ trade secrets by prohibiting individuals with access to that information from 

2

 Courts regularly apply Deutsche Bank in determining both prosecution and acquisition bars. 

E.g., Multimedia Content Mgmt. LLC v. Dish Network L.L.C., C.A. No. 6:18-00207-ADA, D.I. 93 

(W.D. Tex. Sept. 25, 2019) (“MCM”); E-Contact Technologies, LLC v. Apple, Inc., C.A. No 1:11-

00426-LED-KFG, 2012 WL 11924448, at *2 (E.D. Tex. Jun. 19, 2012); Intell. Ventures I, LLC v. 

Lenovo Grp. Ltd., C.A. No. 16-10860-PBS, 2019 WL 343242, at *2 (D. Mass. Jan. 25, 

2019), reconsideration denied, 392 F. Supp. 3d 138 (D. Mass. 2019).

3

 Once a bar is imposed, a party may seek an exemption by showing “on a counsel-by-counsel 

basis: (1) that counsel’s representation of the client in matters [of acquisition] does not and is not 

likely to implicate competitive decisionmaking related to the subject matter of the litigation so as 

to give rise to a risk of inadvertent use of confidential information learned in litigation, and (2) that 

the potential injury to the moving party from restrictions imposed on its choice of litigation and 

[acquisition] counsel outweighs the potential injury to the opposing party caused by such 

inadvertent use.” Deutsche Bank, 605 F.3d at 1381.

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 4 of 11
4

participating in competitive decisionmaking to which those trade secrets are pertinent and 

valuable. Here, Plaintiff is in the business of acquiring rather than prosecuting patents, and 

Plaintiff’s counsel regularly represents such non-practicing entities. Acquisition is thus a more 

pertinent competitive decisionmaking concern than prosecution. See E–Contact Techs., LLC v. 

Apple, Inc., C.A. No. 1:11-426 LED/KFG, 2012 WL 11924448, at *2 (E.D. Tex. June 19, 2012)

(where prosecution bar is appropriate, “it is hard to conceive that there would be little or no risk 

of inadvertent disclosure when these same attorneys advise their client in matters regarding 

acquisitions of patents”); Unwired Planet LLC v. Apple Inc., C.A. No. 3:12-cv-00505-RCJ, 2013 

WL 1501489, at *3 (D. Nev. Apr. 11, 2013) (acquisition bar particularly pertinent where

“[Plaintiff]’s sole reason for existence is to acquire patents and sue companies”). Without such a 

bar, individuals with access to Defendants’ proprietary technical information, including source 

code, could advise clients on the acquisition and valuation of patents to assert against Defendants

using confidential knowledge about how those patents will read onto Defendants’ software, even 

if only inadvertently. See Google LLC v. Sonos, Inc., C.A. No. 20-03845-EMC-TSH, 2021 WL 

1621875, at *2 (N.D. Cal. Apr. 27, 2021) (“untenable to allow people to be in a situation in which 

highly confidential information known to them would be extremely useful, and then demand they 

act as though they don't know it.”).

Accordingly, after briefing and argument on this issue, the Court agreed with Defendants 

that the following acquisition bar should be entered:

Any attorney ... and any person ... who obtains, receives, or otherwise learns, in whole or 

in part, the other Party’s HIGHLY SENSITIVE TECHNICAL MATERIAL under this 

Order shall not: ... (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,

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 5 of 11
5

during the pendency of this Action and for one year after its conclusion, including any 

appeals or two years after such person last reviewed the HIGHLY SENSITIVE 

TECHNICAL MATERIAL, whichever is earlier.

Each aspect of the bar “reasonably reflect[s] the risk presented by the disclosure of 

proprietary competitive information,” as Deutsche Bank requires (605 F.3d at 138):

• “the information designated to trigger the bar” The information triggering the 

bar is limited to “technical information” that is “HIGHLY CONFIDENTIAL” under the Protective 

Order and expressly excludes “financial data or non-technical business information.” This scope 

of triggering information is narrower than that in the prosecution bar in the Court’s model 

protective order. (Ex. 2, Model Protective Order ¶ 12 (not limited to “technical” information).) 

• “the scope of activities prohibited by the bar” The bar is tailored to that activity 

most likely to create a risk of inadvertent misuse of Defendants’ sensitive technical information, 

specifically participation in the “acquisition of” or “selection or valuation of” patents “pertaining 

to the field of the invention of the patents-in-suit” that are or will be “asserted against 

Defendants.” Courts regularly enter prosecution bars (which addresses the attempted acquisition 

of claims via the patent office instead of in the open market) – as does this Court’s model order –

without any reference to what “prosecution” activities constitute competitive decisionmaking.

4

 

Cf. Telebuyer, LLC v. Amazon.com, Inc., No. 13-CV-1677, 2014 WL 5804334, at *7 (W.D. Wash. 

4

 Similarly, with respect to in-house counsel, the Protective Order (at ¶¶ 9-10) precludes access to 

“HIGHLY CONFIDENTIAL” information if such counsel “exercise competitive decision making 

authority on behalf of the client,” with no definition regarding the scope of that exercise. Such 

provisions appropriately place the burden on individuals who want access to confidential 

information to request an exception by providing specifics about their actual role, to which the 

producing party has no access absent discovery. See Deutsche Bank, 605 F.3d at 1379-80 

(contrasting clerical prosecution activities such as “reporting office actions or filing ancillary 

paperwork” with substantive prosecution activities including “making strategic decisions on the 

type and scope of patent protection that might be available or worth pursuing for such inventions 

... or strategically amending or surrendering claim scope during prosecution.”).

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 6 of 11
6

July 7, 2014) (entering acquisition bar but declining “to draw, in advance, a fuzzy and 

unmanageable distinction” between specific acquisition activities).

In response, Plaintiff complains that its counsel may be restricted from “acquisition” 

activities that minimally risk inadvertent disclosure such as advising on patent “validity” or 

settlement negotiations. But such activities are expressly allowed. (Ex. 3, Disputed Protective 

Order ¶ 13.) Importantly, Plaintiff does not dispute that its counsel engagesin acquisition activities 

that are unquestionably “competitive decisionmaking.” Plaintiff’s counsel currently represents 

Plaintiff in its assertion of acquired patents in more than 120 cases pending in this District, and has 

also represented other non-practicing patent-acquirers such as Uniloc in hundreds of past cases.5

 

(Exs. 4 and 5.)

Plaintiff’s new proposal to limit the acquisition bar to work done “on behalf of the receiving 

Party or its acquirer, successor, predecessor, or other affiliate” significantly undermines the 

protection to Defendants, particularly where Plaintiff represents that it is presently engaged in 

acquisition activity on behalf of those other clients. While Defendants agreed to limit the 

prosecution bar in this manner as a compromise, 6 such a limitation is not appropriate as to 

acquisition, which poses a far greater risk given the nature of Plaintiff’s business and its counsel’s 

past and current representations.

• “the duration of the bar” The duration of the bar is in line with this Court’s 

precedent, including in the MCM case, and that of others. See MCM, D.I. 93 at 10 (12 months 

5

 If Plaintiff seeks an exception for specific “acquisition” activity of its counsel going forward, 

Plaintiff bears the burden to show that such activity does not implicate competitive decisionmaking 

and that the harm caused outweighs the risks to Defendants. Deutsche Bank, 605 F.3d at 1381.

6

 The prosecution bar in the Court’s model order contains no such limitation, and for good reason: 

inadvertent use of Defendants’ confidential technical information to advise Plaintiff’s counsel’s 

other clients creates an equal if not greater risk of inadvertent use. Defendants have no objection 

to adopting the Court’s model order on the prosecution bar. 

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 7 of 11
7

after litigation including appeals); Intell. Ventures I, LLC, 2019 WL 343242, at *4 (two years after 

litigation, gathering cases reflecting the same).

• “the subject matter covered by the bar” The Court’s proposal is narrowly 

tailored. Because Plaintiff’s discovery requests for Defendants’ HIGHLY SENSITIVE 

TECHNICAL INFORMATION concern Plaintiff’s attempt to prove infringement, the sensitive 

technical information is accordingly related to “the field of the invention of the patents-in-suit.”7 

Individuals receiving such information should therefore be precluded from participating in the 

acquisition of patents in that very field. Plaintiff’s proposal to further narrow the subject matter to 

“the invention of the patents-in-suit” itself would effectively nullify the acquisition bar by limiting 

it to the already acquired and asserted patents-in-suit themselves. 

Plaintiff will suffer no harm in its choice of counsel. Plaintiff does not argue that it will 

be deprived of trial counsel, only that its lawyers of record here will be frustrated in their efforts 

to represent other clients in the acquisition of patents to assert against Defendants. Deutsche Bank

does not contemplate consideration of hardship to Plaintiff’s counsel in representing other clients

that may stem from imposition of an acquisition bar. See 605 F.3d at 1380 (balancing risk to 

Defendants “against the potential harm to the opposing party”) (emphasis added). Just as with 

client conflicts, attorneys regularly make decisions in choosing representations that restrict their 

ability to ethically represent others in the future. Regardless, Plaintiff has at least nine other law 

firms currently representing it in litigations in this District. 

For these reasons and those already set forth in Defendants’ prior briefing and oral 

argument, the Court should deny Plaintiff’s request for reconsideration.

7

 If anything, the subject matter covered by the bar is too narrow since Plaintiff has requested and 

Defendants have provided technical material and source code that reflects features and 

functionalities that may relate to fields other than those of the asserted claims. 

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 8 of 11
8

Dated: December 15, 2021 By: /s/ Barry K. Shelton

Barry K. Shelton

Texas State Bar No. 24055029

bshelton@sheltoncoburn.com

SHELTON COBURN LLP

311 RR 620, Ste. 205

Austin, TX 78734-4775 

Telephone: 512.263.2165

Facsimile: 512.263.2166 

Benjamin Hershkowitz

bhershkowitz@gibsondunn.com

Brian A. Rosenthal

brosenthal@gibsondunn.com 

Allen Kathir

akathir@gibsondunn.com

Kyanna Sabanoglu

ksabanoglu@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Ave.

NY, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Y. Ernest Hsin

ehsin@gibsondunn.com

Jaysen S. Chung

jschung@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

555 Mission St., Ste. 3000

San Francisco, CA 94105-0921

Telephone: 415.393.8200

Facsimile: 415.393.8306

Ryan K. Iwahashi

riwahashi@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Rd.

Palo Alto, CA 94304-1211

Telephone: 650.849.5300

Facsimile: 650.849.5333

Emily M. Whitcher

ewhitcher@gibsondunn.com

Andrew P. Blythe

ablythe@gibsondunn.com

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 9 of 11
9

Nathaniel R. Scharn

nscharn@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

3161 Michelson Drive

Irvine, CA 92612-4412

Telephone: 949.451.3800

Facsimile: 949.451.4220

Attorneys for Defendants

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 10 of 11
CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on the 15th day of December, 2021, I caused the preceding 

document to be served on all counsel through the Court’s ECF system.

/s/ Barry K. Shelton

Barry K. Shelton

Case 6:20-cv-00473-ADA Document 120 Filed 12/15/21 Page 11 of 11