Case No. 5:17-CV-00220-LHK INTEL CORP.’S MOTION AND MEMORANDUM 

IN SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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Mark Selwyn (SBN 244180) 

WILMER CUTLER PICKERING

HALE AND DORR LLP 

950 Page Mill Road 

Palo Alto, California 94304 

Telephone: (650) 858-6000 

Facsimile: (650) 858-6100 

William F. Lee 

Joseph J. Mueller 

Mark A. Ford 

Timothy Syrett 

WILMER CUTLER PICKERING

HALE AND DORR LLP 

60 State Street 

Boston, MA 02109 

Telephone: (617) 526-6000 

Facsimile: (617) 526-5000 

Attorneys for Non-Party Intel Corporation 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

FEDERAL TRADE COMMISSION 

Plaintiff, 

v. 

QUALCOMM INCORPORATED, 

a Delaware corporation, 

Defendant. 

Case No. 5:17-cv-00220-LHK 

NON-PARTY INTEL 

CORPORATION’S MOTION AND 

MEMORANDUM OF POINTS AND 

AUTHORITIES IN SUPPORT OF ITS 

MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE 

ORDER 

Date: June 28, 2017 

Time: 1:00pm 

Courtroom: 7, 4th Floor 

Hon. Nathanael M. Cousins 
Case No. 5:17-CV-00220-LHK i INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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TABLE OF CONTENTS 

I. INTRODUCTION ......................................................................................................... 1

II. FACTUAL BACKGROUND ........................................................................................ 2

A. Intel’s Production of Highly Confidential and Competitively-Sensitive 

Documents to Federal Trade Commission ............................................2

B. Protective Order Provisions Applicable to Intel Information .................3 

III. ARGUMENT ................................................................................................................ 4

A. Qualcomm’s In-House Counsel Should Not be Granted Access to 

Intel’s Highly Confidential Information Because the Risk of Disclosure 

of Such Information Outweighs In-House Counsel’s Need for the 

Information ..........................................................................................5

1. Disclosure of Intel’s Highly Confidential Information to Qualcomm InHouse Counsel Poses Great Risk of Harm to Intel .................................. 6

2. Intel’s Status as a Non-Party to this Antitrust Enforcement Action 

Weighs Against Disclosure to Qualcomm In-House Counsel ................ 10

3. Qualcomm’s Ability to Litigate Will Not be Prejudiced if Access to 

Intel’s Confidential Information is Limited to Outside Counsel ............ 11

B. The Appropriateness of Barring In-House Counsel Access to 

Confidential Information Has Been Recognized by the Court and by 

Qualcomm ......................................................................................... 12

1. This Court Has Entered Protective Orders Barring In-House Counsel 

Access to Confidential and Competitively-Sensitive Information .......... 12

2. Qualcomm Has Opposed Disclosure of Confidential Information to InHouse Counsel, Particularly When it is a Non-Party ............................. 12

IV. CONCLUSION ........................................................................................................... 14
Case No. 5:17-CV-00220-LHK ii INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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TABLE OF AUTHORITIES 

Page(s) 

Cases 

A. Hirsh, Inc. v. United States, 

657 F. Supp. 1297 (Ct. Int'l Trade 1987) .................................................................... 11

Adaptix v. Dell, No. 14-01259 (N.D. Cal. Sep. 8, 2014), 

2015 WL 12839125 ............................................................................................ 13, 14

Adkins v. Apple, No. 14- 01619 (N.D. Cal. Jan. 27, 2015), 

Dkt. No. 127 .............................................................................................................. 12 

Adobe Sys. v. Davachi, 

2011 U.S. Dist. LEXIS 71296 (N.D. Cal. July 1, 2011) ................................................ 6 

Apple Inc. v. Samsung Elecs. Co., 

2012 U.S. Dist. LEXIS 49201 (N.D. Cal. Jan. 30, 2012) ............................................ 12 

Apple Inc. v. Samsung Elecs. Co., 

2013 WL 3958232 (N.D. Cal. July 29, 2013) ............................................................... 2 

Brown Bag Software v. Symantec Corp., 

960 F.2d 1465 (9th Cir. 1992) ........................................................................... 6, 9, 13

Clark v. Bunker, 

453 F.2d 1006 (9th Cir. 1972) ...................................................................................... 2 

FastDO v. AT&T Mobility, No. 16-00385 (S.D. Cal. Jun. 28, 2016), 

Dkt. No. 146 .............................................................................................................. 13 

Fed. Trade Comm’n v. Qualcomm Incorporated Complaint, 

Dkt. No. 1 ................................................................................................................ 7, 9 

Fed. Trade Comm’n v. Foster, 

2007 U.S. Dist. LEXIS 55163 .................................................................................... 11 

In re High-Tech Emp. Antitrust Litig., 

2013 WL 5486230 (N.D. Cal. Sept. 30, 2013) .............................................................. 2 

In Re: Viagra (Sildenafil Citrate) Prod. Liab. Litig., No. 16-02691, MDL No. 
Case No. 5:17-CV-00220-LHK iii INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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2691 (N.D. Cal. May 3, 2016), Dkt. No. 471 .............................................................. 12 

Intel Corp. v. VIA Techs., Inc., 

198 F.R.D. 525 (N.D. Cal. 2000) .......................................................................... 6, 11

Kaseberg v. Conaco, 

2016 U.S. Dist. LEXIS 97581 (S.D. Cal. July 26, 2016) ............................................. 5

Paul v. Intel Corp. (In re Intel Corp. Microprocessor Antitrust Litig.), 

2007 U.S. Dist. LEXIS 103979 (D. Del. May 18, 2007) ............................................. 10 

Phillips ex rel. Estates of Byrd v. Gen. Motors Corp., 

307 F.3d 1206 (9th Cir. 2002) ..................................................................................... 5 

Pinterest, Inc. v. Pintrips, Inc., 

2014 U.S. Dist. LEXIS 149497 (N.D. Cal. Oct. 21, 2014) ........................................... 6 

Qualcomm v. Broadcom, No. 05-1392 (S.D. Cal. Feb. 4, 2006), 

Dkt. No. 48 ......................................................................................................... 12, 13

Qualcomm v. Broadcom, No. 05-1392 (S.D. Cal. May 3, 2006), 

Dkt. No. 125 ........................................................................................................ 13, 14

Rivera v. NIBCO, Inc., 

384 F.3d 822 (9th Cir. 2004) ....................................................................................... 5 

Tech. Properties v. Barnes & Noble, No. 12-03863 (N.D. Cal. July 8, 2015),

Dkt. No. 146 ............................................................................................................. 13 

United States v. Dentsply Int'l, Inc., 

187 F.R.D. 152 (D. Del. 1999) ................................................................................... 10 

U.S. Steel v. United States, 

730 F.2d 1465 (Fed. Cir. 1984) ................................................................................... 3 

Rules 

Fed. R. Civ. P. 26(c) ................................................................................................ 1, 5, 14
Case No. 5:17-CV-00220-LHK 1 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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NOTICE OF MOTION AND MOTION 

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 

PLEASE TAKE NOTICE that on June 28, 2017 at 1:00pm, in Courtroom 7, 4th Floor, 

United States District Court for the Northern District of California, San Jose Courthouse, 280 

South 1st Street, San Jose, CA 95113, Non-Party Intel Corporation (“Intel”) shall and hereby 

does move for entry of a supplemental protective order governing the production of the highly 

confidential information of Intel to Qualcomm Inc. (“Qualcomm). This motion is supported by 

the following Memorandum of Points and Authorities and such other written or oral argument 

as may be presented at or before the time this motion is taken under submission by the Court. 

STATEMENT OF RELIEF REQUESTED 

Pursuant to Federal Rule of Civil Procedure 26(c), and §§ 5.4(b) and 10.1 of the entered 

Protective Order, Intel seeks entry of the Supplemental Protective Order Governing Production 

of Non-Party Intel Corporation’s Protected Materials, attached hereto as Exhibit A.1

STATEMENT OF ISSUES TO BE DECIDED 

Whether good cause exists to deny in-house counsel of Qualcomm access to “INTEL 

HIGHLY CONFIDENTIAL—OUTSIDE ATTORNEYS’ EYES ONLY” Information or Items 

because the risk of harm posed by disclosure of such information outweighs Qualcomm’s need 

for in-house counsel to access such information. 

MEMORANDUM OF POINTS AND AUTHORITIES 

I. INTRODUCTION 

Pursuant to Federal Rule of Civil Procedure 26(c), and §§ 5.4(b) and 10.1 of the entered 

Protective Order, Intel Corporation brings this motion for entry of a supplemental protective 

 

1

 Although Intel, Qualcomm, and the Federal Trade Commission have agreed on a number of 

the terms contained in Intel’s Proposed Supplemental Protective Order, Qualcomm and Intel 

have reached an impasse with respect to other terms—notably Qualcomm in-house counsel’s 

access to Intel’s “HIGHLY CONFIDENTIAL” material. Exhibit B is an alternative Proposed 

Supplemental Protective Order that contains only terms to which Intel and the Parties have 

agreed. But to be clear, Intel does not believe Exhibit B is sufficient protection for its most 

sensitive information, and respectfully requests that the Court enter the proposed protective 

order at Exhibit A for the reasons stated herein. 
Case No. 5:17-CV-00220-LHK 2 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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order to govern any discovery from Intel in this matter. Because Intel is a direct competitor to 

Qualcomm and the claims in this case center on Qualcomm’s licensing conduct, contractual 

terms with customers, and other actions that necessarily involve Qualcomm’s in-house counsel, 

disclosure of Intel’s highly confidential information to Qualcomm’s in-house counsel would 

cause undue risk to Intel. Accordingly, Intel seeks a supplemental protective order that would 

safeguard its highly confidential information from in-house counsel—while still providing the 

Federal Trade Commission and Qualcomm’s outside counsel with access to such information, 

enabling full and fair adjudication of any merits issues to which Intel’s materials may be 

relevant. 

II. FACTUAL BACKGROUND 

A. Intel’s Production of Highly Confidential and Competitively-Sensitive 

Documents to Federal Trade Commission 

On November 5, 2014, the Federal Trade Commission (“FTC”) requested that Intel 

cooperate with its investigation into whether Qualcomm or its affiliates had engaged in unfair 

methods of competition. The FTC requested that Intel produce certain categories of documents 

voluntarily, in lieu of compulsory process. Intel complied with this request. On April 29, 2015, 

Intel received a subpoena from the FTC, requiring production of additional documents related 

to the FTC’s investigation of Qualcomm. Intel complied with this subpoena and produced some 

23,533 documents in rolling productions over the summer and fall of 2015. Intel has produced 

to the FTC numerous highly confidential and competitively-sensitive documents containing 

business and trade secrets. 2 These documents evidence, e.g., Intel’s negotiations with 

customers, Intel’s licenses with third parties for certain standard essential patents (“SEPs”), 

 

2

 The Ninth Circuit has adopted the definition of “trade secret” as set forth in the Restatement 

of Torts, holding that a trade secret “may consist of any formula, pattern, device or 

compilation of information which is used in one's business, and which gives him an 

opportunity to obtain an advantage over competitors who do not know or use it." In re HighTech Emp. Antitrust Litig., No. 11-02509, 2013 WL 5486230, at *1 (N.D. Cal. Sept. 30, 2013) 

(citing Clark v. Bunker, 453 F.2d 1006, 1009 (9th Cir. 1972)) (emphasis added); see also

Apple Inc. v. Samsung Elecs. Co., No. 11-01846, 2013 WL 3958232, at *3 (N.D. Cal. July 29, 

2013). 
Case No. 5:17-CV-00220-LHK 3 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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pricing information, strategic planning documents, sales forecast documents, and technical 

information regarding Intel’s products. 

B. Protective Order Provisions Applicable to Intel Information 

On May 1, 2017, the Court entered the Protective Order Governing Confidential Material 

in the above-captioned case, to which Qualcomm and the Federal Trade Commission (“FTC”), 

had stipulated. Docket No. 81 (the “Protective Order”). Intel, as a non-party to this ligation, 

was not involved in negotiations regarding the terms of the Protective Order and was not 

afforded an opportunity to provide input or comment prior to its entry. On May 4, 2017, the 

FTC notified Intel that Qualcomm has requested production of Intel’s information submitted to 

the FTC during the Commission’s pre-complaint investigation. 

Pursuant to § 5.4(b) of the Protective Order, Intel may designate its produced materials 

as “CONFIDENTIAL” or “HIGHLY-CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” 

Under the current terms, Intel’s information designated “CONFIDENTIAL” may be freely 

disclosed to Qualcomm “House Counsel,” defined as five Qualcomm attorneys listed in Exhibit 

B to the Protective Order, who are not involved in competitive decision-making as defined by 

U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), to whom Qualcomm deems 

disclosure is “reasonably necessary” for this litigation, and who have signed the 

“Acknowledgment and Agreement to Be Bound” (Exhibit A to the Protective Order), as well as 

their support staff, provided that such support staff are not involved in competitive decisionmaking and have signed Exhibit A to the Protective Order. Protective Order § 7.2(b). No 

additional procedures must be followed for the disclosure of Intel’s “CONFIDENTIAL” 

information. 

Intel’s information designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 

ONLY” may be disclosed to “Designated House Counsel,” following a written request from the 

party seeking disclosure that provides additional information about the identities and job 

responsibilities of House Counsel and identifies the specific information the party seeks to 

disclose. Id. §§ 7.3(b), 7.4. The default presumption of the Protective Order is that the 

information may then be disclosed, “unless, within 14 days of delivering the request, the Party 
Case No. 5:17-CV-00220-LHK 4 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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receives a written objection from [Intel].” The Protective Order then directs the parties to meet 

and confer, and provides that the issue of disclosure may be brought before this Court on motion 

practice. The Protective Order contemplates that this practice will occur each time Non-Party 

Intel objects to a request for its “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 

to be shared with Qualcomm House Counsel. 

Pursuant to § 5.4(b) of the entered Protective Order, Intel may seek a protective order 

from this Court regarding the FTC’s production of its confidential information. Section 10.1 of 

the Protective Order provides that “nothing in these provisions should be construed as 

prohibiting a Non-Party from seeking additional protections.” 

III. ARGUMENT 

The Protective Order does not adequately protect Intel’s information designated 

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” including by imposing on Intel 

the obligation to continually seek protection of its most sensitive confidential information from 

review by Qualcomm’s in-house counsel. Intel seeks entry of the Supplemental Protective 

Order Governing Production of Non-Party Intel Corporation’s Protected Materials, attached 

hereto as Exhibit A, to provide further safeguards for Intel’s information designated “HIGHLY 

CONFIDENTIAL – ATTORNEYS’ EYES ONLY”—most significantly, by precluding access 

by Qualcomm’s in-house counsel.3 As explained below, the highly sensitive nature of this 

information, the fact that Intel is not a party to this litigation, and Qualcomm’s ability to litigate

the merits without in-house access to Intel trade secrets and other sensitive materials, justify 

imposing a bar on such information being provided to Qualcomm’s in-house counsel—rather 

than imposing the burden on Intel to repeatedly seek protection of such information from the 

Court. To the extent truly exceptional circumstances required Qualcomm’s in-house counsel 

having access to such materials—which Intel cannot presently envision—Qualcomm could seek 

 

3

 Intel’s Proposed Order also provides additional modest protections—such as restricting the 

access of jury or trial consultants and mock jurors to Intel “HIGHLY CONFIDENTIAL” 

information, requiring Intel’s consent to disclose such information in an open hearing, and 

establishing criteria and conditions for witness access to such information—intended to limit 

the unnecessary dissemination of Intel’s sensitive business secrets. 
Case No. 5:17-CV-00220-LHK 5 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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an exception to this bar at the appropriate time. But Intel respectfully submits that in the absence 

of such exceptional circumstances, an in-house bar should apply. 

As legal context, under Federal Rule of Civil Procedure 26(c), “[a] party or any person 

from whom discovery is sought may move for a protective order in the court where the action 

is.” The party seeking a protective order bears the burden of establishing good cause, which is 

established by demonstrating that disclosure will cause a “specific prejudice or harm.” See

Rivera v. NIBCO, Inc., 384 F.3d 822, 827 (9th Cir. 2004); Phillips ex rel. Estates of Byrd v. Gen. 

Motors Corp., 307 F.3d 1206, 1211-12 (9th Cir. 2002). “‘If a court finds particularized harm 

will result from disclosure of information to the public, then it balances the public and private 

interests to decide whether a protective order is necessary.’” Kaseberg v. Conaco, 2016 U.S. 

Dist. LEXIS 97581, at *35-36 (S.D. Cal. July 26, 2016) (quoting Rivera v. NIBCO, Inc. 364 

F.3d 1057, 1063-64 (9th Cir. 2004)). 

The parties have acknowledged that good cause exists to prevent disclosure to the public 

of the confidential information produced in this action, Protective Order § 1, and Intel submits 

that good cause also exists to protect Intel’s highly confidential information from disclosure to 

Qualcomm’s in-house counsel, for the following reasons: (A) the risk to Intel of Qualcomm inhouse access outweighs any benefit to Qualcomm—Qualcomm’s outside counsel can ably 

represent Qualcomm’s interests; and (B) both this Court and Qualcomm itself have recognized, 

in other cases, the need to place stringent limits on in-house counsel’s access to highly sensitive 

information like Intel’s materials here. Again, to the extent that Qualcomm later identifies 

discrete information for which it believes it has a compelling need to disclose to in-house 

counsel, it could raise such an argument at the appropriate time. Intel asks, however, that the 

general rule be a bar on in-house access to Intel’s information designated “HIGHLY 

CONFIDENTIAL—ATTORNEYS’ EYES ONLY.” 

A. Qualcomm’s In-House Counsel Should Not be Granted Access to Intel’s 

Highly Confidential Information Because the Risk of Disclosure of Such 

Information Outweighs In-House Counsel’s Need for the Information 

When evaluating whether in-house counsel should be granted access to confidential 

information, courts must weigh the risk of harm to the disclosing party against the requesting 
Case No. 5:17-CV-00220-LHK 6 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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party’s need for in-house counsel to view the information to adequately present its claims or 

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

doing, courts should consider the nature of the claims and of a party’s opportunity to develop its 

case through alternative discovery procedures. Id. Here, Intel is a direct competitor to 

Qualcomm, and the conduct at issue focuses on licensing conduct, contractual agreements, and 

other actions that necessarily involve Qualcomm’s in-house legal department. In these 

circumstances, disclosure of highly confidential competitor information to individuals within 

Qualcomm’s legal department creates significant risk of harm to Intel. In contrast, Qualcomm 

can effectively litigate this case without in-house access; Qualcomm is represented by 

experienced outside counsel who will have full access to such information and can advise 

Qualcomm as to its implications. In sum, the balance of interests weighs against disclosure to 

Qualcomm’s in-house counsel. 

1. Disclosure of Intel’s Highly Confidential Information to Qualcomm 

In-House Counsel Poses Great Risk of Harm to Intel 

This Court has recognized that “[t]he concern for inadvertent disclosure is particularly 

acute where the party seeking access to the information is a direct competitor.” Pinterest, Inc. 

v. Pintrips, Inc., 2014 U.S. Dist. LEXIS 149497, at *8 (N.D. Cal. Oct. 21, 2014) (finding it 

appropriate to bar an in-house counsel’s access where companies were direct competitors and 

counsel had a substantial role on the legal team, control over intellectual property, influence 

over whether the company pursued litigation against another business, and played an advisory 

role on product teams) (citing Adobe Sys. v. Davachi, 2011 U.S. Dist. LEXIS 71296, at *5 (N.D. 

Cal. July 1, 2011)); see also Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 529 (N.D. Cal. 

2000) (noting that even a seemingly insignificant risk of disclosure cannot be ignored due to the 

threat of significant potential injury, [and] the potential injury is great when the information 

could be used to duplicate products, compete for customers, or interfere with the producing 

party’s business plan and thereby gain a competitive advantage in the marketplace). Here, Intel 

would be placed at a significant risk of injury, given (1) the competitive relationship between 
Case No. 5:17-CV-00220-LHK 7 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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Intel and Qualcomm, and (2) the nature of the claims in this case, which implicate legal issues 

and strategy in which Qualcomm’s in-house counsel necessarily are involved. 

First, Intel and Qualcomm are direct competitors in the cellular baseband processor 

market, and Intel is Qualcomm’s only remaining competitor in the premium LTE chipset market 

for sales to third party OEM handset makers. See Compl. ¶¶ 130, 139. As such, any harm to 

Intel’s premium chipset business will have profound anticompetitive effects on the market as a 

whole. Disclosure of Intel’s highly confidential information—such as arrangements with 

customers, SEP licenses, pricing information, strategic planning and sales forecast documents, 

and technical product information—would give Qualcomm a competitive advantage over Intel 

and could further cement Qualcomm’s hold on the baseband processor market. 

Second, the risk to Intel is magnified given the facts of this case. Qualcomm’s licensing 

arm (QTL) is responsible for a disproportionate share of Qualcomm’s overall profitability, 

accounting for approximately 75% of Qualcomm’s earnings before taxes in 2016. Qualcomm 

2016 Form 10-K at 46; see also Compl. ¶ 17. Indeed, reflecting the centrality of licensing to 

Qualcomm’s business, Qualcomm’s President, Derek Aberle, is a lawyer who formerly headed 

the licensing group.4 And the FTC’s allegations focus largely on conduct in which Qualcomm’s 

in-house legal department must have been involved, such as negotiating patent license 

agreements, developing terms for sales agreements, and setting general legal policies and 

strategies. The particular asserted violations of antitrust law include, among others, 

Qualcomm’s refusal to license claimed standard-essential patents to competitors in violation of 

Qualcomm’s FRAND commitments, charging royalties based on a percentage of a handset’s 

price, entering into exclusive dealing agreements with cell phone manufacturers, and employing 

a “no-license-no-chips” policy that prevents challenges to its licensing terms and allows 

Qualcomm to extract elevated royalties and other unreasonable license terms. See, e.g., Compl. 

 

4

See Derek K. Aberle, QUALCOMM, 

https://www.qualcomm.com/company/about/leadership/derek-aberle (last visited May 18, 

2017). 
Case No. 5:17-CV-00220-LHK 8 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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¶¶ 3-8, 77. Thus, this case is not one where in-house counsel have roles that are separate from 

the business conduct at issue in the litigation. Rather, here, the two are one and the same. 

To give Qualcomm’s in-house legal department—whose work is accused of being in 

violation of antitrust law that has, e.g., led to unlawful maintenance of monopoly power in the 

baseband processor market—access to Intel’s own highly confidential information would risk 

amplifying the very harms that are the subject of this case. As examples: 

• Knowledge of the terms in Intel’s sales and supply agreements could provide 

Qualcomm’s in-house counsel with a competitive advantage in evaluating and 

providing counsel regarding Qualcomm terms in similar agreements—including 

in the market at issue in this case; 

• Knowledge of the terms (including royalty rates and scope of patent grants) in 

Intel’s licenses would give Qualcomm’s counsel an unwarranted advantage in 

negotiating Qualcomm license agreements, including the types of licenses at 

issue in this case; 

• Knowledge of Intel strategic planning could allow Qualcomm’s in-house 

counsel to provide strategic counsel with knowledge of a direct competitor’s 

long-range plans in the market at issue in this case; and 

• Knowledge of Intel’s own internal technical analysis could influence 

Qualcomm’s counsel’s advice regarding patent strategy and other legal issues 

that are intertwined with technical issues. 

Third, we assume that Qualcomm will agree to set up firewalls or other mechanisms 

designed to prevent such information from being used. But this is not a case where in-house 

litigation counsel will be exposed only to stale information about some older technology or 

discontinued strategy. Rather, in this case Qualcomm’s legal strategy goes to the heart of the 

matter, and Intel’s past and contemplated future competitive reaction to that strategy will be a 

merits issue. Moreover, the Intel information that will be disclosed has value to multiple aspects 

of the work of Qualcomm’s in-house counsel, including the examples listed above. 
Case No. 5:17-CV-00220-LHK 9 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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As a result, the risk of inadvertent use would be real—as would the difficulty in 

compartmentalizing such information within the minds of the receiving counsel. In sum, even 

with the best of intentions on Qualcomm’s part, disclosing Intel’s trade secrets and other highly 

sensitive information to Qualcomm’s in-house counsel would create undue risk to Intel. See

Brown Bag Software, 960 F.2d 1465 at 1471 (noting the difficulty that “counsel could lock-up 

trade secrets in his mind, safe from inadvertent disclosure to his employer once he had read the 

documents”). 

For the same reasons, the narrow “competitive decision-making bar,” (Protective Order, 

§ 8), would not alleviate the risk of harm to Intel. Moreover, the bar remains in effect for a mere 

one-year from receipt of the highly confidential information, which is not nearly long enough 

in the context of a litigation involving ongoing technological and marketplace developments 

with critical long-term consequences. 

Fourth, there is no reciprocal risk to Qualcomm: Intel’s in-house counsel will not 

receive similar Qualcomm materials. This magnifies the danger of Qualcomm pursuing overly 

aggressive disclosures to its in-house counsel, lacking the deterrent of mirror-image disclosures 

to Intel’s in-house counsel. 

Fifth, although the current Protective Order requires that Qualcomm provide notice 

before making disclosures to its in-house counsel, that process would result in Intel having to 

defend against such disclosures from a posture in which the disclosures would be presumptively 

permissible. Intel should not have such a burden—to the contrary, the burden should be on 

Qualcomm to demonstrate the truly exceptional circumstances that would justify departing from 

what Intel asks the Court to impose, i.e., a general bar on disclosures of trade secrets and other 

highly sensitive information to in-house counsel. The allocation of burdens under the current 

Protective Order also increases the chances that Qualcomm will make repetitive notices of such 

disclosures, increasing the burden on and risk to Intel. Intel’s proposed process—in which the 

general rule would be no such disclosure, and the burden would be on Qualcomm to show 

exigent circumstances justifying a departure from that rule—would minimize the chances of 

such repetitive requests. 
Case No. 5:17-CV-00220-LHK 10 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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2. Intel’s Status as a Non-Party to this Antitrust Enforcement Action 

Weighs Against Disclosure to Qualcomm In-House Counsel 

In the context of antitrust actions, courts have considered the non-party status of 

competitors and distributors whose confidential information is at issue in balancing the risk of 

injury against in-house counsel’s need for access, concluding that the risk of injury to the owner 

of confidential information is greater where the owner was never in a position to accept or reject 

the risk of disclosure. United States v. Dentsply Int’l, Inc., 187 F.R.D. 152, 160 (D. Del. 1999); 

Paul v. Intel Corp. (In re Intel Corp. Microprocessor Antitrust Litig.), 2007 U.S. Dist. LEXIS 

103979, at *34-35 n.11 (D. Del. May 18, 2007) (stating that non-parties to litigation are situated 

differently from parties, not having undertaken the risks of disclosure). In Dentsply, the court 

noted that non-parties produce information in the course of antitrust investigations because they 

are “law-abiding entities,” and that the information of these non-parties is produced “not because 

they are a litigant seeking redress or an accused wrongdoer defending a lawsuit, but because 

they have valuable information which may or may not shed light on whether [the defendant] has 

engaged in proscribed anticompetitive activity.” Id. 

Intel’s highly confidential information is at issue in this proceeding because Intel 

complied with requests made to it by the FTC. This cooperation now places Intel’s highly 

confidential information at risk of disclosure—and (as noted above) in an asymmetric posture 

in which Qualcomm will receive Intel information, but not vice versa. Because it is not a party 

to the action, Intel had no opportunity to negotiate the terms of the Protective Order. As a 

government agency, the FTC does not possess competitively sensitive business information, and 

accordingly did not have the same institutional need to limit the risk of disclosure as would the 

owners of such information. 

Furthermore, allowing in-house counsel of Intel’s direct competitor to access Intel’s 

highly confidential information would in effect penalize Intel for cooperating with the FTC’s 

investigation. The FTC itself has recognized that protecting third-party information in antitrust 

actions is “crucial,” because “if it is used to gain competitive advantage, companies will be 
Case No. 5:17-CV-00220-LHK 11 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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reluctant to provide information to the FTC in the future.” See Fed. Trade Comm’n v. Foster, 

2007 U.S. Dist. LEXIS 55163, at *21-22 (D. N.M. 2007).5 

3. Qualcomm’s Ability to Litigate Will Not be Prejudiced if Access to 

Intel’s Confidential Information is Limited to Outside Counsel 

The party seeking access for its in-house counsel must demonstrate that its ability to 

litigate will be prejudiced. Intel Corp., 198 F.R.D. at 531 (citing A. Hirsh, Inc. v. United States, 

657 F. Supp. 1297, 1305 (Ct. Int’l Trade 1987) (disclosure of confidential business information 

“could cause irreparable competitive injury,” and “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”)). Requiring a party to rely on its competent outside counsel does not create an “undue 

and unnecessary burden.” Intel Corp. at 529 (denying Intel’s request for in-house counsel 

access). 

Here, Qualcomm has not shown—and cannot show—a need for its in-house counsel to 

access Intel’s confidential information. Qualcomm is represented in this action by Cravath, 

Swaine and Moore, LLP, and Morgan, Lewis & Bockius LLP. Cravath’s website states that 

antitrust litigation is one of its “core practice areas,” and that it “was named one of Law360’s 

2016 Competition Practice Groups of the Year and has ranked as a first-tier firm for antitrust 

law and antitrust litigation in the U.S. News & World Report Best Lawyers “Best Law Firms” 

survey from 2011 through 2017.”6 Similarly, Morgan Lewis states that it offers a “top-rated 

antitrust and competition team,” and highlights that this team “includes lawyers with a thorough 

understanding of the interplay between IP and antitrust laws,” particularly with respect to 

 

5

 While Foster did allow a single in-house attorney from each defendant to access confidential 

information, this access was extremely limited and did not cover the type of highly 

confidential documents at issue here. In Foster, in-house counsel was granted access only to 

deposition and investigative proceeding transcripts, and unredacted pleadings. Furthermore, 

this access was to be exercised only at outside counsel’s office, and in-house counsel was 

prohibited from removing any notes from outside counsel’s office. Here, the access to Intel 

confidential information sought by Qualcomm in-house counsel is much broader. 

6 Antitrust Litigation, Regulatory Clearance and Advisory, CRAVATH, SWAINE & MOORE LLP, 

https://www.cravath.com/practices/DetailExtended.aspx?FirmService=28 (last visited May 15, 

2017). 
Case No. 5:17-CV-00220-LHK 12 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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standard-setting and standard-essential patents, procurement and enforcement of patents, and 

licensing.7 Given the expertise of Qualcomm’s outside counsel, Qualcomm’s ability to present 

its defense will not be prejudiced if access to Intel’s confidential information is limited to outside

counsel. 

B. The Appropriateness of Barring In-House Counsel Access to Confidential 

Information Has Been Recognized by the Court and by Qualcomm 

1. This Court Has Entered Protective Orders Barring In-House 

Counsel Access to Confidential and Competitively-Sensitive 

Information 

Further evidence of the reasonableness and propriety of Intel’s requested order can be 

found in numerous orders entered by this court.8 See, e.g., In Re: Viagra (Sildenafil Citrate) 

Prod. Liab. Litig., No. 16-02691, MDL No. 2691 (N.D. Cal. May 3, 2016), Dkt. No. 471 at 12-

13 ¶ 7.3 (a-e); Adkins v. Apple, No. 14- 01619 (N.D. Cal. Jan. 27, 2015), Dkt. No. 127 at ¶ 9; 

Apple Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 49201, at *13-20 (N.D. Cal. Jan. 30, 

2012). For example, in Apple v. Samsung, the parties stipulated, and this Court ordered, that 

confidential information (of all tiers) could only be disclosed to outside counsel. Apple v. 

Samsung, at *13-20. Apple v. Samsung similarly involved a dispute concerning patent licensing, 

among other things, between two direct competitors operating in a highly competitive market. 

Given the conditions in the baseband processor market, and the alleged anticompetitive conduct 

of Qualcomm, this case merits at least the same level of protection for confidential information. 

2. Qualcomm Has Opposed Disclosure of Confidential Information to 

In-House Counsel, Particularly When it is a Non-Party 

When faced with the prospect of disclosure of its own confidential information to inhouse counsel of a direct competitor, Qualcomm has also opposed such disclosure. For example, 

in Qualcomm v. Broadcom, Qualcomm opposed in-house counsel’s access to its information 

 

7 Antitrust & Competition, MORGAN LEWIS, https://www.morganlewis.com/services/antitrustcompetition (last visited May 15, 2017). 

8

 Indeed, this District’s Model Protective Order acknowledges that in-house counsel access is 

not always appropriate. Model Protective Order for Litigation Involving Patents, Highly 

Sensitive Confidential Information and/or Trade Secrets ¶ 2 (identifying “Designated House 

Counsel” as an optional category). 
Case No. 5:17-CV-00220-LHK 13 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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designated merely “CONFIDENTIAL,” and sought a categorical bar preventing in-house 

counsel from viewing its information designated “OUTSIDE ATTORNEYS’ EYES ONLY,” 

which included source code and “sensitive commercial information, such as sales and licensing 

data and marketing plans.”9 No. 05-1392 (S.D. Cal. Feb. 4, 2006), Dkt. No. 48 at 6-8. In this 

case, Qualcomm would obtain much broader access to Intel’s highly confidential information, 

as the Protective Order contemplates that five Qualcomm in-house attorneys would have access. 

Protective Order, Ex. B. Ultimately, Qualcomm and Broadcom agreed to a complete bar against 

in-house access to the higher tier of confidential information, and the court ruled that the lower 

tier of confidential information could be disclosed to a single in-house attorney for each party. 

Qualcomm v. Broadcom, No. 05-1392 (S.D. Cal. May 3, 2006), Dkt. No. 125 at 2-3. Notably, 

the provision allowing disclosure of the lower tier of confidential information to in-house 

counsel stated that “[t]his disclosure will be limited to “CONFIDENTIAL BUSINESS 

INFORMATION” submitted by BROADCOM and QUALCOMM and specifically will not 

include any “CONFIDENTIAL BUSINESS INFORMATION” produced by a third party.” 

Id. at 3 (emphasis added). 

When itself a third party to litigation, Qualcomm has repeatedly negotiated the entry of 

supplemental protective orders that categorically bar in-house counsel access to all tiers of 

Qualcomm confidential information, providing even greater restrictions than those Intel now 

seeks. See, e.g., FastDO v. AT&T Mobility, No. 16-00385 (S.D. Cal. June 28, 2016), Dkt. No. 

146 at 10; Adaptix v. Dell, No. 14-01259 (N.D. Cal. Sept. 8, 2014), 2015 WL 12839125 at *5; 

Tech. Properties v. Barnes & Noble, No. 12-03863 (N.D. Cal. July 8, 2015), Dkt. No. 146 at 10. 

For example, in Adaptix v. Dell, the supplemental protective order provided that “[a]bsent a 

court order or agreement of Non-Party QUALCOMM, Designated QUALCOMM Material may 

not be disclosed to employees of a Receiving Party, including its in-house attorneys and support 

staff.” Adaptix, at *5. “QUALCOMM Material” was defined broadly as “Confidential 

 

9

 While Qualcomm did not seek a categorical bar on in-house counsel access to the lower tier 

of confidential information, it opposed disclosure to each of the three Broadcom counsel at 

issue, on the grounds that they were involved in licensing to a degree that qualified them as 

competitive decision-makers under Brown Bag. 
Case No. 5:17-CV-00220-LHK 14 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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Information, that Non-Party QUALCOMM (i) would not normally reveal to third parties except 

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

faith is significantly sensitive, or (iii) protected by a right to privacy under federal or state law,

or any other applicable privilege or right related to confidentiality or privacy.” Id. at 1. 

Qualcomm’s practice of negotiating protective orders barring in-house counsel access to its 

third-party productions—orders supplemental to those entered by the parties to the case and 

which bar in-house counsel access entirely—underscores the reasonableness of the 

supplemental protective order sought by Intel here. 

IV. CONCLUSION 

For the above stated reasons, Qualcomm’s in-house counsel should be barred from 

accessing Intel’s highly confidential information. To the extent that Qualcomm later believes it 

has an exceptional need for such an in-house disclosure, it could raise such an argument at the 

appropriate time. Until then, Intel respectfully requests that this Court issue the attached 

protective order pursuant to Federal Rule 26(c) barring in-house attorney access to Intel highly 

confidential information. 

 
Case No. 5:17-CV-00220-LHK 15 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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Dated: May 23, 2017 Respectfully submitted, 

/s/ Mark D. Selwyn 

Mark D. Selwyn 

WILMER CUTLER PICKERING

HALE AND DORR LLP 

950 Page Mill Road 

Palo Alto, California 94304 

Telephone: (650) 858-6000 

Facsimile: (650) 858-6100 

Mark.Selwyn@wilmerhale.com 

William F. Lee 

Joseph J. Mueller 

Mark A. Ford 

Timothy Syrett 

WILMER CUTLER PICKERING

HALE AND DORR LLP 

60 State Street 

Boston, MA 02109 

Telephone: 617-526-6000 

Facsimile: 617-526-5000 

William.Lee@wilmerhale.com 

Joseph.Mueller@wilmerhale.com 

Mark.Ford@wilmerhale.com 

Timothy.Syrett@wilmerhale.com 

Attorneys for Non-Party Intel Corporation
Case No. 5:17-CV-00220-LHK 16 INTEL CORP.’S MOTION AND MEMORANDUM IN 

SUPPORT OF MOTION FOR ENTRY OF 

SUPPLEMENTAL PROTECTIVE ORDER

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CERTIFICATE OF SERVICE 

I hereby certify that on May 23, 2017, I electronically filed the above document with the 

Clerk of the Court using CM/ECF which will send electronic notification of such filing to all 

registered counsel. 

By: /s/ Mark D. Selwyn 

Mark D. Selwyn