Case 1:19-cv-02225-RGA Document 44 Filed 04/02/20 Page 1 of 3 PageID #: 1260
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`BRIAN P. EGAN
`(302) 351-9454
`(302) 498-6216 FAX
`began@mnat.com
`
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`April 2, 2020
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`VIA ELECTRONIC FILING
`
`Re:
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`Analog Devices, Inc. v. Xilinx, Inc., C.A. No. 19-2225 (RGA)
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`Dear Judge Andrews:
`
`Plaintiff Analog Devices, Inc. (“Analog”) submits this letter concerning two disputed
`provisions in the Protective Order. (Ex. A). First, Analog proposes limiting access to
`Confidential information to in-house counsel, while Xilinx would expand access to “officers,
`directors, and employees” of the parties, including non-attorneys. Second, Analog proposes
`limits to printing source code and design files that would apply equally to both sides. Xilinx’s
`proposal, however, would give Xilinx a printing limit more than 20 times higher than Analog’s,
`even though both sides have asserted eight patents in this litigation.
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`Non-Attorney Access to Confidential Information
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`Consistent with precedent in this District, Analog proposes limiting access to
`Confidential information to in-house counsel.1 Conversely, Xilinx proposes permitting non-
`attorney “officers, directors, and employees” to access Analog’s Confidential information.
`Because Xilinx has in-house counsel available to manage the litigation, its proposal should be
`rejected.2
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`
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`1 See, e.g., Pharmacyclics LLC v. Fresenius Kabi USA, LLC et al., C.A. No. 18-192-CFC, Tr. at
`54 (D. Del. Oct. 17, 2018) (denying non-attorneys access to confidential information) (Ex. B);
`Allergan, Inc. v. Taro Pharmaceutical Industries Ltd., C.A. No. 17-663-VAC-SRF, Tr. at 38-39
`(D. Del. Nov. 6, 2017) (Ex. C) (same); Cosmo Technologies Ltd. et al. v. Lupin Ltd. et al., C.A.
`No. 15-669-LPS, D.I. 56 (D. Del. July 28, 2016) (same).
`2 Taro, C.A. No. 17-663-VAC-SRF, Tr. at 38-39 (Ex. C) (prohibiting non-attorney staff from
`accessing confidential information and distinguishing case in which no in-house attorneys were
`available).
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`Case 1:19-cv-02225-RGA Document 44 Filed 04/02/20 Page 2 of 3 PageID #: 1261
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`The Honorable Richard G. Andrews
`April 2, 2020
`Page 2
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`Non-attorney access to Confidential information presents an unnecessary risk of misuse.
`Courts in this District have long recognized that limiting access to in-house counsel minimizes
`risk because, “[l]ike outside counsel, in-house counsel is bound by professional and ethical
`responsibilities and their conduct is subject to sanctions.”3 In-house counsel are more likely to
`understand their role in reviewing confidential documents and less likely to be involved in
`competitive decisionmaking, reducing the risk Confidential information is misused, even
`inadvertently.4 Under Xilinx’s proposal, however, Analog would have to share Confidential
`information with non-attorney employees of a direct competitor—including competitive
`decisionmakers—who are not subject to the same professional obligations as attorneys.5
`Notwithstanding any agreement to abide by the Protective Order, this “distinction matters”—
`non-attorneys “are not officers of the court, are not bound by the same Code of Professional
`Responsibility, and are not subject to the same sanctions.”6 This risk is particularly relevant
`here, where Analog filed this lawsuit to stop the misappropriation of Analog’s patented
`technology by its longtime partner, Xilinx. (D.I. 1, ¶¶20-23).
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`Xilinx will not be “unfairly disadvantaged” if access is limited to in-house counsel.7
`Courts in this District have permitted non-attorneys to access Confidential information only as a
`last resort, where no in-house counsel is available.8 Xilinx has conceded it has and expects to
`add in-house counsel to the Protective Order. Additionally, to the extent Xilinx argues that
`Analog can mitigate any risk by designating material Highly Confidential, this would only invite
`over-designation.
`
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`3 Avery Dennison Corp. v. Minn. Mining & Mfg. Co., C.A. 01-125, 2001 WL 1339402, at *2 (D.
`Del. Oct. 26, 2001).
`4 See Fatpipe, Inc. v. Viptela, Inc., C.A. No. 16-182-LPS, Tr. at 16-17 (D. Del. Sept. 2, 2016)
`(Ex. D) (noting the risk of inadvertent misuse is “heighten[ed]” where “the competitive
`decisionmaker could be a non-attorney”).
`5 Cosmo, C.A. No. 15-669-LPS, D.I. 56 (prohibiting non-attorney access to confidential
`information because they “lack the same professional obligations and are more likely involved in
`competitive decisionmaking”); Pharmacyclics, C.A. No. 18-192, Tr. at 54 (Ex. B) (limiting
`access to in-house attorneys because attorneys are “subject to ethical and professional obligations
`and sanctions that a non-attorney is not”).
`6 Allergan, Inc. v. Teva Pharms. USA, No. 2:15-1455-WCB, 2017 WL 772486, *4 (E.D. Tex.
`Feb. 28, 2017).
`7 Cosmo, C.A. No. 15-669-LPS, D.I. 56 (noting defendant would not be unfairly disadvantaged if
`non-attorney staff are prohibited from accessing confidential information, “given that
`[defendant] has already designated one in-house attorney”).
`8 Compare iCeutica Pty Ltd. et al. v. Lupin Ltd. et al., C.A. No. 14-1515-SLR, Tr. at 32, 42 (D.
`Del. June 15, 2015) (Ex. E) (granting access to non-attorney where no in-house counsel was
`available), with Taro, C.A. No. 17-663-VAC-SRF, Tr. at 38-39 (Ex. C) (denying access where
`defendant had designated one attorney).
`
`

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`Case 1:19-cv-02225-RGA Document 44 Filed 04/02/20 Page 3 of 3 PageID #: 1262
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`The Honorable Richard G. Andrews
`April 2, 2020
`Page 3
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`Limits on Printing Source Code and Design Files
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`Analog’s source code and design files represent the fruits of Analog’s tremendous
`investment in research and development. (D.I. 1, ¶10). Analog proposes limits on printing
`source code and design files that will preserve the confidentiality of the parties’ most valuable
`technical documents and that apply equally to Analog and Xilinx, which have each asserted eight
`patents in this case. Under Analog’s proposal, each party “may request printing of no more than
`four hundred (400) pages total” of source code and design files. (Ex. A). This proposal allows
`the parties to draft expert reports and prepare for trial, while preventing the potentially
`devastating competitive harm that would result from improper disclosure of source code or
`design files.
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`Xilinx’s proposal, on the other hand, would allow it to copy thousands of pages of
`Analog’s most valuable technical documents, while giving Analog only 200 pages. Xilinx’s
`proposal would permit printing of “fifty (50) pages total of source code and fifty (50) pages total
`of native circuit design files for each product accused of infringement,” (Ex. A), allowing it to
`print 4100 pages of Analog’s source code and design files (because Xilinx has accused 41
`Analog products). In contrast, it would limit Analog to only 200 pages (because Analog has
`identified two accused Xilinx products). (D.I. 1; D.I. 11). Xilinx’s print limit is far beyond what
`is necessary for expert reports and to prepare for depositions and trial. Moreover, it is not
`warranted on the facts—Analog’s eight patents each target different functionalities in Xilinx’s
`accused products, while Xilinx’s eight patents target Analog products with overlapping
`technologies. Xilinx’s proposal is thus inequitable and would risk irreparable competitive harm
`to Analog.
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`Both parties also propose a limit on printing more than twenty continuous pages. Analog
`applies this limit to both source code and design files, while Xilinx applies this limit only to
`source code, potentially allowing wholesale copying of Analog’s valuable design files. (Ex. A).
`Xilinx has not provided a basis for limiting this provision to source code. To the extent Xilinx
`argues that page restrictions are inapplicable to design files, this is undermined by Xilinx’s
`proposed limit of “fifty (50) pages total of native circuit design files for each product accused of
`infringement.” (Ex. A).
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`Analog respectfully requests that the Court adopt its proposed Protective Order (Ex. A).
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`Respectfully,
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`/s/ Brian P. Egan
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`Brian P. Egan (#6227)
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`All Counsel of Record (via electronic mail)
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