Nespresso USA, Inc. v. K-fee System GmbH ( 2023 )

1 Douglas H. Carsten (SBN 198467) Wayne Barsky, SBN 116731 dcarsten@mwe.com wbarsky@gibsondunn.com 2 Katherine Pappas (SBN 329411) Y. Ernest Hsin, SBN 201668 kpappas@mwe.com ehsin@gibsondunn.com 3 McDermott Will & Emery LLP Christine L. Ranney, SBN 295773 18565 Jamboree Road, Suite 250 cranney@gibsondunn.com 4 Irvine, CA 92612 Andrew Philip Blythe, SBN 321867 Telephone: (949) 620-6111 ablythe@gibsondunn.com 5 Facsimile: (949) 851-9348 Darish Huynh, SBN 324056 dhuynh@gibsondunn.com 6 Ian B. Brooks (Admitted Pro Hac Vice) Gibson, Dunn & Crutcher LLP ibrooks@mwe.com 2029 Century Park East, Suite 4000 7 Kavya Rallabhandi (Admitted Pro Hac Vice) Los Angeles, CA 90067-3026 krallabhandi@mwe.com Telephone: (310) 552-8500 8 McDermott Will & Emery LLP Facsimile: (310) 551-8741 500 North Capitol Street, NW 9 Washington, DC 20001 Attorneys for Plaintiff Nespresso USA, Inc. Telephone: (202) 756-8075 and Counterclaim-Defendant Nestlé 10 Facsimile: (202) 591-2827 Nespresso S.A. 11 Attorneys for Defendant/ Counter-Claimant K-fee System GmbH 12 UNITED STATES DISTRICT COURT 13 CENTRAL DISTRICT OF CALIFORNIA 14 Nespresso USA, Inc., 15 Case No. 2:22-cv-09295-GW (AGRx) 16 Plaintiff, [PROPOSED] PROTECTIVE ORDER 17 v. NOTE CHANGES MADE BY COURT 18 K-fee System GmbH, 19 Defendant. 20 21 K-fee System GmbH, 22 Counterclaim-Plaintiff, 23 v. 24 25 Nespresso USA, Inc., Nestlé Nespresso S.A., and Société des Produits Nestlé S.A., 26 Counterclaim-Defendants. 27 28 1 IT IS HEREBY STIPULATED AND AGREED, pursuant to Rule 26(c) of the 2 Federal Rules of Civil Procedure and subject to approval of the Court, by K-fee System 3 GmbH (“K-fee”), and Nespresso USA Inc. and Nestlé Nespresso S.A. (collectively, 4 “Nespresso”), and their respective undersigned counsel that this Stipulation and Order 5 shall govern the treatment of confidential, proprietary, privileged, private, or otherwise 6 non-public information in this action. 7 Accordingly, based upon the agreement of the parties, IT IS HEREBY 8 ORDERED pursuant to Rule 26(c) of the Federal Rules of Civil Procedure that the 9 following provisions shall govern the conduct of further proceedings in this action. 10 Any use of Protected Information at trial shall be governed by the orders of the trial 11 judge. This order does not govern the use of Protected Information at trial. 12 DEFINITIONS 13 1. The term “Protected Information” shall include all information that the 14 designating party believes constitutes, discloses, or relates to proprietary business 15 information, processes, operations, research, technical or developmental information, 16 production, marketing, sales, shipments, or other proprietary data or information of 17 commercial value not generally available to the public, including, but not limited to, 18 trade secrets. The information contained therein and all copies, abstracts, excerpts, 19 analyses, or other writings that contain, reflect, reveal, suggest, or otherwise disclose 20 such Protected Information shall also be deemed Protected Information. Each party 21 shall act in good faith in designating information as Protected Information. 22 2. “CONFIDENTIAL” information means Protected Information 23 designated in accordance with paragraph 6. 24 3. “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 25 information means Protected Information that is the subset of “CONFIDENTIAL” 26 information designated in accordance with paragraph 8. 27 4. “SPECIAL PROTECTED DATA” means Protected Information 28 1 designated in accordance with paragraph 10. 2 5. The term “Qualified Person” shall mean: 3 (a) Court and any Court personnel involved with this action; 4 (b) K-fee’s outside counsel, their legal assistants, and members of their 5 support staffs; 6 (c) Nespresso’s outside counsel, their legal assistants, and members of 7 their support staffs; 8 (d) Any independent expert or consultant who is retained by counsel 9 solely for the purpose of assisting in this action, subject to the provisions of paragraph 10 22; 11 (e) Photocopy services; 12 (f) Professional translators who are retained by the attorneys for the 13 parties for the purposes of this litigation; 14 (g) Stenographic reporters, videographers, official court reporters, and 15 their assistants who are engaged in such proceedings as are necessary for the 16 preparation and trial of this action; 17 (h) Jury or trial consultants and persons employed or retained by them 18 solely in providing litigation support services to the parties’ outside counsel law firms; 19 (i) Document imaging and database services and consultants retained 20 to set up, maintain, and/or operate litigation databases for this litigation; 21 (j) Graphics or design consultants retained to prepare demonstrative or 22 other exhibits for use in this action; 23 (k) Up to two designated in-house legal personnel for the receiving 24 party and respective secretarial, clerical, paralegal and other supporting personnel; 25 (i) For K-fee, these in-house legal personnel are Dr. Martin 26 Fröhlich, and Dr. Kai Danelzik. 27 (ii) For Nespresso, these in-house legal personnel are Douglas 28 1 Besman, and Michael Prewitt. 2 (iii) The parties reserve the right to propose at a later date to 3 designate additional in-house legal personnel employed by 4 the parties. 5 (l) Any other person who is designated as a Qualified Person by order 6 of the Court or by written agreement of the parties, provided that such person completes 7 and signs the undertaking in the form of Exhibit A. 8 USE OF PROTECTED INFORMATION 9 6. A producing party may designate any material “CONFIDENTIAL” for 10 protection under this protective order where that material constitutes or discloses 11 “CONFIDENTIAL” information. “CONFIDENTIAL” information, as that term is 12 used herein, comprises information that the producing party in good faith contends to 13 constitute or contain information that is (a) confidential, sensitive, competitive, or 14 potentially invasive of an individual’s privacy interests; (b) not generally known in the 15 context or form as known by the producing party; (c) not normally revealed to the 16 public or third parties or, if disclosed to third parties, is such that the producing party 17 would require such third parties to maintain the information in confidence; and 18 (d) information (regardless of how generated, stored, or maintained) or tangible things 19 that qualify for protection under standards developed under Fed. R. Civ. P. 26(c). 20 “CONFIDENTIAL” information includes, but is not limited to, confidential research, 21 development, technical, commercial, or financial information, as well as other such 22 information that the requesting party and non-parties would not have access to but for 23 this litigation. 24 7. Access to any “CONFIDENTIAL” information shall be limited to 25 Qualified Persons as described in paragraph 5. 26 8. A producing party may designate any material “HIGHLY 27 CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY” for protection under this 28 1 protective order where the producing party believes in good faith that the material 2 constitutes or discloses highly sensitive business information or items the unrestricted 3 disclosure of which to a requesting party or a receiving party would create a substantial 4 risk of harm, including, but not limited to, the producing party’s planned commercial 5 products and planned licensing agreements. As that term is used herein, “HIGHLY 6 CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY” information and items 7 consist of: (a) highly sensitive information relating to the development of beverage 8 machines or systems, or components or consumables thereof; (b) financial or business 9 reports and forecasts including plans, strategies, market analyses, costs, and pricing 10 information; (c) highly sensitive planned licensing agreements; and (d) pending or 11 abandoned patent, trademark, and copyright applications, foreign or domestic, unless 12 published or otherwise publicly available. 13 9. Access to “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL’S 14 EYES ONLY” information and items shall be limited strictly to the persons designated 15 as having access to “CONFIDENTIAL” information in paragraphs 5(a)-5(j) and 5(l), 16 except that, unless otherwise agreed, no outside counsel who is involved in competitive 17 decision-making, as defined In re Deutsche Bank, 605 F.3d 1373 (Fed. Cir. 2010), shall 18 have access to material designated “HIGHLY CONFIDENTIAL – OUTSIDE 19 COUNSEL’S EYES ONLY.” Persons designated in paragraph 5(k) (“in-house legal 20 personnel”) are strictly prohibited from viewing any information designated “HIGHLY 21 CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY.” 22 10. A producing party may designate any material “SPECIAL PROTECTED 23 DATA” for protection under this protective order where the producing party believes 24 in good faith that the information, including personally identifiable information, is 25 subject to federal, state, or foreign Data Protection Laws or other privacy obligations. 26 Examples of such Data Protection Laws includes, without limitation, The Gramm- 27 Leach-Bliley Act, 15 U.S.C. § 6801 et seq. (financial information); The Health 28 1 Insurance Portability and Accountability Act and the regulations thereunder, 45 CFR 2 Part 160 and Subparts A and E of Part 164 (medical information), the Swiss Federal 3 Act on Data Protection of June 19, 1992, Regulation (EU) 2016/679 of the European 4 Parliament and of the Council of 27 April 2016 on the protection of natural persons 5 with regard to the processing of personal data and on the free movement of such data, 6 and repealing Directive 95/46/EC (General Data Protection Regulation), the German 7 Federal Data Protection Act of June 30, 2017, and the UK Data Protection Act 2018. 8 “SPECIAL PROTECTED DATA” shall be handled by the receiving party with the 9 same protections as those afforded “HIGHLY CONFIDENTIAL – OUTSIDE 10 COUNSEL’S EYES ONLY” information and may compel alternative or additional 11 protections beyond those afforded “HIGHLY CONFIDENTIAL – OUTSIDE 12 COUNSEL’S EYES ONLY” information, in which case the parties shall meet and 13 confer in good faith, and, if unsuccessful, shall move the Court for appropriate relief. 14 11. Access to “SPECIAL PROTECTED DATA” shall be limited strictly to 15 the persons designated as having access to “HIGHLY CONFIDENTIAL – OUTSIDE 16 COUNSEL’S ONLY” information. 17 12. Protected Information will be used solely for the purpose of prosecuting, 18 defending, or settling this action, including any appeal and retrial, and will not be used 19 for other purposes including but not limited to patent licensing, or communications, 20 petitioning, litigation, or counseling with or before the U.S. Patent & Trademark Office 21 or any similar foreign agency, or for advising clients or affiliated entities regarding 22 product design or development in any way. 23 13. Nothing in this protective order shall prevent any person, including a 24 Qualified Person, from making use of any information that is designated as Protected 25 Information if such information: 26 (a) Was lawfully in his or her possession prior to receipt under the 27 provisions of this protective order; 28 1 (b) Was or becomes available to the public through no fault of a 2 receiving party; 3 (c) Was or is obtained from a source not under an obligation of secrecy 4 to the designating party; or 5 (d) Is exempted from the operation of this protective order by written 6 consent of the designating party. 7 14. If any person disputes or challenges the designation of any information as 8 Protected Information based on any ground specified in subparagraphs (a) through (c) 9 of paragraph 13, such information shall nevertheless be treated according to its specific 10 designation as Protected Information (“CONFIDENTIAL,” “HIGHLY 11 CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY,” and/or “SPECIAL 12 PROTECTED DATA”) in accordance with the provisions of this order until such 13 designation is removed by order of the Court or by written consent of the designating 14 party. 15 DISCLOSURE OF PROTECTED INFORMATION 16 15. Protected Information shall not be revealed, disclosed, described, 17 summarized, or otherwise communicated or made known to any person or entity, 18 directly or indirectly, other than a Qualified Person (or, in the case of “HIGHLY 19 CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” information or 20 “SPECIAL PROTECTED DATA,” the persons identified in paragraph 9 above), or the 21 party who produced such Protected Information, except as otherwise provided in this 22 Order. This order does not govern trial. Protected Information used at trial will become 23 public absent a separate court order upon motion and a legally sufficient showing. 24 16. A document that contains or reveals Protected Information may be shown 25 to any person who authored or previously had access to or knowledge of the document, 26 as demonstrated by the document itself, including the document’s metadata, or by 27 foundation testimony during a deposition. 28 1 17. Protected Information may be disclosed to a witness testifying under oath 2 if the witness is an officer, director, employee, consultant, expert or representative of 3 the party who produced such Protected Information. 4 18. Protected Information may be disclosed to a witness testifying under oath 5 if (a) the witness was formerly an officer, director, employee, consultant, expert, 6 clinical investigator, patent agent or attorney of the party who produced such Protected 7 Information; (b) the Protected Information was in existence during the period of his or 8 her service or employment; and (c) it is reasonable to conclude that the witness was 9 involved in the project to which the Protected Information relates. 10 19. This order shall not prevent counsel from examining a witness testifying 11 under oath in a good-faith effort to determine whether the witness has discoverable 12 information about the Protected Information. 13 20. Nothing in this protective order shall prevent disclosure of Protected 14 Information if the producing party consents to such disclosure or if the Court, after 15 notice to all parties, orders such disclosure. 16 21. Counsel desiring to disclose Protected Information to an individual 17 according to paragraph 5(d), 5(f), 5(h), 5(j), 5(k), or any other person according to 18 paragraph 5(l) shall first obtain a signed declaration in the form shown in attached 19 Exhibit A from that person. For independent experts or consultants according to 20 paragraph 5(d), or for any changes to the individuals identified in subparagraph 5(k), 21 at least seven (7) days in advance of the proposed disclosure of any Protected 22 Information to that person, counsel shall serve that person’s signed declaration and 23 curriculum vitae or resume by electronic mail on every other party. The identification 24 of an independent expert or consultant according to paragraph 5(d) shall include the 25 full name and professional address and/or affiliation of the proposed expert or 26 consultant, an up-to-date curriculum vitae, any prior or current employments or 27 consultancies for any party within the last five years (except those engagements that 28 1 are protected from disclosure pursuant to Fed. R. Civ. P. 26), and a list of the cases in 2 which the expert or consultant has testified at deposition, at a hearing, or at trial within 3 the last four years. A party may object for cause to the proposed disclosure by serving 4 a written objection within seven (7) days after receiving the copy of the signed 5 declaration. Failure to timely object shall operate as a waiver of the objection. If a 6 party objects to the proposed disclosure, the objecting party’s Protected Information 7 shall not be disclosed to such person except by order of the Court or by written consent 8 of the objecting party. In the event that a motion is made, the objecting party shall have 9 the burden of proving that disclosure should not be made. 10 22. For the duration of this action and for two years after entry of final 11 judgment from which no appeal may be taken, anyone other than the Court who, 12 according to paragraphs 9 or 11, receives another party’s material designated 13 “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY” or 14 “SPECIAL PROTECTED DATA,” shall not be involved, directly or indirectly, in the 15 prosecution of any patent application, including reissue, directed to beverage machines 16 or systems, or components or consumables thereof, or any method of manufacture or 17 use of such machines, systems, components, or consumables, and shall not be involved, 18 directly or indirectly, in the crafting, drafting, or amending of any such patent claim 19 during any reexamination, inter partes review, or post grant review proceedings. For 20 the avoidance of doubt, “prosecution” as used in this Order includes communicating 21 with the U.S. Patent and Trademark Office or any foreign patent office about any 22 unpublished patent application, but does not include engaging formally or informally, 23 or directly or indirectly, in any post-grant proceedings before the Patent Trial and 24 Appeal Board at the U.S. Patent and Trademark Office, including any inter partes 25 review, post-grant review, or reexamination proceeding except to the extent 26 involvement includes drafting, crafting, or amending claims during such proceedings. 27 23. If a party intends to reveal Protected Information of another party during 28 1 a pretrial court appearance, or hearing, which is open to the public, the party intending 2 to reveal such Protected Information shall provide reasonable notice and opportunity 3 to object to the party that produced the Protected Information, unless consent from the 4 party that produced the Protected Information party was previously obtained. 5 24. Should any Protected Information be disclosed, through inadvertence or 6 otherwise, by a receiving party to any person not duly authorized to receive such 7 information under this protective order, then the receiving party responsible for such 8 disclosure shall promptly notify counsel for the disclosing party of all pertinent facts 9 and make every effort to prevent further unauthorized disclosure, including retrieving 10 all copies of the Protected Information from the unauthorized recipient(s) thereof and 11 requesting that each such recipient execute the declaration attached as Exhibit A. 12 IDENTIFICATION AND MARKING OF PROTECTED INFORMATION 13 25. Any document or other tangible thing that contains or reveals Protected 14 Information shall be labeled with the legend “CONFIDENTIAL,” “HIGHLY 15 CONFIDENTIAL – OUTSIDE COUNSEL’S EYES ONLY,” and/or “SPECIAL 16 PROTECTED DATA,” or a marking of like import. Such marking shall appear on 17 each page of the document that contains Protected Information. For pleadings and 18 discovery responses, such marking need only appear on the first page of the document. 19 Any document or other tangible thing so labeled and the information that it contains or 20 reveals shall be treated in accordance with the provisions of this protective order. Any 21 Protected Information not reduced to documentary or physical form or which cannot 22 be conveniently labeled shall be so designated by a party by serving a written 23 notification on the receiving party within a reasonable amount of time after disclosure. 24 26. When a party initially produces documents for inspection, no marking 25 need be made by the producing party in advance of the inspection. For purposes of the 26 inspection, all documents shall be treated as containing Protected Information. After 27 the receiving party selects specified documents for copying, the producing party shall 28 1 appropriately mark the copies of the selected documents before they are provided to 2 the receiving party. 3 27. Only Qualified Persons, the deponent, and the court reporter and 4 videographer shall be allowed to attend any portion of a deposition in which Protected 5 Information is used or elicited from the deponent. The deposition of any witness (or 6 any portion of such deposition) that encompasses “HIGHLY CONFIDENTIAL - 7 OUTSIDE COUNSEL’S EYES ONLY” information or “SPECIAL PROTECTED 8 DATA” shall be taken only in the presence of persons who are qualified to have access 9 to such information. 10 28. Unless otherwise agreed, depositions shall be treated as containing 11 “CONFIDENTIAL” information. If a party contends that the deposition transcript 12 contains “HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” 13 information, “SPECIAL PROTECTED DATA,” or does not contain Protected 14 Information, that party will be required to affirmatively designate, in writing or on the 15 record, the transcript, or portions of the transcript, as “HIGHLY CONFIDENTIAL - 16 OUTSIDE COUNSEL’S EYES ONLY,” “SPECIAL PROTECTED DATA,” or as not 17 containing Protected Information. If they do not, the transcript shall continue to be 18 treated as containing “CONFIDENTIAL” information. 19 29. A non-party to the litigation (e.g., a third party producing information 20 pursuant to subpoena) may designate such information as Protected Information as set 21 forth in paragraph 25. If so designated, such Protected Information shall be subject to 22 the same restrictions and conditions as information designated by any party as 23 Protected Information. Nothing in this provision shall limit the ability of a party to 24 designate such information produced by a third party as Protected Information. 25 INADVERTENT FAILURE TO DESIGNATE 26 30. The inadvertent failure by a producing party to designate specific 27 documents or materials as containing Protected Information shall not be deemed a 28 1 waiver in whole or in part of a claim of confidentiality as to such documents or 2 materials. A producing party seeking to designate such documents or materials may 3 do so by giving written notice to the receiving party. Upon notice to the receiving party 4 of such failure to designate, the receiving party shall cooperate to restore the 5 confidentiality of the inadvertently undesignated information. No showing of error, 6 inadvertence, or excusable neglect shall be required for re-designation. 7 STORAGE OF PROTECTED INFORMATION 8 31. The recipient of any “CONFIDENTIAL” information, “HIGHLY 9 CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” information, or 10 “SPECIAL PROTECTED DATA” (excluding the Court) that is provided under this 11 protective order shall maintain such information in a reasonably secure and safe 12 manner that ensures that access is limited to the persons authorized under this Order, 13 and shall further exercise the same standard of due and proper care with respect to the 14 storage, custody, use, and/or dissemination of such information as is exercised by the 15 recipient with respect to its own proprietary information. 16 DATA SECURITY 17 32. Any person in possession of “CONFIDENTIAL” information, “HIGHLY 18 CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” information, or 19 “SPECIAL PROTECTED DATA” shall maintain a written information security 20 program that includes reasonable administrative, technical, and physical safeguards 21 designed to protect the security and confidentiality of such “CONFIDENTIAL” 22 information, “HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” 23 information, or “SPECIAL PROTECTED DATA”, protect against any reasonably 24 anticipated threats or hazards to the security of such “CONFIDENTIAL” information, 25 “HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” information, 26 or “SPECIAL PROTECTED DATA”, and protect against unauthorized access to 27 “CONFIDENTIAL” information, “HIGHLY CONFIDENTIAL - OUTSIDE 28 1 COUNSEL’S EYES ONLY” information, or “SPECIAL PROTECTED DATA”. To 2 the extent a party or person does not have an information security program, they may 3 comply with this provision by having the “CONFIDENTIAL” information, “HIGHLY 4 CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” information, or 5 “SPECIAL PROTECTED DATA” managed by and/or stored with eDiscovery vendors 6 or claims administrators that maintain such an information security program. If a 7 receiving party or authorized recipient discovers any loss of “CONFIDENTIAL” 8 information, “HIGHLY CONFIDENTIAL - OUTSIDE COUNSEL’S EYES ONLY” 9 information, or “SPECIAL PROTECTED DATA” or a breach of security, including 10 any actual or suspected unauthorized access, relating to another party’s 11 “CONFIDENTIAL” information, “HIGHLY CONFIDENTIAL - OUTSIDE 12 COUNSEL’S EYES ONLY” information, or “SPECIAL PROTECTED DATA”, the 13 receiving party or authorized recipient shall: (1) promptly provide written notice to 14 disclosing party of such breach; (2) investigate and make reasonable efforts to 15 remediate the effects of the breach, and provide disclosing party with assurances 16 reasonably satisfactory to disclosing party that such breach shall not recur; and 17 (3) provide sufficient information about the breach that the disclosing party can 18 reasonably ascertain the size and scope of the breach. The receiving party or authorized 19 recipient agrees to cooperate with the producing party or law enforcement in 20 investigating any such security incident. In any event, the receiving party or authorized 21 recipient shall promptly take all necessary and appropriate corrective action to 22 terminate the unauthorized access. This paragraph does not apply to the Court. 23 PERSONALLY IDENTIFIABLE INFORMATION 24 33. Personally identifiable information that a party has designated as 25 “SPECIAL PROTECTED DATA” as defined in paragraph 10 based on its good faith 26 belief that the information is subject to federal, state, or foreign Data Protection Laws, 27 data privacy laws, or other privacy obligations, or any of the information contained 28 1 therein, shall be handled by counsel for the receiving party with the same protections 2 as those afforded “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL’S EYES 3 ONLY” information. 4 PRODUCTION OF PRIVILEGED OR PROTECTED DOCUMENTS 5 34. Pursuant to Federal Rule of Evidence 502(d), the production of documents 6 or materials that the producing party thereafter claims to be subject to the attorney- 7 client privilege, work-product immunity, or other protection mandated by local law 8 shall not constitute a waiver of such privilege, immunity, or other protection in this or 9 any other action. After receiving written notice from the producing party that 10 documents or materials subject to the attorney-client privilege, work-product 11 immunity, or other protection have been produced, the receiving party shall not review, 12 copy, or otherwise disseminate the documents or materials, nor shall it disclose their 13 substance. In addition, the receiving party shall return the documents or materials and 14 all copies within five (5) days from receiving notice, or provide written confirmation 15 of the destruction of the original and all copies of the identified documents, including 16 all documents and things generated by a receiving party which documents and things 17 contain information derived from the returned/destroyed materials. The receiving 18 party shall not utilize the information contained in the returned/destroyed documents 19 or materials for any purpose, or disseminate or transmit such information. 20 (a) If the receiving party wishes to contest that any such document or 21 thing is protected by the attorney-client privilege, work-product immunity, or other 22 protection mandated by local law, the receiving party shall so notify the producing 23 party in writing when the document or thing is returned to the producing party (“Notice 24 of Designation”). 25 (b) Within five (5) days after receiving a Notice of Designation, the 26 producing party shall provide to the receiving party for each such document or thing a 27 description of the basis for the claim of privilege, immunity, or other protection. 28 1 (c) Within five (5) days after receiving such description, the receiving 2 party may seek relief from the Court to compel production of such documents and 3 things, the protection of which is still disputed. In any such motion to compel 4 production of the returned/destroyed document, the receiving party shall not rely upon 5 in any manner or assert as a ground for ordering production the fact, circumstances, or 6 contents of the production. Any such motion shall be filed under seal. 7 (d) The parties may stipulate to extend the time periods set forth in (b) 8 and (c) above. 9 (e) Nothing in this order overrides any attorney’s ethical 10 responsibilities to refrain from examining or disclosing materials that the attorney 11 knows or reasonably should know to be privileged and to inform the disclosing party 12 that such materials have been produced. 13 (f) The disclosing party retains the burden—upon challenge pursuant 14 to paragraph (c)—of establishing the privileged or protected nature of the information 15 in question. 16 (g) Nothing in this order limits the right of any party to petition the 17 Court for an in camera review. 18 (h) This order does not preclude a party from voluntarily waiving the 19 attorney-client privilege or work product protection. The provisions of Federal Rule 20 of Evidence 502(a) apply when the disclosing party uses or indicates that it may use 21 information produced under this order to support a claim or defense. 22 (i) Under this order, the provisions of Federal Rule of Evidence 502(b) 23 are inapplicable. 24 CHALLENGES TO PROTECTED INFORMATION DESIGNATION 25 35. A party shall not be obligated to challenge the propriety of a Protected 26 Information designation at the time of production of the designated materials, and a 27 failure to do so shall not preclude a subsequent challenge thereto consistent with the 28 1 Court’s scheduling order(s). In the event that a party disagrees at any time with a 2 Protected Information designation made by another party, the parties shall make a 3 good-faith attempt to resolve the dispute on an informal basis. If the parties cannot 4 resolve the dispute, the objecting party may seek appropriate relief from the Court 5 consistent with the scheduling order(s), and the designating party shall have the burden 6 of proving that its Protected Information designation is proper. 7 FILING OF PROTECTED INFORMATION 8 36. If a party deems it necessary to submit Protected Information to the Court, 9 the party shall file or designate such information with an application to file under seal 10 in accordance with Local Rule 79-5 and the Local Rules, and nothing in this Order 11 shall preclude the producing party from requesting that the Court seal that party’s 12 Protected Information. 13 37. Nothing in this Order shall prevent a party from using any document, 14 material or other information that is designated as Protected Information under this 15 Order at a hearing, trial or other court proceeding in this action, provided such use is 16 otherwise consistent with the terms of this Order or applicable case law. 17 ADVICE TO CLIENTS 18 38. Nothing in this protective order shall bar or otherwise restrict an attorney 19 herein from rendering advice to his or her client with respect to this action and, in the 20 course thereof, referring to or relying upon his or her examination of Protected 21 Information. In rendering such advice and in otherwise communicating with his or her 22 client, the attorney shall not disclose any Protected Information if such disclosure 23 would be contrary to the provisions of this protective order. 24 DISCOVERABILITY OF EXPERT MATERIALS 25 39. Discovery of communications between counsel and any independent 26 expert or consultant retained or specially employed by that counsel shall be limited to 27 factual information, analyses, documents, and data considered or relied on by the 28 1 expert in rendering the opinions expressed in an expert report or at trial. Except as 2 otherwise provided herein, all other communications between counsel and the expert 3 relating to the process of preparing an expert report or developing opinions for trial, 4 including all preliminary or draft reports, expert working papers, notes, and 5 communications relating thereto, shall be deemed exempt from discovery and use at 6 trial. 7 THIRD-PARTY REQUESTS 8 40. If any third party requests the production of any Protected Information, 9 including but not limited to a request by subpoena, the receiving party in possession of 10 such Protected Information must: 11 (a) Notify the producing party within 7 days of receiving the request; 12 and 13 (b) Take all lawful steps necessary to assert (or permit the Producing 14 Party to assert) all applicable protections, including but not limited to: 15 (i) Permitting the producing party a reasonable opportunity to 16 intervene and be heard, and 17 (ii) Defending the asserted rights, privileges, and immunities if 18 the producing party cannot be heard. 19 OTHER PROCEEDINGS 20 41. By entering this order and limiting the disclosure of information in this 21 case, the Court does not intend to preclude another court from finding that information 22 may be relevant and subject to disclosure in another case. Any person or party subject 23 to this order who becomes subject to a motion to disclose another party’s Protected 24 Information pursuant to this order shall promptly notify that party of the motion so that 25 the party may have an opportunity to appear and be heard on whether that information 26 should be disclosed. 27 28 1 MISCELLANEOUS 2 42. No party shall be responsible to another party for any use made of 3 information that was produced and not designated as Protected Information. 4 43. Documents and things produced or made available for inspection may be 5 subject to redaction, in good faith by the producing party, of information that is neither 6 relevant to the subject of this Action nor reasonably calculated to lead to the discovery 7 of admissible evidence, or is subject to the attorney-client privilege or work product 8 immunity. Any such redaction shall be clearly labeled. No redaction for relevance or 9 non-responsiveness shall be made that obscures or otherwise impacts those relevant or 10 responsive portions of a document, including as to any context necessary to a complete 11 understanding, presentation, or calculation of any relevant or responsive portions. All 12 documents redacted based on attorney-client privilege or work product immunity shall 13 be listed alongside their corresponding Bates number in a privilege log stating the basis 14 for such redaction. 15 44. No party needs to log relevant and responsive material generated on or 16 after April 21, 2021 in a privilege log. The parties further agree that either party may 17 request that additional material generated on or after April 21, 2021 be logged, and the 18 producing party shall log these documents if the requesting party demonstrates that 19 “good cause” exists for generating a privilege log of the withheld material to the 20 producing party’s satisfaction or as ordered by the Court. 21 45. Nothing here shall prevent the parties from redacting personally 22 identifying information or other information protected under Swiss, German, or UK 23 privacy law, the General Data Protection Regulation, or other foreign laws and 24 regulations. The parties recognize that certain witnesses may be subject to laws 25 concerning data privacy, data secrecy, or cross-border data transfer restrictions that 26 require protections or limitations beyond those described herein. The parties shall 27 work in good faith to address such issues as they arise and to abide by relevant foreign 28 1 laws and regulations unless otherwise ordered by the court. 2 46. When the inadvertent or mistaken disclosure of any information contained 3 in any document that the producing party believes is non-responsive is discovered by 4 the producing party and brought to the attention of the receiving party, the producing 5 party shall promptly produce a properly redacted replacement version of said document 6 to the receiving party. Upon receipt of the replacement version, the receiving party 7 shall immediately return and/or destroy all copies of the original version of said 8 document, and confirm in writing to the producing party that it has done so. 9 47. Any production of documents and ESI located abroad, in particular in 10 Europe and Switzerland, will need to comply with local laws, including laws 11 concerning cross-border data transfer, data privacy, and data secrecy protections unless 12 otherwise ordered by the Court. Further, there are restrictions on the taking of 13 depositions outside of the United States. Should any such depositions be needed, the 14 parties will meet and confer to try and resolve any issues that might arise. 15 48. Nothing in this protective order shall prejudice the right of any party to 16 oppose production of any information for lack of relevance, privilege, or any ground 17 other than confidentiality. 18 49. Nothing in this protective order shall prejudice the right of any party to 19 seek at any time a further order modifying this protective order. 20 50. Nothing in this protective order shall prejudice the right of any party to 21 bring before the Court at any time the question of whether any greater or lesser 22 restrictions should be placed upon the disclosure of any Protected Information. 23 51. In the event that a new party is added, substituted, or brought in, this 24 protective order will be binding on and inure to the benefit of the new party, along with 25 the corresponding obligations on the new party to maintain the confidentiality of the 26 Protected Information, subject to the right of the new party to seek relief from or 27 modification of this protective order. 28 1 52. Nonparties who produce information in this action may avail themselves 2 of the provisions of this protective order. 3 53. Within ninety (90) days after the termination of this action (including any 4 appeals), each document and each other tangible thing that contains or reveals 5 Protected Information and any copies, abstracts, summaries, notes, or other records 6 regarding the contents of any Protected Information shall be either (a) returned to the 7 attorney of record for the producing party or (b) destroyed with a representation of such 8 destruction being made to the attorney of record for the producing party. 9 54. Within ninety (90) days after any counsel has withdrawn or otherwise 10 been terminated as counsel of record, said counsel shall likewise return or destroy each 11 document and each other tangible thing in their possession that contains or reveals 12 Protected Information and any copies, abstracts, summaries, notes, or other records 13 regarding the contents of any Protected Information. 14 55. Notwithstanding the foregoing, outside counsel and in-house legal 15 representatives may maintain each of the following: each paper filed with the Court 16 together with any exhibits thereto, each deposition transcript together with the exhibits 17 marked at the deposition, each expert report together with any exhibits thereto, all 18 written discovery and responses thereto, each demonstrative used at trial or any other 19 hearing, each trial or hearing transcript, each exhibit used at trial, each item of 20 correspondence, and all drafts, memoranda, and other documents constituting work 21 product which were based upon or which include Protected Information, so long as the 22 terms of this protective order will continue to govern any such retained materials and 23 provided that information protected by data privacy will not be retained. In the event 24 that outside counsel and in-house legal representatives maintain such documents, they 25 shall not disclose material containing any Protected Information to another party or 26 third party absent subpoena or court order. Outside counsel and in-house legal 27 representatives likewise need not purge their email, document management systems, 28 1 || or back-up storage media, provided, however, that any Protected Information contained 2 || in such documents retained by counsel shall remain subject to the protections of this protective order. No person or receiving party is obligated to return or destroy Protected Information contained on electronic backup back-up tapes or other archival media, which should be treated in accordance with standard retention policies. 6 || However, to the extent that any material is accessed from back-up storage media, 7 || information protected by data privacy obligations shall be destroyed or returned and 8 || legal hold obligations shall be periodically reviewed for necessity and proportionality 9|| and information protected by data privacy obligations shall not be retained in 10 || perpetuity. 11 56. The provisions of this protective order shall survive and remain in full 12 || force and effect after the termination of this action (including any appeals). 13 This protective order may be amended as need may arise by order of the Court upon motion or stipulation of the parties. 15 16 || Date: December 6, 2023 Respectfully Submitted, /s/ Douglas H. Carsten /s/ Andrew Philip Blythe 18 Douglas H. Carsten Wayne Barsky Ian B. Brooks Y. Ernest Hsin 19 Katherine Pappas Christine L. Ranney 0 Kavya Rallabhandi Andrew Philip Blythe Darish Huynh 21 Attorneys for Defendant/Counterclaim- Attorneys for Plaintiff Nespresso USA, 22 Claimant K-fee System GmbH Inc. and Counterclaim-Defendant Nestlé 23 Nespresso S.A. 24 IT IS SO ORDERED □ 26 hia JA. | beinberg, DATED: December 6, 2023 27 Alicia G. Rosenberg 28 United States Magistrate Judge 1 EXHIBIT A 2 UNITED STATES DISTRICT COURT 3 CENTRAL DISTRICT OF CALIFORNIA 4 5 Nespresso USA, Inc., Case No. 2:22-cv-09295-GW (AGRx) 6 7 Plaintiff, 8 v. 9 K-fee System GmbH, 10 Defendant. 11 12 K-fee System GmbH, 13 Counterclaim-Plaintiff, 14 v. 15 16 Nespresso USA, Inc., Nestlé Nespresso S.A., and Société des 17 Produits Nestlé S.A., 18 Counterclaim-Defendants. 19 20 AGREEMENT TO BE BOUND 21 I, ________________________, declare and state under penalty of perjury that: 22 23 1. My address is _________________________. 24 2. My present employer is _________________________________ and the 25 address of my present employer is ________________________________________. 26 3. My present occupation or job description is 27 ____________________________________________________________________. 28 1 4. I have received a copy of the Stipulated Protective Order in this action, 2 which order was entered on _________________________. 3 5. I have carefully read and understand all of the provisions of the Stipulated 4 Protective Order. 5 6. I will comply with all of the provisions of the Stipulated Protective Order. 6 7. I will hold in confidence, will not disclose to anyone not qualified under 7 the Stipulated Protective Order, and will use only for purposes of this action, any 8 Protected Information that is supplied to me. 9 8. At the termination of this action or any time requested by counsel for the 10 party by whom I am employed, I will return each document and each other tangible 11 thing that discloses or reveals any Protected Information to the attorney who provided 12 such document or other tangible thing to me. Moreover, I will deliver any copies, 13 abstracts, summaries, notes, or other records regarding the contents of any Protected 14 Information to the attorney who provided such Protected Information to me. 15 9. I understand that if I violate the provisions of the Stipulated Protective 16 Order, I will be in violation of a Court order and subject to sanctions or other remedies 17 that may be imposed by the Court and potentially liable in a civil action for damages. 18 10. I hereby submit to the jurisdiction of the United States District Court for 19 the Central District of California for the purpose of enforcement of the Stipulated 20 Protective Order. 21 22 I declare under penalty of perjury of the laws of the United States that the foregoing is 23 true and correct. 24 25 Dated: _____________________ ________________________ 26 27 28