Softvault Systems, Inc. v. BMW of North America, LLC ( 2019 )

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 SOUTHERN DIVISION 11 SOFTVAULT SYSTEMS, INC., CASE NO. 8:19-CV-00328-DOC-JDEx 12 Plaintiff, PROTECTIVE ORDER 13 vs. 14 BMW OF NORTH AMERICA, LLC, 15 Defendant. 16 17 Based upon the Stipulation of the parties (Dkt. 32) and good cause appearing 18 therefor, the Court finds and orders as follows: 19 I. PURPOSES AND LIMITATIONS 20 Disclosure and discovery activity in this action are likely to involve 21 production of confidential, proprietary, or private information for which special 22 protection from public disclosure and from use for any purpose other than 23 prosecuting this litigation may be warranted. Accordingly, the parties hereby 24 stipulate to and petition the court to enter the following Stipulated Protective 25 Order. The parties acknowledge that this Order does not confer blanket protections 26 on all disclosures or responses to discovery and that the protection it affords from 27 public disclosure and use extends only to the limited information or items that are 28 entitled to confidential treatment under the applicable legal principles. 1 II. GOOD CAUSE STATEMENT 2 This action is likely to involve trade secrets, customer and pricing lists and 3 other valuable research, development, commercial, financial, technical and/or 4 proprietary information for which special protection from public disclosure and 5 from use for any purpose other than prosecution of this action is warranted. Such 6 confidential and proprietary materials and information consist of, among other 7 things, confidential business or financial information, information regarding 8 confidential business practices, or other confidential research, development, or 9 commercial information (including information implicating privacy rights of third 10 parties), information otherwise generally unavailable to the public, or which may 11 be privileged or otherwise protected from disclosure under state or federal statutes, 12 court rules, case decisions, or common law. Accordingly, to expedite the flow of 13 information, to facilitate the prompt resolution of disputes over confidentiality of 14 discovery materials, to adequately protect information the parties are entitled to 15 keep confidential, to ensure that the parties are permitted reasonable necessary uses 16 of such material in preparation for and in the conduct of trial, to address their 17 handling at the end of the litigation, and serve the ends of justice, a protective order 18 for such information is justified in this matter. It is the intent of the parties that 19 information will not be designated as confidential for tactical reasons and that 20 nothing be so designated without a good faith belief that it has been maintained in 21 a confidential, non-public manner, and there is good cause why it should not be 22 part of the public record of this case. 23 III. ACKNOWLEDGMENT OF UNDER SEAL FILING PROCEDURE 24 The parties further acknowledge, as set forth in Section 16.4, below, that this 25 Stipulated Protective Order does not entitle them to file confidential information 26 under seal; Local Civil Rule 79-5 sets forth the procedures that must be followed 27 and the standards that will be applied when a party seeks permission from the court 28 to file material under seal. There is a strong presumption that the public has a right 1 of access to judicial proceedings and records in civil cases. In connection with non- dispositive motions, good cause must be shown to support a filing under seal. See 2 Kamakana v. City and County of Honolulu, 447 F.3d 1172, 1176 (9th Cir. 2006), 3 Phillips v. Gen. Motors Corp., 307 F.3d 1206, 1210-11 (9th Cir. 2002), Makar- 4 Welbon v. Sony Electrics, Inc., 187 F.R.D. 576, 577 (E.D. Wis. 1999) (even 5 stipulated protective orders require good cause showing), and a specific showing of 6 good cause or compelling reasons with proper evidentiary support and legal 7 justification, must be made with respect to Protected Material that a party seeks to 8 9 file under seal. The parties’ mere designation of Disclosure or Discovery Material 10 as CONFIDENTIAL does not— without the submission of competent evidence by 11 declaration, establishing that the material sought to be filed under seal qualifies as 12 confidential, privileged, or otherwise protectable—constitute good cause. 13 Further, if a party requests sealing related to a dispositive motion or trial, 14 then compelling reasons, not only good cause, for the sealing must be shown, and 15 the relief sought shall be narrowly tailored to serve the specific interest to be 16 protected. See Pintos v. Pacific Creditors Ass’n., 605 F.3d 665, 677-79 (9th Cir. 17 2010). For each item or type of information, document, or thing sought to be filed 18 or introduced under seal, the party seeking protection must articulate compelling 19 reasons, supported by specific facts and legal justification, for the requested sealing 20 order. Again, competent evidence supporting the application to file documents 21 under seal must be provided by declaration. 22 Any document that is not confidential, privileged, or otherwise protectable in its 23 entirety will not be filed under seal if the confidential portions can be redacted. If 24 documents can be redacted, then a redacted version for public viewing, omitting 25 only the confidential, privileged, or otherwise protectable portions of the 26 document, shall be filed. Any application that seeks to file documents under seal in 27 their entirety should include an explanation of why redaction is not feasible. 28 1 IV. DEFINITIONS 2 4.1 Challenging Party: a Party or Non-Party that challenges the 3 designation of information or items under this Order. 4 4.2 “CONFIDENTIAL” Information or Items: information (regardless of 5 how it is generated, stored or maintained) or tangible things that qualify for 6 protection under Federal Rule of Civil Procedure 26(c). 7 4.3 Counsel (without qualifier): Outside Counsel of Record and House 8 Counsel (as well as their support staff). 9 4.4 Designated House Counsel: House Counsel who seek access to 10 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this 11 matter. 12 4.5 Designating Party: a Party or Non-Party that designates information or 13 items that it produces in disclosures or in responses to discovery as 14 “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 15 ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”. 16 4.6 Disclosure or Discovery Material: all items or information, regardless 17 of the medium or manner in which it is generated, stored, or maintained (including, 18 among other things, testimony, transcripts, and tangible things), that are produced 19 or generated in disclosures or responses to discovery in this matter. 20 4.7 Expert: a person with specialized knowledge or experience in a matter 21 pertinent to the litigation who (1) has been retained by a Party or its counsel to 22 serve as an expert witness or as a consultant in this action, (2) is not a past or 23 current employee of a Party or of a Party’s competitor, and (3) at the time of 24 retention, is not anticipated to become an employee of a Party or of a Party’s 25 competitor. 26 4.8 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 27 Information or Items: extremely sensitive “Confidential Information or Items,” 28 1 disclosure of which to another Party or Non-Party would create a substantial risk of 2 serious harm that could not be avoided by less restrictive means. 3 4.9 “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or 4 Items: extremely sensitive “Confidential Information or Items” representing 5 computer code and associated comments and revision histories that define or 6 otherwise describe in detail the algorithms or structure of software, disclosure of 7 which to another Party or Non-Party would create a substantial risk of serious harm 8 that could not be avoided by less restrictive means. 9 4.10 House Counsel: attorneys who are employees of a party to this action. 10 House Counsel does not include Outside Counsel of Record or any other outside 11 counsel. 12 4.11 Non-Party: any natural person, partnership, corporation, association, 13 or other legal entity not named as a Party to this action. 14 4.12 Outside Counsel of Record: attorneys who are not employees of a 15 party to this action but are retained to represent or advise a party to this action and 16 have appeared in this action on behalf of that party or are affiliated with a law firm 17 which has appeared on behalf of that party. 18 4.13 Party: any party to this action, including all of its officers, directors, 19 employees, consultants, retained experts, and Outside Counsel of Record (and their 20 support staffs). 21 4.14 Producing Party: a Party or Non-Party that produces Disclosure or 22 Discovery Material in this action. 23 4.15 Professional Vendors: persons or entities that provide litigation 24 support services (e.g., photocopying, videotaping, translating, preparing exhibits or 25 demonstrations, and organizing, storing, or retrieving data in any form or medium) 26 and their employees and subcontractors. 27 4.16 Protected Material: any Disclosure or Discovery Material that is 28 designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – 1 ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE 2 CODE.” 3 4.17 Receiving Party: a Party that receives Disclosure or Discovery 4 Material from a Producing Party. 5 V. SCOPE 6 The protections conferred by this Stipulation and Order cover not only 7 Protected Material (as defined above), but also (1) any information copied or 8 extracted from Protected Material; (2) all copies, excerpts, summaries, or 9 compilations of Protected Material; and (3) any testimony, conversations, or 10 presentations by Parties or their Counsel that might reveal Protected Material. 11 However, the protections conferred by this Stipulation and Order do not cover the 12 following information: (a) any information that is in the public domain at the time 13 of disclosure to a Receiving Party or becomes part of the public domain after its 14 disclosure to a Receiving Party as a result of publication not involving a violation 15 of this Order, including becoming part of the public record through trial or 16 otherwise; and (b) any information known to the Receiving Party prior to the 17 disclosure or obtained by the Receiving Party after the disclosure from a source 18 who obtained the information lawfully and under no obligation of confidentiality to 19 the Designating Party. Any use of Protected Material at trial shall be governed by a 20 separate agreement or order. 21 VI. DURATION 22 Even after final disposition of this litigation, the confidentiality obligations 23 imposed by this Order shall remain in effect until a Designating Party agrees 24 otherwise in writing or a court order otherwise directs. Final disposition shall be 25 deemed to be the later of (1) dismissal of all claims and defenses in this action, 26 with or without prejudice; and (2) final judgment herein after the completion and 27 exhaustion of all appeals, rehearings, remands, trials, or reviews of this action, 28 1 including the time limits for filing any motions or applications for extension of 2 time pursuant to applicable law. 3 VII. DESIGNATING PROTECTED MATERIAL 4 7.1 Exercise of Restraint and Care in Designating Material for Protection. 5 Each Party or Non-Party that designates information or items for protection under 6 this Order must take care to limit any such designation to specific material that 7 qualifies under the appropriate standards. To the extent it is practical to do so, the 8 Designating Party must designate for protection only those parts of material, 9 documents, items, or oral or written communications that qualify – so that other 10 portions of the material, documents, items, or communications for which 11 protection is not warranted are not swept unjustifiably within the ambit of this 12 Order. 13 Mass, indiscriminate, or routinized designations are prohibited. Designations 14 that are shown to be clearly unjustified or that have been made for an improper 15 purpose (e.g., to unnecessarily encumber or retard the case development process or 16 to impose unnecessary expenses and burdens on other parties) expose the 17 Designating Party to sanctions. 18 If it comes to a Designating Party’s attention that information or items that it 19 designated for protection do not qualify for protection at all or do not qualify for 20 the level of protection initially asserted, that Designating Party must promptly 21 notify all other parties that it is withdrawing the mistaken designation. 22 7.2 Manner and Timing of Designations. Except as otherwise provided in 23 this Order (see, e.g., second paragraph of section 7.2(a) below), or as otherwise 24 stipulated or ordered, Disclosure or Discovery Material that qualifies for protection 25 under this Order must be clearly so designated before the material is disclosed or 26 produced. 27 Designation in conformity with this Order requires: 28 1 a) for information in documentary form (e.g., paper or electronic 2 documents, but excluding transcripts of depositions or other pretrial or trial 3 proceedings), that the Producing Party affix the legend “CONFIDENTIAL” or 4 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY 5 CONFIDENTIAL – SOURCE CODE” to each page that contains protected 6 material. If only a portion or portions of the material on a page qualifies for 7 protection, the Producing Party also must clearly identify the protected portion(s) 8 (e.g., by making appropriate markings in the margins) and must specify, for each 9 portion, the level of protection being asserted. 10 A Party or Non-Party that makes original documents or materials available for 11 inspection need not designate them for protection until after the inspecting Party 12 has indicated which material it would like copied and produced. During the 13 inspection and before the designation, all of the material made available for 14 inspection shall be deemed “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 15 ONLY.” After the inspecting Party has identified the documents it wants copied 16 and produced, the Producing Party must determine which documents, or portions 17 thereof, qualify for protection under this Order. Then, before producing the 18 specified documents, the Producing Party must affix the appropriate legend 19 (“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 20 ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”) to each page that 21 contains Protected Material. If only a portion or portions of the material on a page 22 qualifies for protection, the Producing Party also must clearly identify the 23 protected portion(s) (e.g., by making appropriate markings in the margins) and 24 must specify, for each portion, the level of protection being asserted. 25 b) for testimony given in deposition or in other pretrial or trial 26 proceedings, that the Designating Party identify on the record, before the close of 27 the deposition, hearing, or other proceeding, all protected testimony and specify 28 the level of protection being asserted. When it is impractical to identify separately 1 each portion of testimony that is entitled to protection and it appears that 2 substantial portions of the testimony may qualify for protection, the Designating 3 Party may invoke on the record (before the deposition, hearing, or other 4 proceeding is concluded) a right to have up to 21 days to identify the specific 5 portions of the testimony as to which protection is sought and to specify the level 6 of protection being asserted. Only those portions of the testimony that are 7 appropriately designated for protection within the 21 days shall be covered by the 8 provisions of this Stipulated Protective Order. Alternatively, a Designating Party 9 may specify, at the deposition or up to 21 days afterwards if that period is properly 10 invoked, that the entire transcript shall be treated as “CONFIDENTIAL” or 11 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” 12 Parties shall give the other parties notice if they reasonably expect a 13 deposition, hearing or other proceeding to include Protected Material so that the 14 other parties can ensure that only authorized individuals who have signed the 15 “Acknowledgment and Agreement to Be Bound” (Exhibit A) are present at those 16 proceedings. The use of a document as an exhibit at a deposition shall not in any 17 way affect its designation as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL 18 – ATTORNEYS’ EYES ONLY.” 19 Transcripts containing Protected Material shall have an obvious legend on 20 the title page that the transcript contains Protected Material, and the title page shall 21 be followed by a list of all pages (including line numbers as appropriate) that have 22 been designated as Protected Material and the level of protection being asserted by 23 the Designating Party. The Designating Party shall inform the court reporter of 24 these requirements. Any transcript that is prepared before the expiration of a 21- 25 day period for designation shall be treated during that period as if it had been 26 designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in its 27 entirety unless otherwise agreed. After the expiration of that period, the transcript 28 shall be treated only as actually designated. 1 c) for information produced in some form other than documentary and 2 for any other tangible items, that the Producing Party affix in a prominent place on 3 the exterior of the container or containers in which the information or item is 4 stored the legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – 5 ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE 6 CODE”. If only a portion or portions of the information or item warrant protection, 7 the Producing Party, to the extent practicable, shall identify the protected portion(s) 8 and specify the level of protection being asserted. 9 7.3 Inadvertent Failures to Designate. If timely corrected, an inadvertent 10 failure to designate qualified information or items does not, standing alone, waive 11 the Designating Party’s right to secure protection under this Order for such 12 material. Upon timely correction of a designation, the Receiving Party must make 13 reasonable efforts to assure that the material is treated in accordance with the 14 provisions of this Order. 15 VIII. CHALLENGING CONFIDENTIALITY DESIGNATIONS 16 8.1 Timing of Challenges. Any Party or Non-Party may challenge a 17 designation of confidentiality at any time. Unless a prompt challenge to a 18 Designating Party’s confidentiality designation is necessary to avoid foreseeable, 19 substantial unfairness, unnecessary economic burdens, or a significant disruption 20 or delay of the litigation, a Party does not waive its right to challenge a 21 confidentiality designation by electing not to mount a challenge promptly after the 22 original designation is disclosed. 23 8.2 Meet and Confer. The Challenging Party shall initiate the dispute 24 resolution process by providing written notice of each designation it is challenging 25 and describing the basis for each challenge. To avoid ambiguity as to whether a 26 challenge has been made, the written notice must recite that the challenge to 27 confidentiality is being made in accordance with this specific paragraph of the 28 Protective Order. The parties shall attempt to resolve each challenge in good faith 1 and must begin the process by conferring directly (in voice to voice dialogue; other 2 forms of communication are not sufficient) within 14 days of the date of service of 3 notice. In conferring, the Challenging Party must explain the basis for its belief that 4 the confidentiality designation was not proper and must give the Designating Party 5 an opportunity to review the designated material, to reconsider the circumstances, 6 and, if no change in designation is offered, to explain the basis for the chosen 7 designation. A Challenging Party may proceed to the next stage of the challenge 8 process only if it has engaged in this meet and confer process first or establishes 9 that the Designating Party is unwilling to participate in the meet and confer process 10 in a timely manner. 11 8.3 Judicial Intervention. If the Parties cannot resolve a challenge without 12 court intervention, the Designating Party shall file and serve a motion to retain 13 confidentiality under Civil Local Rule 37 (and in compliance with Civil Local Rule 14 79-5, if applicable) within 21 days of the initial notice of challenge or within 14 15 days of the parties agreeing that the meet and confer process will not resolve their 16 dispute, whichever is earlier. Each such motion must be accompanied by a 17 competent declaration affirming that the movant has complied with the meet and 18 confer requirements imposed in the preceding paragraph. Failure by the 19 Designating Party to make such a motion including the required declaration within 20 21 days (or 14 days, if applicable) shall automatically waive the confidentiality 21 designation for each challenged designation. In addition, the Challenging Party 22 may file a motion challenging a confidentiality designation at any time if there is 23 good cause for doing so, including a challenge to the designation of a deposition 24 transcript or any portions thereof. Any motion brought pursuant to this provision 25 must be accompanied by a competent declaration affirming that the movant has 26 complied with the meet and confer requirements imposed by the preceding 27 paragraph. 28 1 The burden of persuasion in any such challenge proceeding shall be on the 2 Designating Party. Frivolous challenges and those made for an improper purpose 3 (e.g., to harass or impose unnecessary expenses and burdens on other parties) may 4 expose the Challenging Party to sanctions. Unless the Designating Party has 5 waived the confidentiality designation by failing to file a motion to retain 6 confidentiality as described above, all parties shall continue to afford the material 7 in question the level of protection to which it is entitled under the Producing 8 Party’s designation until the court rules on the challenge. 9 IX. ACCESS TO AND USE OF PROTECTED MATERIAL 10 9.1 Basic Principles. A Receiving Party may use Protected Material that is 11 disclosed or produced by another Party or by a Non-Party in connection with this 12 case only for prosecuting, defending, or attempting to settle this litigation. Such 13 Protected Material may be disclosed only to the categories of persons and under 14 the conditions described in this Order. When the litigation has been terminated, a 15 Receiving Party must comply with the provisions of section 15 below (FINAL 16 DISPOSITION). 17 Protected Material must be stored and maintained by a Receiving Party at a 18 location and in a secure manner that ensures that access is limited to the persons 19 authorized under this Order. 20 9.2 Disclosure of “CONFIDENTIAL” Information or Items. Unless 21 otherwise ordered by the court or permitted in writing by the Designating Party, a 22 Receiving Party may disclose any information or item designated 23 “CONFIDENTIAL” only to: 24 a) the Receiving Party’s Outside Counsel of Record in this action, as 25 well as employees of said Outside Counsel of Record to whom it is reasonably 26 necessary to disclose the information for this litigation; 27 b) the officers, directors, and employees (including House Counsel) of 28 the Receiving Party to whom disclosure is reasonably necessary for this litigation 1 and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit 2 A); 3 c) Experts (as defined in this Order) of the Receiving Party to whom 4 disclosure is reasonably necessary for this litigation and who have signed the 5 “Acknowledgment and Agreement to Be Bound” (Exhibit A); 6 d) the court and its personnel; 7 e) court reporters and their staff, professional jury or trial consultants, 8 and Professional Vendors to whom disclosure is reasonably necessary for this 9 litigation and who have signed the “Acknowledgment and Agreement to Be 10 Bound” (Exhibit A); 11 f) during their depositions, witnesses in the action to whom disclosure is 12 reasonably necessary and who have signed the “Acknowledgment and Agreement 13 to Be Bound” (Exhibit A), unless otherwise agreed by the Designating Party or 14 ordered by the court. Pages of transcribed deposition testimony or exhibits to 15 depositions that reveal Protected Material must be separately bound by the court 16 reporter and may not be disclosed to anyone except as permitted under this 17 Stipulated Protective Order. 18 g) the author or recipient of a document containing the information or a 19 custodian or other person who otherwise possessed or knew the information. 20 9.3 Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 21 ONLY” and “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or 22 Items. Unless otherwise ordered by the court or permitted in writing by the 23 Designating Party, a Receiving Party may disclose any information or item 24 designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or 25 “HIGHLY CONFIDENTIAL – SOURCE CODE” only to: 26 a) the Receiving Party’s Outside Counsel of Record in this action, as 27 well as employees of said Outside Counsel of Record to whom it is reasonably 28 necessary to disclose the information for this litigation and who have signed the 1 “Acknowledgment and Agreement to Be Bound” that is attached hereto as Exhibit 2 A; 3 b) Designated House Counsel of the Receiving Party (1) who has no 4 involvement in competitive decision-making, (2) to whom disclosure is reasonably 5 necessary for this litigation, (3) who has signed the “Acknowledgment and 6 Agreement to Be Bound” (Exhibit A), and (4) as to whom the procedures set forth 7 in paragraph 9.4(a)(1), below, have been followed. Designated House Counsel 8 shall not have access to any information or items designated “HIGHLY 9 CONFIDENTIAL – SOURCE CODE”; 10 c) Experts of the Receiving Party (1) to whom disclosure is reasonably 11 necessary for this litigation, (2) who have signed the “Acknowledgment and 12 Agreement to Be Bound” (Exhibit A), and (3) as to whom the procedures set forth 13 in paragraph 9.4(a)(2), below, have been followed; 14 d) the court and its personnel; 15 e) court reporters and their staff, professional jury or trial consultants, 16 and Professional Vendors to whom disclosure is reasonably necessary for this 17 litigation and who have signed the “Acknowledgment and Agreement to Be 18 Bound” (Exhibit A); 19 f) the author or recipient of a document containing the information or a 20 custodian or other person who otherwise possessed or knew the information. 21 9.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY 22 CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY 23 CONFIDENTIAL – SOURCE CODE” Information or Items to Designated House 24 Counsel or Experts. 25 a) 26 (1) Unless otherwise ordered by the court or agreed to in writing by 27 the Designating Party, a Party that seeks to disclose to Designated 28 House Counsel any information or item that has been designated 1 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” 2 pursuant to paragraph 9.3(b) first must make a written request to the 3 Designating Party that (1) sets forth the full name of the Designated 4 House Counsel and (2) describes the Designated House Counsel’s 5 current and reasonably foreseeable future primary job duties and 6 responsibilities in sufficient detail to determine if House Counsel is 7 involved, or may become involved, in any competitive decision- 8 making. Any Designated House Counsel who receives “HIGHLY 9 CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information 10 pursuant to this Order must disclose any relevant changes in job duties 11 or responsibilities prior to final disposition of the litigation to allow 12 the Designating Party to evaluate any later-arising competitive 13 decision-making responsibilities. 14 15 (2) Unless otherwise ordered by the court or agreed to in writing by 16 the Designating Party, a Party that seeks to disclose to an Expert (as 17 defined in this Order) any information or item that has been 18 designated “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – 19 ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – 20 SOURCE CODE” pursuant to paragraphs 9.2(c) or 9.3(c) first must 21 make a written request to the Designating Party that (1) identifies the 22 general categories of “CONFIDENTIAL,” “HIGHLY 23 CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY 24 CONFIDENTIAL – SOURCE CODE” information that the Receiving 25 Party seeks permission to disclose to the Expert, (2) sets forth the full 26 name of the Expert and the city and state of his or her primary 27 residence, (3) attaches a copy of the Expert’s current resume, (4) 28 identifies the Expert’s current employer(s), (5) identifies each person 1 or entity from whom the Expert has received compensation or funding 2 for work in his or her areas of expertise or to whom the expert has 3 provided professional services, including in connection with a 4 litigation, at any time during the preceding five years, and (6) 5 identifies (by name and number of the case, filing date, and location 6 of court) any litigation in connection with which the Expert has 7 offered expert testimony, including through a declaration, report, or 8 testimony at a deposition or trial, during the preceding five years. 9 b) A Party that makes a request and provides the information specified in 10 the preceding respective paragraphs may disclose the subject Protected Material to 11 the identified Designated House Counsel or Expert unless, within 14 days of 12 delivering the request, the Party receives a written objection from the Designating 13 Party. Any such objection must set forth in detail the grounds on which it is based. 14 c) A Party that receives a timely written objection must meet and confer 15 with the Designating Party (through direct voice to voice dialogue) to try to resolve 16 the matter by agreement within seven days of the written objection. If no 17 agreement is reached, the Party seeking to make the disclosure to Designated 18 House Counsel or the Expert may file a motion as provided in Civil Local Rule 37 19 (and in compliance with Civil Local Rule 79-5, if applicable) seeking permission 20 from the court to do so. Any such motion must describe the circumstances with 21 specificity, set forth in detail the reasons why the disclosure to Designated House 22 Counsel or the Expert is reasonably necessary, assess the risk of harm that the 23 disclosure would entail, and suggest any additional means that could be used to 24 reduce that risk. In addition, any such motion must be accompanied by a competent 25 declaration describing the parties’ efforts to resolve the matter by agreement (i.e., 26 the extent and the content of the meet and confer discussions) and setting forth the 27 reasons advanced by the Designating Party for its refusal to approve the disclosure. 28 1 In any such proceeding, the Party opposing disclosure to Designated House 2 Counsel or the Expert shall bear the burden of proving that the risk of harm that the 3 disclosure would entail (under the safeguards proposed) outweighs the Receiving 4 Party’s need to disclose the Protected Material to its Designated House Counsel or 5 Expert. 6 X. PROSECUTION BAR 7 Absent written consent from the Producing Party, any individual who 8 receives material that is designated “HIGHLY CONFIDENTIAL –ATTORNEYS’ 9 EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” (collectively 10 “HIGHLY SENSITIVE MATERIAL”), under this Order shall not prepare, 11 12 prosecute, supervise, or assist in the preparation or prosecution of any patent 13 application pertaining to the field of the invention of the patents-in-suit during the 14 pendency of this Action and for one year after its conclusion, including any 15 appeals. Nothing in this Section shall prevent any individual from sending non- 16 confidential prior art to an attorney involved in patent prosecution for purposes of 17 ensuring that such prior art is submitted to the U.S. Patent and Trademark Office 18 19 (or any similar agency of a foreign government) to assist a patent applicant in 20 complying with its duty of candor. Nothing in this provision shall prohibit any 21 attorney of record in this litigation from discussing with his/her client any aspect of 22 this case that is reasonably necessary for the prosecution or defense of any claim or 23 counterclaim in this litigation. Nothing in this provision shall apply to 24 reexamination proceedings, inter partes review, covered business method review, 25 26 or post grant review, except that such prosecution bar shall extend to assistance or 27 participation in discussions relating to drafting or amending claims in 28 1 reexamination, inter partes review, covered business method review, or post grant 2 review proceedings. 3 XI. SOURCE CODE 4 a) To the extent production of source code becomes necessary in this 5 case, a Producing Party may designate source code as “HIGHLY 6 CONFIDENTIAL - SOURCE CODE” if it comprises or includes confidential, 7 proprietary or trade secret source code. 8 b) Protected Material designated as “HIGHLY CONFIDENTIAL – 9 SOURCE CODE” shall be subject to all of the protections afforded to “HIGHLY 10 CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information including the 11 Prosecution Bar set forth in Paragraph 10, and may be disclosed only to the 12 individuals to whom “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 13 ONLY” information may be disclosed, as set forth in Paragraphs 9.3 and 9.4, with 14 the exception of Designated House Counsel. Access to Protected Material 15 designated as “HIGHLY CONFIDENTIAL – SOURCE CODE” shall be limited to 16 up to three (3) outside consultants or experts1 (i.e., not existing employees or 17 affiliates of a Party or an affiliate of a Party) retained for the purpose of this 18 litigation and approved to access such Protected Materials pursuant to paragraph 19 9.3(c) above. Any source code produced in discovery shall be made available for 20 inspection, in native, computer searchable format, during normal business hours or 21 at other mutually agreeable times, at an office of the Producing Party’s counsel or 22 another mutually agreed upon location. The source code is to be provided in native 23 format with the original path names (e.g., the directory tree pertinent to the 24 produced files). Native format means electronic files containing native text not 25 produced through any process involving optical character recognition. The 26 Receiving Party will make its initial request to view source code at least (5) 27 28 1 For the purposes of this paragraph, an outside consultant or expert is defined to include the outside consultant’s or 1 business days in advance of the proposed date of inspection. The source code 2 shall be made available for inspection on two secured computers (“Source Code 3 Computers”) in a secured room without Internet access or network access to other 4 computers, and the Receiving Party shall not copy, remove, or otherwise transfer 5 any portion of the source code onto any recordable media or recordable device. No 6 other devices capable of storage, recording, connecting to a LAN, an intranet, or 7 the Internet are permitted to be in the same room as the stand-alone computers. 8 c) The Producing Party may visually monitor the activities of the 9 Receiving Party’s representative during source code review, provided that the 10 monitoring takes place either from the entrance doorway to the review room or 11 through an external window into the room, and provided that the screens of the 12 Source Code Computers and the Note Taking Computer (discussed below) are not 13 visible to the Producing Party. Such monitoring may take place only to ensure that 14 no unauthorized electronic records of the source code are being created or 15 transmitted. This paragraph does not authorize the Producing Party to view or 16 record the Receiving Party’s work product; the Producing Party is expressly 17 prohibited from attempting to view or record such work product. The Receiving 18 Party’s work product includes without limitation: written notes, electronic notes, 19 the screens of the Source Code Computers or the Note Taking Computer during the 20 inspection, and the keystrokes entered on the Source Code Computers or the Note 21 Taking Computer during the inspection. This paragraph does not prohibit the 22 Producing Party from supervising the copying of notes from the Note Taking 23 Computer at the end of each day of inspection as described below; 24 d) In addition to the Source Code Computers, the Producing Party shall 25 make available a Note Taking Computer, with a current widely used word 26 processing program, for purposes of enabling the Receiving Party’s outside 27 counsel and/or experts to take notes relating to the source code material. The 28 Receiving Party’s outside counsel and/or experts may not copy the source code 1 into the notes. However, the notes may include filenames, function names, variable 2 names, and line numbers. The Receiving Party shall be able to copy the notes from 3 the Note Taking Computer onto a recordable device at the end of each day of 4 inspection under the supervision of the Producing Party; 5 e) The Receiving Party’s outside counsel and/or experts or consultants 6 may request that commercially available licensed software tools for reviewing and 7 searching source code be installed on the Source Code Computers. The Receiving 8 Party must provide the Producing Party with a CD/DVD/USB drive containing 9 such software tool(s) or a link for downloading such software tool(s), and any 10 necessary licenses, at least fourteen (14) days in advance of the date upon which 11 the Receiving Party wishes to have the additional software tools available for use 12 on the Source Code Computers. The Producing Party will install the foregoing 13 requested tools, however, the Producing Party will not install any tools that permit 14 the compiling of source code. The parties agree to install the following software 15 tools without objection, provided they are compatible with the Source Code 16 Computers’ operating system: Notepad++, Notepad++ SourceCookifier Plugin, 17 Kdiff3, Effective File Search, and AstroGrep; 18 f) The Receiving Party may request paper copies of limited portions of 19 source code that are reasonably necessary for the preparation of court filings, 20 pleadings, expert reports, or other papers, or for deposition or trial, but shall not 21 request paper copies for the purposes of reviewing the source code other than 22 electronically as set forth in paragraph (b) in the first instance. The Producing 23 Party shall provide all such source code in paper form including bates numbers and 24 the label “HIGHLY CONFIDENTIAL - SOURCE CODE.” The Producing Party 25 may challenge the amount of source code requested in hard copy form pursuant to 26 the dispute resolution procedure and timeframes set forth in Section 8 whereby the 27 Producing Party is the “Challenging Party” and the Receiving Party is the 28 “Designating Party” for purposes of dispute resolution. 1 g) The Receiving Party shall maintain a record of any individual who has 2 inspected any portion of the source code in electronic or paper form. The 3 Receiving Party shall maintain all paper copies of any printed portions of the 4 source code in a secured, locked area. The Receiving Party shall not create any 5 electronic or other images of the paper copies and shall not convert any of the 6 information contained in the paper copies into any electronic format. The 7 Receiving Party shall be permitted to make up to three additional copies of printed 8 source code. Additional paper copies are permitted if such additional copies are (1) 9 necessary to prepare court filings, pleadings, or other papers (including a testifying 10 expert’s expert report), (2) necessary for deposition, or (3) otherwise necessary for 11 the preparation of its case. Any paper copies used during a deposition shall be 12 retrieved by the Producing Party at the end of each day and must not be given to or 13 left with a court reporter or any other unauthorized individual. A Receiving Party 14 may include excerpts of source code in a pleading, exhibit, expert report, discovery 15 document, deposition transcript, or other Court document, provided that the source 16 code Documents are appropriately marked under this Order, restricted to those who 17 are entitled to have access to them as specified herein, and, if filed with the Court, 18 filed under seal in accordance with the Court’s rules, procedures and orders. 19 h) To the extent portions of source code are quoted in a Court Document, 20 either (1) the entire Court Document will be stamped and treated as “HIGHLY 21 CONFIDENTIAL - SOURCE CODE” or (2) those pages containing quoted source 22 code will be separately stamped and treated as HIGHLY CONFIDENTIAL - 23 SOURCE CODE; and 24 i) A Producing Party’s source code may only be transported by the 25 Receiving Party at the direction of a person authorized under Paragraph 11(b) 26 above to another person authorized under Paragraph 11(b) above, on paper via 27 hand carry, Federal Express or other similarly reliable courier, except as provided 28 in Paragraph 11(d). 1 XII. PROTECTED MATERIAL SUBPOENAED OR ORDERED 2 PRODUCED IN OTHER LITIGATION 3 If a Party is served with a subpoena or a court order issued in other litigation 4 that compels disclosure of any information or items designated in this action as 5 “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 6 ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” that Party must: 7 a) promptly notify in writing the Designating Party. Such notification 8 shall include a copy of the subpoena or court order; 9 b) promptly notify in writing the party who caused the subpoena or order 10 to issue in the other litigation that some or all of the material covered by the 11 subpoena or order is subject to this Protective Order. Such notification shall 12 include a copy of this Stipulated Protective Order; and 13 c) cooperate with respect to all reasonable procedures sought to be 14 pursued by the Designating Party whose Protected Material may be affected. 15 If the Designating Party timely seeks a protective order, the Party served 16 with the subpoena or court order shall not produce any information designated in 17 this action as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – 18 ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE 19 CODE” before a determination by the court from which the subpoena or order 20 issued, unless the Party has obtained the Designating Party’s permission. The 21 Designating Party shall bear the burden and expense of seeking protection in that 22 court of its confidential material – and nothing in these provisions should be 23 construed as authorizing or encouraging a Receiving Party in this action to disobey 24 a lawful directive from another court. 25 XIII. A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE 26 PRODUCED IN THIS LITIGATION 27 a) The terms of this Order are applicable to information produced by a 28 Non-Party in this action and designated as “CONFIDENTIAL” or “HIGHLY 1 CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY 2 CONFIDENTIAL – SOURCE CODE”. Such information produced by Non-Parties 3 in connection with this litigation is protected by the remedies and relief provided 4 by this Order. Nothing in these provisions should be construed as prohibiting a 5 Non-Party from seeking additional protections. 6 b) In the event that a Party is required, by a valid discovery request, to 7 produce a Non-Party’s confidential information in its possession, and the Party is 8 subject to an agreement with the Non-Party not to produce the Non-Party’s 9 confidential information, then the Party shall: 10 1. promptly notify in writing the Requesting Party and the Non- 11 Party that some or all of the information requested is subject to a confidentiality 12 agreement with a Non-Party; 13 2. promptly provide the Non-Party with a copy of the Stipulated 14 Protective Order in this litigation, the relevant discovery request(s), and a 15 reasonably specific description of the information requested; and 16 3. make the information requested available for inspection by the 17 Non-Party. 18 c) If the Non-Party fails to object or seek a protective order from this court 19 within 14 days of receiving the notice and accompanying information, the 20 Receiving Party may produce the Non-Party’s confidential information responsive 21 to the discovery request. If the Non-Party timely seeks a protective order, the 22 Receiving Party shall not produce any information in its possession or control that 23 is subject to the confidentiality agreement with the Non-Party before a 24 determination by the court. Absent a court order to the contrary, the Non-Party 25 shall bear the burden and expense of seeking protection in this court of its 26 Protected Material. 27 28 1 XIV. UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL 2 If a Receiving Party learns that, by inadvertence or otherwise, it has 3 disclosed Protected Material to any person or in any circumstance not authorized 4 under this Stipulated Protective Order, the Receiving Party must immediately (a) 5 notify in writing the Designating Party of the unauthorized disclosures, (b) use its 6 best efforts to retrieve all unauthorized copies of the Protected Material, (c) inform 7 the person or persons to whom unauthorized disclosures were made of all the terms 8 of this Order, and (d) request such person or persons to execute the 9 “Acknowledgment and Agreement to Be Bound” that is attached hereto as Exhibit 10 A. 11 XV. INADVERTENT PRODUCTION OF PRIVILEGED OR 12 OTHERWISE PROTECTED MATERIAL 13 When a Producing Party gives notice to Receiving Parties that certain 14 inadvertently produced material is subject to a claim of privilege or other 15 protection, the obligations of the Receiving Parties are those set forth in Federal 16 Rule of Civil Procedure 26(b)(5)(B). This provision is not intended to modify 17 whatever procedure may be established in an e-discovery order that provides for 18 production without prior privilege review. Pursuant to Federal Rule of Evidence 19 502(d) and (e), insofar as the parties reach an agreement on the effect of disclosure 20 of a communication or information covered by the attorney-client privilege or 21 work product protection, the parties may incorporate their agreement in the 22 stipulated protective order submitted to the court. 23 XVI. MISCELLANEOUS 24 16.1 Right to Further Relief. Nothing in this Order abridges the right of any 25 person to seek its modification by the court in the future. 26 16.2 Right to Assert Other Objections. By stipulating to the entry of this 27 Protective Order no Party waives any right it otherwise would have to object to 28 disclosing or producing any information or item on any ground not addressed in 1 this Stipulated Protective Order. Similarly, no Party waives any right to object on 2 any ground to use in evidence of any of the material covered by this Protective 3 Order. 4 16.3 Export Control. Disclosure of Protected Material shall be subject to all 5 applicable laws and regulations relating to the export of technical data contained in 6 such Protected Material, including the release of such technical data to foreign 7 persons or nationals in the United States or elsewhere. The Producing Party shall 8 be responsible for identifying any such controlled technical data, and the Receiving 9 Party shall take measures necessary to ensure compliance. 10 16.4 Filing Protected Material. Without written permission from the 11 Designating Party or a court order secured after appropriate notice to all interested 12 persons, a Party may not file in the public record in this action any Protected 13 Material. A Party that seeks to file under seal any Protected Material must comply 14 with Civil Local Rule 79-5. Protected Material may only be filed under seal 15 pursuant to a court order authorizing the sealing of the specific Protected Material 16 at issue. Pursuant to Civil Local Rule 79-5, a sealing order will issue only upon a 17 request establishing that the Protected Material at issue is privileged, protectable as 18 a trade secret, or otherwise entitled to protection under the law. If a Receiving 19 Party's request to file Protected Material under seal pursuant to Civil Local Rule 20 79-5.2.2 is denied by the court, then the Receiving Party may file the Protected 21 Material in the public record pursuant to Civil Local Rule 79-5.2.2 unless 22 otherwise instructed by the court. 23 XVII. FINAL DISPOSITION 24 Within 60 days after the final disposition of this action, as defined in Section 25 6, each Receiving Party must return all Protected Material to the Producing Party 26 or destroy such material. As used in this subdivision, “all Protected Material” 27 includes all copies, abstracts, compilations, summaries, and any other format 28 reproducing or capturing any of the Protected Material. Whether the Protected 1 || Material is returned or destroyed, the Receiving Party must submit a written 2 || certification to the Producing Party (and, if not the same person or entity, to the 3 || Designating Party) by the 60-day deadline that (1) identifies (by category, where 4 || appropriate) all the Protected Material that was returned or destroyed and (2) 5 || affirms that the Receiving Party has not retained any copies, abstracts, 6 || compilations, summaries or any other format reproducing or capturing any of the 7 || Protected Material. Notwithstanding this provision, Counsel are entitled to retain 8 || an archival copy of all pleadings, motion papers, trial, deposition, and hearing 9 || transcripts, legal memoranda, correspondence, deposition and trial exhibits, expert 10 || reports, attorney work product, and consultant and expert work product, even if 11 ||such materials contain Protected Material. Any such archival copies that contain or 12 || constitute Protected Material remain subject to this Protective Order as set forth in 13 □□ Section 4 (DURATION). 14 15 6 FOR GOOD CAUSE SHOWN, IT IS SO ORDERED. 17 18 de DATED: September 27, 2019 19 iit D. EARLY : é 0 nited States Magistrate Judge 21 22 23 24 25 26 27 28 57 1 Brandon C. Fernald (Bar No. 222429) Patrick S. Park (CA Bar No. 246348) 2 FERNALD LAW GROUP patrick.park@dlapiper.com 510 West Sixth Street, Suite 700 Nandan Padmanabhan (CA Bar No. 280309) 3 Los Angeles, California 90014 Nandan.padmanabhan@us.dlapiper.com Tel: 323-410-0320 DLA Piper LLP (US) 4 Fax: 323-410-0330 2000 Avenue of the Stars Email: Suite 400 North Tower 5 brandon.fernald@fernaldlawgroup.com Lose Angeles, California 90067 Tel: 310.595.3000 6 Jonathon T. Suder (Pro Hac Vice to be Fax: 310.595.3300 filed) 7 Corby R. Vowell (Pro Hac Vice) Kathryn Riley Grasso (CA Bar No. 211187) FRIEDMAN, SUDER & COOKE kathryn.riley@dlapiper.com 8 Tindall Square Warehouse No. 1 DLA PIPER LLP (US) 604 East 4th Street, Suite 200 401 B Street, Suite 1700 9 Fort Worth, Texas 76102 San Diego, CA 92101 Tel: (817) 334-0400 Tel: 619.699.2700 10 Fax: (817) 334-0401 Fax: 619.699.2701 Email: jts@fsclaw.com 11 Email: vowell@fsclaw.com Joseph P. Lavelle (Pro Hac Vice) joe.lavelle@dlapiper.com 12 Attorneys for Plaintiff DLA PIPER LLP (US) SOFTVAULT SYSTEMS, INC. 500 Eighth Street, NW 13 Washington, DC 20004 Tel: 202.799.4000 14 Fax: 202.799.5000 15 Attorneys for Defendant BMW of North America, LLC 16 17 UNITED STATES DISTRICT COURT 18 CENTRAL DISTRICT OF CALIFORNIA 19 20 SOFTVAULT SYSTEMS, INC., CASE NO. 8-19-cv-0328-DOC-JDE 21 Plaintiff, ACKNOWLEGMENT AND AGREEMENT TO BE BOUND BY 22 v. PROTECTIVE ORDER 23 BMW OF NORTH AMERICA, JURY TRIAL DEMANDED LLC, 24 Defendant. Judge: Hon. David O. Carter 25 26 27 28 1 I, __________________________________, declare and say that: 2 1. I am employed as 3 4 _____________________________________________ by 5 _____________________________________________________________. 6 2. I have read the Protective Order entered in the above captioned case, and 7 have received a copy of the Protective Order. 8 9 3. I promise that I will use any and all “CONFIDENTIAL,” “HIGHLY 10 CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY 11 CONFIDENTIAL – SOURCE CODE” information, as defined in the 12 13 Protective Order, given to me only in a manner authorized by the 14 Protective Order, and only to assist counsel in the litigation of this matter. 15 4. I promise that I will not disclose or discuss such “CONFIDENTIAL,” 16 17 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or 18 “HIGHLY CONFIDENTIAL – SOURCE CODE” information with 19 anyone other than the persons described in paragraphs 9.3-9.4 of the 20 21 Protective Order. 22 5. I acknowledge that, by signing this agreement, I am subjecting myself to 23 the jurisdiction of the United States District Court for the Central District 24 25 of California with respect to enforcement of the Protective Order. 26 6. I understand that any disclosure or use of “CONFIDENTIAL,” 27 -1- 28 “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or 1 “HIGHLY CONFIDENTIAL – SOURCE CODE” information in any 2 manner contrary to the provisions of the Protective Order may subject me 3 4 to sanctions for contempt of court. 5 6 Date: ________________ 7 8 9 ___________________________ 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 -2- 28