M A-COM Technology Solutions Holdings, Inc. et al v. Infineon Technologies AG et al

Filing 297

PROTECTIVE ORDER by Magistrate Judge Paul L. Abrams granting Stipulation for Protective Order 296 NOTE: CHANGES MADE BY THE COURT (Attachments: # 1 Attachment) (sbu)

NOTE: CHANGES MADE BY THE COURT
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Amanda Tessar (pro hac vice)
[e-mail]
PERKINS COIE LLP
1900 Sixteenth Street, Suite 1400
Denver, CO 80202-5255
Telephone: [phone]
Facsimile: 303.291.2400
ATTORNEY FOR PLAINTIFFS
(Additional Counsel Listed On Signature Page)

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DAVID G. WILLE (pro hac vice)
[e-mail]
BAKER BOTTS L.L.P.
2001 Ross Avenue, Suite 600
Dallas, TX 75201
Telephone: [phone] Fax: [phone]

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ATTORNEY FOR DEFENDANTS
(Additional Counsel Listed On Signature Page)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

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MACOM TECHNOLOGY
SOLUTIONS HOLDINGS, INC., et al.,

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Case No. CV 16-02859 CAS (PLAx)
STIPULATED PROTECTIVE
ORDER1
[Discovery Proposed Stipulation:
Referenced before Magistrate pursuant
to Hon. Christina A. Snyder's
procedures]

Plaintiffs,

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v.
INFINEON TECHNOLOGIES AG, et
al.,

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Magistrate Judge: Hon. Paul L Abrams

Defendants.

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This Stipulated Protective Order is based substantially on the model
protective order provided under Magistrate Judge Paul L. Abrams’s Procedures.
STIPULATED PROTECTIVE ORDER
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1.

INTRODUCTION

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A.

Purposes And Limitations

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Discovery in this action is likely to involve production of confidential,

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proprietary, or private information for which special protection from public

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disclosure and from use for any purpose other than prosecuting this litigation may

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be warranted. Accordingly, the parties hereby stipulate to and petition the Court to

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enter the following Stipulated Protective Order. The parties acknowledge that this

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Order does not confer blanket protections on all disclosures or responses to

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discovery and that the protection it affords from public disclosure and use extends

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only to the limited information or items that are entitled to confidential treatment

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under the applicable legal principles. The parties further acknowledge, as set forth

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in Section 14.3, below, that this Stipulated Protective Order does not entitle them to

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file confidential information under seal; Civil Local Rule 79-5 sets forth the

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procedures that must be followed and the standards that will be applied when a

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party seeks permission from the Court to file material under seal.

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B.

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This action will involve the production of confidential, proprietary, or private

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information including documents and discussions regarding trade secrets, customer

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and pricing lists, and other valuable research, development, commercial, financial,

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technical and/or proprietary information for which special protection from public

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disclosure and from use for any purpose other than prosecution of this action is

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warranted. Such confidential and proprietary materials and information consist of,

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among other things, confidential business or financial information, confidential

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business practices, or other confidential research, development, or commercial

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information, information otherwise generally unavailable to the public and/or the

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Parties’ competitors, or which may be privileged or otherwise protected from

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disclosure under state or federal statutes, court rules, case decisions, or common

Good Cause Statement

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STIPULATED PROTECTIVE ORDER
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law. For example, this action involves disputes about patent infringement and,

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thus, will require the production of confidential product information.

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The Parties also anticipate the production of documents that are subject to

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U.S. Export Control Laws such as the U.S. Arms Export Control Act (22 U.S.C. §§

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2751-2799), the International Traffic in Arms Regulations (22 C.F.R §§ 120-130)

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(“ITAR”), the Export Administration Regulations (15 C.F.R § 730 et seq.) (“EAR”)

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and/or any regulations and orders administered by the Treasury Department’s

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Office of Foreign Assets Control Regulations (31 CFR Chapter V) (collectively,

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“U.S. Export Control Laws”). Accordingly, to expedite the flow of information, to

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facilitate the prompt resolution of disputes over confidentiality of discovery

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materials, to adequately protect information the parties are entitled and/or required

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to keep confidential, to ensure that the parties are permitted reasonable necessary

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uses of such material in preparation for and in the conduct of trial, to address their

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handling at the end of the litigation, and serve the ends of justice, a protective order

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for such information is justified in this matter. It is the intent of the parties that

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information will not be designated as confidential for tactical reasons and that

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nothing be so designated without a good faith belief that it has been maintained in a

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confidential, non-public manner, and there is good cause why it should not be part

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of the public record of this case.

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2.

DEFINITIONS

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2.1

Action: the above-captioned case entitled MACOM Technology

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Solutions Holdings, Inc., et al. v. Infineon Technologies AG, et al., Case No. CV

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16-02859, currently pending in the United States District Court for the Central

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District of California.

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2.2

Challenging Party: a Party or Non-Party that challenges the

designation of information or items under this Order.
2.3

Counsel: Outside Counsel of Record and House Counsel (as well as

their support staff).
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2.4

Designating Party: a Party or Non-Party that designates information or

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items that it produces in disclosures or in responses to discovery as

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“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL  ATTORNEYS’ EYES

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ONLY,” and/or “ SENSITIVE  SUBJECT TO EXPORT CONTROL.”

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2.5

Disclosure or Discovery Material: all items or information, regardless

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of the medium or manner in which it is generated, stored, or maintained (including,

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among other things, testimony, transcripts, and tangible things), that are produced

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or generated in disclosures or responses to discovery in this matter.

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2.6

Expert: a person with specialized knowledge or experience in a matter

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pertinent to the litigation who has been retained by a Party or its Counsel to serve as

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an expert witness or as a consultant in this Action.

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2.7

House Counsel: attorneys who are employees of a party to this Action.

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House Counsel does not include Outside Counsel of Record or any other outside

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counsel.

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2.8

Non-Party: any natural person, partnership, corporation, association,

or other legal entity not named as a Party to this action.
2.9

Outside Counsel of Record: attorneys who are not employees of a

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party to this Action but are retained to represent or advise a party to this Action and

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have appeared in this Action on behalf of that party or are affiliated with a law firm

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that has appeared on behalf of that party, including support staff.

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2.10 Party: any party to this Action, including all of its officers, directors,

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employees, consultants, retained experts, and Outside Counsel of Record (and their

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support staffs).

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2.11 Producing Party: a Party or Non-Party that produces Disclosure or
Discovery Material in this Action.

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2.12 Professional Vendors: persons or entities that provide litigation

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support services (e.g., photocopying, videotaping, translating, preparing exhibits or

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STIPULATED PROTECTIVE ORDER
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demonstrations, and organizing, storing, or retrieving data in any form or medium)

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and their employees and subcontractors.

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2.13 Protected Material: any Disclosure or Discovery Material that is

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designated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL  ATTORNEYS’

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EYES ONLY,” and/or “ SENSITIVE  SUBJECT TO EXPORT CONTROL.”

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2.14 Receiving Party: a Party that receives Disclosure or Discovery
Material from a Producing Party.

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3.

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The protections conferred by this Stipulation and Order cover not only

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Protected Material (as defined above), but also (1) any information copied or

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extracted from Protected Material; (2) all copies, excerpts, summaries, or

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compilations of Protected Material; and (3) any testimony, conversations, or

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presentations by Parties or their Counsel that might reveal Protected Material.

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SCOPE

Any use of Protected Material at trial shall be governed by the orders of the
trial judge. This Order does not govern the use of Protected Material at trial.

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4.

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Even after final disposition of this litigation, the confidentiality obligations

DURATION

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imposed by this Order shall remain in effect until a Designating Party agrees

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otherwise in writing or a court order otherwise directs. Final disposition shall be

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deemed to be the later of (1) dismissal of all claims and defenses in this action, with

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or without prejudice; and (2) final judgment herein after the completion and

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exhaustion of all appeals, rehearings, remands, trials, or reviews of this action,

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including the time limits for filing any motions or applications for extension of time

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pursuant to applicable law.

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5.

DESIGNATING PROTECTED MATERIAL

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5.1

Exercise of Restraint and Care in Designating Material for Protection.

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Each Party or Non-Party that designates information or items for protection under

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this Order must take care to limit any such designation to specific material that
STIPULATED PROTECTIVE ORDER
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qualifies under the appropriate standards. The Designating Party must designate for

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protection only those parts of material, documents, items, or oral or written

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communications that qualify so that other portions of the material, documents,

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items, or communications for which protection is not warranted are not swept

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unjustifiably within the ambit of this Order.

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Mass, indiscriminate, or routinized designations are prohibited. Designations

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that are shown to be clearly unjustified or that have been made for an improper

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purpose (e.g., to unnecessarily encumber the case development process or to

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impose unnecessary expenses and burdens on other parties) may expose the

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Designating Party to sanctions.

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If it comes to a Designating Party’s attention that information or items that it

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designated for protection do not qualify for protection, that Designating Party must

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promptly notify all other Parties that it is withdrawing the inapplicable designation.

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5.2

Available Designations. Any Producing Party may designate

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Disclosure or Discovery Material with any of the following designations, provided

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that it meets the requirements for such designations as provided for herein: (a)

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“CONFIDENTIAL”; (b) “HIGHLY CONFIDENTIAL  ATTORNEYS’ EYES

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ONLY”; or (c) “SENSITIVE  SUBJECT TO EXPORT CONTROL.” Depending

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on the nature and substance of the document, it may be designated with more than

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one designation under this order.

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(a)

A Producing Party may designate Disclosure or Discovery Material as

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“CONFIDENTIAL” if it contains or reflects confidential, proprietary, and/or

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commercially-sensitive information.

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(b)

A Producing Party may designate Disclosure or Discovery Material as

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“HIGHLY CONFIDENTIAL  ATTORNEYS’ EYES ONLY” if it contains or

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reflects information that is extremely confidential and/or sensitive in nature and the

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Producing Party reasonably believes that the disclosure of such Disclosure or

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Discovery Material to a Party or to the public is likely to cause economic harm or
STIPULATED PROTECTIVE ORDER
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significant competitive disadvantage to the Producing Party. The Parties agree that

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the following information, if non-public, shall be presumed to merit the “HIGHLY

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CONFIDENTIAL  ATTORNEYS’ EYES ONLY” designation: trade secrets,

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pricing information, financial data, sales information, sales or marketing forecasts

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or plans, business plans, sales or marketing strategy, product development

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information, engineering documents, testing documents, employee information, and

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other non-public information of similar competitive and business sensitivity.

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(c)

A Producing Party may designate Disclosure or Discovery Material as

“SENSITIVE  SUBJECT TO EXPORT CONTROL” if the Producing Party has a

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reasonable and good faith belief that such Disclosure or Discovery Material is

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subject to U.S. Export Control Laws.

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5.3

Manner and Timing of Designations. Except as otherwise provided in

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this Order (see, e.g., second paragraph of section 5.3(a) below), or as otherwise

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stipulated or ordered, Disclosure or Discovery Material that qualifies for protection

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under this Order must be clearly so designated before the material is disclosed or

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produced.

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Designation in conformity with this Order requires:

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(a)

for information in documentary form (e.g., paper or electronic

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documents, but excluding transcripts of depositions or other pretrial or trial

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proceedings), that the Producing Party affix, at a minimum, a designation (see §

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5.2), to each page that contains protected material.

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A Party or Non-Party that makes original documents available for inspection

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need not designate them for protection until after the inspecting Party has indicated

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which documents it would like copied and produced. During the inspection and

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before the designation, all of the material made available for inspection shall be

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deemed Protected Material. After the inspecting Party has identified the documents

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it wants copied and produced, the Producing Party must determine which

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documents, or portions thereof, qualify for protection under this Order. Then,
STIPULATED PROTECTIVE ORDER
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before producing the specified documents, the Producing Party must affix a

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designation to each page that contains Protected Material.

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(b)

for testimony given in deposition or in other pretrial proceedings, that

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the Designating Party identifies on the record, before the close of the deposition,

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hearing, or other proceeding, all protected testimony and specify the level of

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protection being asserted. When it is impractical to identify separately each portion

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of testimony that is entitled to protection and it appears that substantial portions of

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the testimony may qualify for protection, the Designating Party may invoke on the

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record (before the deposition, hearing, or other proceeding is concluded) a right to

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have up to 21 days to identify the specific portions of the testimony as to which

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protection is sought and to specify the level of protection being asserted, during

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which time the transcript shall be treated as if it had been designated “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY” and “SENSITIVE – SUBJECT

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TO EXPORT CONTROL.” The Designating Party shall ask the court reporter to

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follow the convention that transcripts containing Protected Material should have an

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obvious legend on the title page that the transcript contains Protected Material.

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Only those portions of the testimony that are appropriately designated for protection

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within the 21 days shall be covered thereafter by the provisions of this Stipulated

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Protective Order. If deadlines and activities in the case require the designations to

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be completed in less than 21 days, the Parties shall work together in good faith to

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accommodate reasonable requests for designation of transcripts in less than 21

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days. The use of a document as an exhibit at a deposition in a manner consistent

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with the requirements of this Order shall not in any way affect its designation as

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“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

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ONLY,” or “SENSITIVE – SUBJECT TO EXPORT CONTROL.”

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(c)

for information produced in some form other than documentary and

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for any other tangible items, that the Producing Party affix an appropriate

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designation (e.g., “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL 
STIPULATED PROTECTIVE ORDER
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ATTORNEYS’ EYES ONLY,” or “SENSITIVE  SUBJECT TO EXPORT

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CONTROL”) in a prominent place on the exterior of the container or containers in

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which the information is stored, if it is impractical to mark the item itself. If only a

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portion or portions of the information warrants protection, the Producing Party, to

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the extent practicable, shall identify the protected portion(s).

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5.4

Inadvertent Failures to Designate. If timely corrected, an inadvertent

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failure to designate qualified information or items does not, standing alone, waive

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the Designating Party’s right to secure protection under this Order for such

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material. Upon timely correction of a designation, the Receiving Party must make

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reasonable efforts to assure that the material is treated in accordance with the

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provisions of this Order.

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6.

CHALLENGING CONFIDENTIALITY DESIGNATIONS

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6.1

Timing of Challenges. Any Party or Non-Party may challenge a

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designation of confidentiality at any time that is consistent with the Court’s

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Scheduling Order.

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6.2

Meet and Confer. The Challenging Party shall initiate the dispute

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resolution process under Local Rule 37.1, et seq. Any motion challenging

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confidentiality designations must strictly comply with the procedures set forth in

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Local Rules 37-1, 37-2, and 37-3, unless the urgency of the matter justifies use of

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the ex parte motion procedures of the Central District of California or the presiding

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judge’s rules.

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6.3

Burden. The burden of persuasion in any such challenge proceeding

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shall be on the Designating Party. Frivolous challenges, and those made for an

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improper purpose (e.g., to harass or impose unnecessary expenses and burdens on

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other parties) may expose the Challenging Party to sanctions. Unless the

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Designating Party has waived or withdrawn the confidentiality designation, all

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parties shall continue to afford the material in question the level of protection to

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which it is entitled under the Producing Party’s designation until the Court rules on

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the challenge.

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7.

ACCESS TO AND USE OF PROTECTED MATERIAL

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7.1

Basic Principles. A Receiving Party may use Protected Material that is

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disclosed or produced by another Party or by a Non-Party in connection with this

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Action only for prosecuting, defending, or attempting to settle this Action or any

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related appellate proceeding. For the avoidance of doubt, all Protected Material

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shall not be used in any other litigation, patent prosecution or acquisition, patent

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reexamination or reissue proceedings, or any business or competitive purpose or

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function. Such Protected Material may be disclosed only to the categories of

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persons and under the conditions described in this Order. When the Action has

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been terminated, a Receiving Party must comply with the provisions of § 15

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(FINAL DISPOSITION) below.

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Protected Material must be stored and maintained by a Receiving Party at a

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location and in a secure manner that ensures that access is limited to the persons

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authorized under this Order.

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7.2

Disclosure or Discovery Material designated as “CONFIDENTIAL.”

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(a)

Unless otherwise ordered by the Court, Disclosure or Discovery

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Material designated as “CONFIDENTIAL” may be disclosed only to the following:

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(1) the Receiving Party’s Outside Counsel of Record in this Action, as

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well as employees of said Outside Counsel of Record to whom it is

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reasonably necessary to disclose the information for this Action;

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(2) the officers, directors, and employees (including House Counsel)

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of the Receiving Party to whom disclosure is reasonably necessary for this

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Action;

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(3) Experts (as defined in this Order) of the Receiving Party, after
following the procedures set forth in Section 8, to whom disclosure is

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reasonably necessary for this Action and who have signed the

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“Acknowledgment and Agreement to Be Bound” (Exhibit A);

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(4) the Court and its personnel;

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(5) court reporters and their staff;

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(6) professional jury or trial consultants, mock jurors, and

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Professional Vendors to whom disclosure is reasonably necessary for this

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Action and who have signed the “Acknowledgment and Agreement to Be

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Bound” (Exhibit A);

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(7) the author or recipient of a document containing the information or

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a custodian or other person who otherwise possessed or knew the

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information;

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(8) Rule 30(b)(6) deponents for a Party that employed an author or
recipient of a document containing the information; and

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(9) any mediator or settlement officer, and their supporting personnel,

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mutually agreed upon by any of the Parties engaged in settlement

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discussions.

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7.3

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Disclosure or Discovery Material designated “HIGHLY

CONFIDENTIAL  ATTORNEYS’ EYES ONLY.”
(a)

Unless otherwise ordered by the Court, Disclosure or Discovery

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Material designated as “HIGHLY CONFIDENTIAL  ATTORNEYS’ EYES

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ONLY” may be disclosed only to the following:

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(1) the Receiving Party’s Outside Counsel of Record in this Action, as

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well as employees of said Outside Counsel of Record, to whom it is

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reasonably necessary to disclose the information for this Action;

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(2) Experts (as defined in this Order) of the Receiving Party, after

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following the procedures set forth in Section 8, to whom disclosure is

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reasonably necessary for this Action and who have signed the

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“Acknowledgment and Agreement to Be Bound” (Exhibit A);
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(3) the Court and its personnel;

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(4) court reporters and their staffs

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(5) professional jury or trial consultants, mock jurors, and

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Professional Vendors to whom disclosure is reasonably necessary for this

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Action and who have signed the “Acknowledgment and Agreement to Be

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Bound” (Exhibit A);

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(6) the author or recipient of a document containing the information or

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a custodian or other person who otherwise possessed or knew the

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information;

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(7) Rule 30(b)(6) deponents for a Party that employed an author or
recipient of a document containing the information; and

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(8) any mediator or settlement officer, and their supporting personnel,

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mutually-agreed upon by any of Parties engaged in settlement discussions.

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7.4

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Disclosure or Discovery Material Designated as “SENSITIVE 

SUBJECT TO EXPORT CONTROL.”
(a)

Unless otherwise ordered by the Court, and except as to the Court

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and its personnel, Disclosure of Discovery Material designated as “SENSITIVE 

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SUBJECT TO EXPORT CONTROL” may be released, disclosed, or made

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accessible only to U.S. Persons (as that term is defined at 22 C.F.R. § 120.15)

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(hereafter “U.S. Persons”) that are not named on any restricted or denied

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party/individual/entity list maintained by relevant government agencies, as

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determined by an appropriate screening process performed by the Designating Party

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releasing the Disclosure or Discovery Material designated “SENSITIVE 

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SUBJECT TO EXPORT CONTROL” and who have signed the “Acknowledgment

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and Agreement to Be Bound” (Exhibit A). This restriction applies to any

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Disclosure or Discovery Material designated as “SENSITIVE  SUBJECT TO

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EXPORT CONTROL,” whether stored electronically on a server or otherwise.

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(b)

In addition to the other requirements of this Order, by accepting

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Disclosure or Discovery Material designated as “SENSITIVE  SUBJECT TO

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EXPORT CONTROL,” the Receiving Party represents and warrants that he/she/it

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is a U.S. Person and that the Receiving Party will comply with all applicable

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export, import, and sanction laws, regulations, orders, and authorizations.

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(c)

To the extent that any Disclosure or Discovery Material includes a

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distribution limitation statement from the Department of Defense or any branch for

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the U.S. Military, the Receiving Party further represents and warrants that he/she/it

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will comply with the limitation restrictions as set forth in such Disclosure or

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Discovery Material as to the disclosure and distribution of any such Disclosure or

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Discovery Material.

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(d)

When testimony is given at a deposition about Disclosure or Discovery

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Material that is designated “SENSITIVE  SUBJECT TO EXPORT CONTROL”

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or when Disclosure or Discovery Material designated “SENSITIVE  SUBJECT

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TO EXPORT CONTROL” is produced at a deposition, the Designating Party may

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exclude from the deposition all persons other than those to whom the Protected

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Material may be disclosed under this Order.

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(e)

Disclosure or Discovery Material that is designated as “SENSITIVE 

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SUBJECT TO EXPORT CONTROL” may only be filed with a court under seal,

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identified as being subject to this Protective Order as Disclosure or Discovery

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Material that is designated as “SENSITIVE  SUBJECT TO EXPORT

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CONTROL,” and protected from being opened except by court order.

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(f)

At a hearing, Disclosure or Discovery Material that is designated as

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“SENSITIVE  SUBJECT TO EXPORT CONTROL” may only be introduced or

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disclosed in a closed courtroom or in chambers, subject to approval of the Court.

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No persons except for those permitted access by this Protective Order shall be

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permitted to attend any hearing or trial at such time as Disclosure or Discovery

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Material that is designated as “SENSITIVE  SUBJECT TO EXPORT

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CONTROL” is disclosed.

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(g)

A party which reasonably anticipates that it will produce or that it will

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be requested to produce information or material at a hearing or discovery

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proceeding that is or will be designated as “SENSITIVE  SUBJECT TO EXPORT

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CONTROL” must notify all parties of the same within 5 days of receiving notice of

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the hearing or discovery proceeding. Parties who expect to attend any hearing or

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discovery proceeding where notice has been given about the possible disclosure of

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Disclosure or Discovery Material designated as “SENSITIVE  SUBJECT TO

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EXPORT CONTROL” pursuant to this paragraph must provide to the Designating

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Party the names and sufficient personal information necessary to conduct the

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screening described in § 7.4(a) above of all persons whom wish to attend the

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hearing or discovery proceeding. The names and identifying information must be

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provided to the Designating Party at least 14 calendar days before the date noticed

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for the hearing or discovery proceeding. The Designating Party will respond no

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later than 3 days before the hearing or discovery proceedings with the results of the

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screening. Any party that fails to timely provide the names and necessary

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identifying information may waive its right to be present at the subject hearing or

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discovery proceeding.

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8.

PROCEDURES FOR APPROVING OR OBJECTING TO
DISCLOSURE OF “CONFIDENTIAL” AND “HIGHLY
CONFIDENTIAL  ATTORNEYS’ EYES ONLY”
INFORMATION OR ITEMS TO EXPERTS.

8.1

Unless otherwise ordered by the court or agreed to in writing by the

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Designating Party, a Party that seeks to disclose to an Expert (as defined in this
Order) any information or item that has been designated “CONFIDENTIAL” or
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” pursuant to
paragraphs 7.2(a)(3) or 7.3(a)(2) first must make a written request to the
Designating Party that (1) sets forth the full name of the Expert and his or her
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business address, (2) attaches a copy of the Expert’s current resume, (3) identifies

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the Expert’s current employer(s), (4) identifies each person or entity from whom the

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Expert has received compensation or funding for work in his or her areas of

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expertise or to whom the expert has provided professional services, including in

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connection with a litigation, at any time during the preceding five years,2 and

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(5) identifies any previous or current relationship (personal or professional) with

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any of the Parties to this action; (6) identifies (by name and number of the case,

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filing date, and location of court) any litigation in connection with which the Expert

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has offered expert testimony, including through a declaration, report, or testimony

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at a deposition or trial, during the preceding five years; and (7) provides a copy of a

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signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A) for the

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Expert.

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8.2

A Party that makes a request and provides the information specified in

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the preceding respective paragraph may disclose the subject Protected Material to

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the identified Expert unless, within 10 days of delivering the request, the Party

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receives a written objection from the Designating Party. Any such objection must

17

set forth in detail the grounds on which it is based.

18

8.3

A Party that receives a timely written objection must meet and confer

19

with the Designating Party (through direct voice-to-voice dialogue) to try to resolve

20

the matter by agreement within seven days of the written objection. If no

21

agreement is reached, the Party seeking to make the disclosure to the Expert may

22

file a motion seeking permission from the court to do so. Any such motion must

23

describe the circumstances with specificity, set forth in detail the reasons why the

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25
26
27
28

2

If the Expert believes any of this information is subject to a confidentiality
obligation to a third-party, then the Expert should provide whatever information the
Expert believes can be disclosed without violating any confidentiality agreements,
and the Party seeking to disclose to the Expert shall be available to meet and confer
with the Designating Party regarding any such engagement.
STIPULATED PROTECTIVE ORDER
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1

disclosure to the Expert is reasonably necessary, assess the risk of harm that the

2

disclosure would entail, and suggest any additional means that could be used to

3

reduce that risk. In addition, any such motion must be accompanied by a competent

4

declaration describing the parties’ efforts to resolve the matter by agreement (i.e.,

5

the extent and the content of the meet and confer discussions) and setting forth the

6

reasons advanced by the Designating Party for its refusal to approve the disclosure.

7

If circumstances warrant, the moving party may follow the ex parte motion

8

procedures of the Central District of California and the presiding judge.

9

In any such proceeding, the Party opposing disclosure to the Expert shall

10

bear the burden of proving that the risk of harm that the disclosure would entail

11

(under the safeguards proposed) outweighs the Receiving Party’s need to disclose

12

the Protected Material to its Expert.

13

9.

PROSECUTION BAR

14

(a)

Absent written consent from the Producing Party, any individual who

15

reviews Protected Material designated as “HIGHLY CONFIDENTIAL 

16

ATTORNEYS’ EYES ONLY” shall not be engaged in any Prosecution Activity (as

17

defined below) pertaining to semiconductor devices comprising gallium nitride

18

(GaN) epitaxial layers on either silicon (Si) or silicon carbide (SiC) substrates,

19

before any foreign or domestic agency, including the United States Patent and

20

Trademark Office (“the Patent Office”) for a period of 1 year following the final

21

disposition of this action, as defined in Section 4 above. Prosecution Activity shall

22

mean any activity related to the preparation or prosecution (for any person or entity)

23

of patent applications pertaining to semiconductor devices comprising GaN

24

epitaxial layers on either Si or SiC substrates or counseling clients regarding such

25

preparation or prosecution, including but not limited to providing any advice,

26

counseling, preparing, prosecuting, editing, amending, and/or drafting of claims, or

27

communication with a domestic or foreign patent office for purpose of allowance of

28

any claims, for any patent application, reexamination, or reissue application before
STIPULATED PROTECTIVE ORDER
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1

any domestic or foreign patent office. Nothing in this paragraph shall prevent any

2

attorney from sending non-confidential prior art to an attorney involved in patent

3

prosecution for purposes of ensuring that such prior art is submitted to the Patent

4

Office (or any similar agency of a foreign government) to assist a patent applicant

5

in complying with its duty of candor. Nothing in this provision shall prohibit any

6

attorney of record in this litigation from discussing any aspect of this case that is

7

reasonably necessary for the prosecution or defense of any claim or counterclaim in

8

this litigation with his/her client. Additionally, nothing in this provision shall

9

prohibit any attorney of record in this litigation from developing or presenting any

10

arguments with respect to the question of whether the parties have fulfilled their

11

obligations under Section 4.01 of the 2010 IP Purchase Agreement (“Patent

12

Prosecution and Maintenance”).

13

(b)

Notwithstanding anything to the contrary above, and for the avoidance

14

of any doubt, the patent prosecution bar above shall not be deemed to preclude

15

persons who have received Protected Material from participating directly or

16

indirectly in post issuance review proceedings before the Patent Office or any

17

similar agency of a foreign government (e.g., inter partes review proceedings, post-

18

grant review proceedings, covered business method proceedings, and reexamination

19

proceedings).

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27
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10.

PROTECTED MATERIAL SUBPOENAED OR ORDERED
PRODUCED IN OTHER LITIGATION

If a Party is served with a subpoena or a court order issued in other litigation
that would compel disclosure of any Protected Material, that Party must:
(a) promptly, and in no event more than fourteen (14) days after receiving
the subpoena or order, notify the Designating Party in writing. Such notification
shall include a copy of the subpoena or court order;
(b) promptly notify in writing the party who caused the subpoena or order to
issue in the other litigation that some or all of the material covered by the subpoena
STIPULATED PROTECTIVE ORDER
- 16 -

1

or order is subject to this Protective Order. Such notification shall include a copy

2

of this Stipulated Protective Order; and

3
4
5

(c) cooperate with respect to all reasonable procedures sought to be pursued
by the Designating Party whose Protected Material may be affected.
If the Designating Party timely seeks a protective order, the Party served with

6

the subpoena or court order shall not produce any Protected Material before a

7

determination by the court from which the subpoena or order issued, unless the

8

Party has obtained the Designating Party’s permission. The Designating Party shall

9

bear the burden and expense of seeking protection in that court of its confidential

10

material, and nothing in these provisions should be construed as authorizing or

11

encouraging a Receiving Party in this Action to disobey a lawful directive from

12

another court.

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14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

11.

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE
PRODUCED IN THIS LITIGATION

(a)

The terms of this Order are applicable to information produced by a

Non-Party in this Action and designated as “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL  ATTORNEYS’ EYES ONLY,” or “SENSITIVE  SUBJECT
TO EXPORT CONTROL.” Such information produced by Non-Parties in
connection with this litigation is protected by the remedies and relief provided by
this Order. Nothing in these provisions should be construed as prohibiting a NonParty from seeking additional protections.
(b)

In the event that a Party is required, by a valid discovery request, to

produce a Non-Party’s confidential information in its possession, and the Party is
subject to an agreement with the Non-Party not to produce the Non-Party’s
confidential information, then the Party shall:
(1) promptly notify in writing the Requesting Party and the Non-Party
that some or all of the information requested is subject to a confidentiality
agreement with a Non-Party;
STIPULATED PROTECTIVE ORDER
- 17 -

1

(2) promptly provide the Non-Party with a copy of the Stipulated

2

Protective Order in this Action, the relevant discovery request(s), and a

3

reasonably specific description of the information requested; and

4

(3) make the information requested available for inspection by the

5

Non-Party, if requested.

6

(c)

If the Non-Party fails to object or seek a protective order from this

7

Court within 14 days of receiving the notice and accompanying information, the

8

Receiving Party may produce the Non-Party’s confidential information responsive

9

to the discovery request. If the Non-Party timely seeks a protective order, the

10

Receiving Party shall not produce any information in its possession or control that

11

is subject to the confidentiality agreement with the Non-Party before a

12

determination by the Court. Absent a court order to the contrary, the Non-Party

13

shall bear the burden and expense of seeking protection in this Court of its

14

Protected Material.

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16
17
18
19
20
21
22
23
24
25
26

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED
MATERIAL

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed
Protected Material to any person or in any circumstance not authorized under this
Stipulated Protective Order, the Receiving Party must immediately (a) notify in
writing the Designating Party of the unauthorized disclosures, (b) use its best
efforts to retrieve all unauthorized copies of the Protected Material, (c) inform the
person or persons to whom unauthorized disclosures were made of all the terms of
this Order, and (d) request such person or persons to execute the “Acknowledgment
and Agreement to Be Bound” that is attached hereto as Exhibit A.
13.

INADVERTENT PRODUCTION OF PRIVILEGED OR
OTHERWISE PROTECTED MATERIAL

When a Producing Party gives notice to Receiving Parties that certain

27

inadvertently produced material is subject to a claim of privilege or other

28

protection, the obligations of the Receiving Parties are those set forth in Federal
STIPULATED PROTECTIVE ORDER
- 18 -

1

Rule of Civil Procedure 26(b)(5)(B). This provision is not intended to modify

2

whatever procedure may be established in an e-discovery order that provides for

3

production without prior privilege review.

4

14.

5

14.1 Right to Further Relief. Nothing in this Order abridges the right of any

6
7

MISCELLANEOUS

person to seek its modification by the Court in the future.
14.2 Right to Assert Other Objections. By stipulating to the entry of this

8

Protective Order, no Party waives any right it otherwise would have to object to

9

disclosing or producing any information or item on any ground not addressed in

10

this Stipulated Protective Order. Similarly, no Party waives any right to object on

11

any ground to use in evidence of any of the material covered by this Protective

12

Order.

13

14.3 Filing Protected Material. A Receiving Party that wishes to file

14

Designated Material of a Producing Party must seek to do so under Local Rule 79-

15

5. Protected Material may only be filed under seal pursuant to a court order

16

authorizing the sealing of the specific Protected Material at issue; good cause must

17

be shown in the request to file under seal. If a Party’s request to file Protected

18

Material under seal is denied by the Court, then the Receiving Party may file the

19

information in the public record unless otherwise instructed by the Court.

20

14.4 Discovery From Experts. A testifying Expert’s draft reports, notes,

21

outlines, and any other writing leading up to his final report(s) in this case are

22

exempt from discovery. In addition, all communications between Counsel and a

23

testifying Expert with respect to his or her work on this case are exempt from

24

discovery (including communications where House Counsel is involved in the

25

communication). This section does not apply to a testifying Expert’s billing

26

statements or invoices, which shall be timely produced in advance of the testifying

27

Expert’s deposition, if so requested at the time.

28
STIPULATED PROTECTIVE ORDER
- 19 -

1

14.5 Binding Nature of this Protective Order. This Protective Order shall be

2

binding upon the parties and their attorneys, successors, executors, personal

3

representatives, administrators, heirs, legal representatives, assigns, subsidiaries,

4

divisions, employees, agents, independent contractors, or other persons or

5

organizations over which they have control.

6

15.

7

After the final disposition of this Action, within 60 days without the need for

FINAL DISPOSITION

8

a written request by the Designating Party, each Receiving Party must return all

9

Protected Material to the Producing Party or destroy such material, with the

10

exception of copies stored on back-up tapes or other disaster recovery media. As

11

used in this subdivision, “all Protected Material” includes all copies, abstracts,

12

compilations, summaries, and any other format reproducing or capturing any of the

13

Protected Material. Whether the Protected Material is returned or destroyed, the

14

Receiving Party must submit a written certification to the Producing Party (and, if

15

not the same person or entity, to the Designating Party) by the 60 day deadline that

16

(1) identifies (by category, where appropriate) all the Protected Material that was

17

returned or destroyed and (2) affirms that the Receiving Party has not retained any

18

copies, abstracts, compilations, summaries or any other format reproducing or

19

capturing any of the Protected Material. Notwithstanding this provision, Outside

20

Counsel are not required to purge their individual emails, and they are entitled to

21

retain an archival copy of all pleadings, motion papers, trial, deposition, and

22

hearing transcripts, legal memoranda, correspondence, deposition and trial exhibits,

23

expert reports, attorney work product, and consultant and expert work product, even

24

if such materials contain Protected Material. Any such archival copies that contain

25

or constitute Protected Material remain subject to this Protective Order as set forth

26

in § 4 (DURATION).

27
28
STIPULATED PROTECTIVE ORDER
- 20 -

1

16.

2

Any violation of this Order may be punished by any and all appropriate

VIOLATIONS

3

measures including, without limitation, contempt proceedings and/or monetary

4

sanctions.

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6
7
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STIPULATED PROTECTIVE ORDER
- 21 -

1

Dated: April 7, 2017

2

By: /s/ David G. Wille
David G. Wille
Texas State Bar No. 00785250
E-mail: [e-mail]
Jeffery D. Baxter
Texas State Bar No. 24006816
E-mail: [e-mail]
Brian D. Johnston
Texas State Bar No. 24080965
E-mail: [e-mail]
James C. Williams
Texas State Bar No. 24075284
E-mail: [e-mail]
Charles Yeh
Texas State Bar No. 24075319
E-mail: [e-mail]
BAKER BOTTS L.L.P.
2001 Ross Avenue
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]

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7
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10
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12
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16
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20
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Lind M. Burrow, Bar No. 194668
[e-mail]
Alison Mackenzie, Bar No. 242280
[e-mail]
CALDWELL LESLIE AND
PROCTOR PC
725 South Figueroa Street 31st Floor
Los Angeles, CA 90017-5524
Telephone:[phone]
Fax:[phone]

By: /s/ Amanda Tessar
Lara J. Dueppen, Bar No. 259075
[e-mail]
PERKINS COIE LLP
1888 Century Park East, Suite 1700
Los Angeles, CA 90067-1721
Telephone: [phone]
Facsimile: 310.788.3399
Jonathan M. James (pro hac vice)
[e-mail]
PERKINS COIE LLP
2901 North Central Avenue, Suite 2000
Phoenix, AZ 85012-2788
Telephone: [phone]
Facsimile: 602.648.7000
Amanda Tessar (pro hac vice)
[e-mail]
Elizabeth Banzhoff (pro hac vice)
EBanzhoff @perkinscoie.com
PERKINS COIE LLP
1900 Sixteenth Street, Suite 1400
Denver, CO 80202-5255
Telephone: [phone]
Facsimile: 303.291.2400
Philip A. Morin, Bar No. 256864
[e-mail]
PERKINS COIE LLP
11988 El Camino Real, Suite 350
San Diego, CA 92130-2594
Telephone: [phone]
Facsimile: 858.720.5799
Daniel T. Keese, Bar No. 280683
[e-mail]
PERKINS COIE LLP
1120 N.W. Couch Street, 10th Floor
Portland, OR 97209-4128
Telephone: [phone]
Facsimile: 503.727.2222

ATTORNEYS FOR INFINEON
TECHNOLOGIES AMERICAS
CORP. AND INFINEON
TECHNOLOGIES AG

22
23

Morgan Chu (State Bar No. 70446)
([e-mail])
Joseph M. Lipner (State Bar No.
155735)
([e-mail])
Ellisen Turner (State Bar No. 224842)
([e-mail])
IRELL & MANELLA LLP
1800 Avenue of the Stars, Suite 900
Los Angeles, CA 90067-4276

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28

STIPULATED PROTECTIVE ORDER
-1-

1

Telephone: [phone]
Facsimile: 310-203-7199

2

Nima Hefazi (State Bar No. 272816)
([e-mail])
IRELL & MANELLA LLP
840 Newport Center Drive, Suite 400
Newport Beach, CA 92660
Telephone: [phone]
Facsimile: 949-760-5200

3
4
5
6

ATTORNEYS FOR PLAINTIFFS
MACOM TECHNOLOGY
SOLUTIONS HOLDINGS, INC.
AND NITRONEX, LLC

7
8
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STIPULATED PROTECTIVE ORDER
-2-

1

EXHIBIT A

2

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

3

I, ____________________________ [print or type full name], of

4

_________________ [print or type full address], declare under penalty of perjury

5

that I have read in its entirety and understand the Stipulated Protective Order that

6

was issued by the United States District Court for the Central District of California

7

on [date] in the case of MACOM Technology Solutions Holdings, Inc., et al. v.

8

Infineon Technologies AG, et al., Case No. CV 16-02859. I agree to comply with

9

and to be bound by all the terms of this Stipulated Protective Order and I

10

understand and acknowledge that failure to so comply could expose me to sanctions

11

and punishment in the nature of contempt. I also understand that the Arms Export

12

Control Act, ITAR, and EAR impose criminal and civil penalties for violations of

13

their provisions, such as the unlicensed export, disclosure, or transfer of technical

14

data to a foreign person. I solemnly promise that I will not disclose in any manner

15

any information or item that is subject to this Stipulated Protective Order to any

16

person or entity except in strict compliance with the provisions of this Order.

17

I further agree to submit to the jurisdiction of the United States District Court

18

for the Central District of California for the purpose of enforcing the terms of this

19

Stipulated Protective Order, even if such enforcement proceedings occur after

20

termination of this action. I hereby appoint _______________________ [print full

21

name] of _________________________ [print full address and telephone number]

22

as my California agent for service of process in connection with this action or any

23

proceedings related to enforcement of this Stipulated Protective Order.

24

Date: ______________________________________

25

City and State where sworn and signed: _____________________________

26

Printed name: _______________________________

27

Signature: __________________________________

28
STIPULATED PROTECTIVE ORDER
-3-