IconFind, Inc. v. Google, Inc.

Filing 56

JOINT STATEMENT re Discovery Disagreement by Plaintiff IconFind, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Folgers, Anna) Modified on 6/13/2011 (Zignago, K.).

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1 2 3 4 5 Michael J. Malecek (State Bar No. 171034) Email address: michael.malecek@kayescholer.com Kenneth Maikish (State Bar No. 267265) Email address: kenneth.maikish@kayescholer.com KAYE SCHOLER LLP Two Palo Alto Square, Suite 400 3000 El Camino Real Palo Alto, California 94306 Telephone: (650) 319-4500 Facsimile: (650) 319-4700 6 7 Attorneys for Defendant GOOGLE INC. 8 9 UNITED STATES DISTRICT COURT 10 FOR THE EASTERN DISTRICT OF CALIFORNIA 11 12 ICONFIND, INC., 13 Plaintiff, 14 15 v. 16 GOOGLE INC., 17 18 19 Defendant. ) ) ) ) ) ) ) ) ) ) ) Case No. 2:11-CV-00319 GEB JFM AGREED TO PROTECTIVE ORDER 20 21 22 23 24 25 26 27 28 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 In order to expedite the flow of discovery materials, facilitate the prompt resolution of disputes over confidentiality of discovery materials, adequately protect information the parties are entitled to keep confidential, ensure that only materials the parties are entitled to keep confidential are subject to such treatment, and ensure that the parties are permitted reasonably necessary uses of such materials in preparation for and in the conduct of trial, pursuant to Fed. R. Civ. P. 26(c), it is I. hereby INFORMATION ORDERED SUBJECT THAT: TO THIS ORDER Discovery materials produced in this case may be labeled as one of three categories: CONFIDENTIAL, CONFIDENTIAL OUTSIDE COUNSEL ONLY and RESTRICTED CONFIDENTIAL - SOURCE CODE, as set forth in Items A through C below. All three of the identified categories of information shall be identified collectively in this Order by the title “Protected Information.” A. Information Designated as Confidential Information 1. For purposes of this Order, "CONFIDENTIAL INFORMATION" shall mean all information or material produced for or disclosed in connection with this action to a receiving party that a producing party, including any party to this action and any non-party producing information or material voluntarily or pursuant to a subpoena or a court order in connection with this action, considers to comprise confidential technical, sales, marketing, financial, or other commercially sensitive information, whether embodied in physical objects, documents, or the factual knowledge of persons, and which has been so designated by the producing party. Any CONFIDENTIAL INFORMATION obtained by any party from any person pursuant to discovery in this litigation may be used only for purposes of this litigation. 2. Any document or tangible thing containing or including any CONFIDENTIAL INFORMATION may be designated as such by the producing party by marking it "CONFIDENTIAL" prior to or at the time copies are furnished to the receiving party. 3. All CONFIDENTIAL INFORMATION not reduced to documentary, tangible or physical form or which cannot be conveniently designated as set forth in paragraph 2, 28 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 shall be designated by the producing party by informing the receiving party of the designation in 2 writing. 3 4. Any documents (including physical objects) made available for inspection 4 by counsel for the receiving party prior to producing copies of selected items shall initially be 5 considered, as a whole, to constitute CONFIDENTIAL INFORMATION (unless otherwise 6 designated at the time of inspection) and shall be subject to this Order. Thereafter, the producing 7 party shall have a reasonable time to review and designate the appropriate documents as 8 CONFIDENTIAL INFORMATION (or otherwise as appropriate) prior to furnishing copies to the 9 receiving party. 10 5. 11 The following information is not CONFIDENTIAL INFORMATION: a. Any information that is or, after its disclosure to a receiving party, 12 becomes part of the public domain as a result of publication not involving a violation of this 13 Order or other obligation to maintain the confidentiality of such information; 14 15 b. Any information that the receiving party can show was already publicly known prior to the disclosure; and, 16 c. Any information that the receiving party can show by written 17 records was received by it from a source who obtained the information lawfully and under no 18 obligation of confidentiality to the producing party. 19 6. 20 therein shall be available only to: 21 Documents designated CONFIDENTIAL and information contained a. Outside litigation counsel of record and supporting personnel 22 employed in the law firm(s) of outside litigation counsel of record, such as attorneys, paralegals, 23 legal translators, legal secretaries, legal clerks and shorthand reporters; 24 b. Technical advisers and their necessary support personnel, subject to 25 the provisions of paragraphs 3A-3F herein, and who have signed the form attached hereto as 26 Attachment A; the term “technical adviser” shall mean independent outside expert witnesses or 27 28 2 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 consultants (i.e., not employees of a party) with whom counsel may deem it necessary to consult 2 and who are in compliance with Section III below; 3 4 c. bar in good standing, with responsibility for managing this litigation; 5 6 Up to two in-house counsel, who are members of at least one state d. The Court, its personnel and stenographic reporters (under seal or with other suitable precautions determined by the Court); and, 7 e. Independent legal translators retained to translate in connection 8 with this action; independent stenographic reporters and videographers retained to record and 9 transcribe testimony in connection with this action; graphics, translation, or design services 10 retained by counsel for purposes of preparing demonstrative or other exhibits for deposition, trial, 11 or other court proceedings in the actions; non–technical jury or trial consulting services including 12 mock jurors (provided, however, that such non–technical jury or trial consulting services, 13 including mock jurors, have signed the form attached hereto as Attachment A, and a signed copy 14 has been provided to the producing party). 15 B. 16 Information Designated Confidential Outside Counsel Only 1. The CONFIDENTIAL OUTSIDE COUNSEL ONLY designation is 17 reserved for CONFIDENTIAL INFORMATION that constitutes (a) marketing, financial, sales, 18 web traffic, research and development, or technical, data or information; (b) commercially 19 sensitive competitive information, including, without limitation, information obtained from a 20 nonparty pursuant to a current Nondisclosure Agreement (“NDA”); (c) information or data 21 relating to future products not yet commercially released and/or strategic plans; and, (d) 22 commercial agreements, settlement agreements or settlement communications, the disclosure of 23 which is likely to cause harm to the competitive position of the producing party. Documents 24 marked 25 CONFIDENTIAL or RESTRICTED CONFIDENTIAL shall be treated as if designated 26 CONFIDENTIAL OUTSIDE COUNSEL ONLY. In determining whether information should be CONFIDENTIAL OUTSIDE ATTORNEYS’ EYES ONLY, HIGHLY 27 28 3 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 designated as CONFIDENTIAL OUTSIDE COUNSEL ONLY, each party agrees to use such 2 designation only in good faith. 3 2. Documents designated CONFIDENTIAL OUTSIDE COUNSEL ONLY 4 and information contained therein shall be available only to the persons or entities listed in 5 paragraphs 1.A.6.a, b, d and e subject to any terms set forth or incorporated therein and not any 6 person or entity listed in paragraph 1.A.6.c. 7 C. 8 Information Designated Restricted Confidential - Source Code 1. The RESTRICTED CONFIDENTIAL - SOURCE CODE designation is 9 reserved for CONFIDENTIAL INFORMATION that contains or substantively relates to a party's 10 “Source Code,” which shall mean documents containing or substantively relating to confidential, 11 proprietary and/or trade secret source code or technical design documentation. The following 12 conditions shall govern the production, review and use of source code or design documentation 13 information. 14 2. All such Source Code, and any other Protected Information designated as 15 “RESTRICTED CONFIDENTIAL —SOURCE CODE,” shall be subject to the following 16 provisions: 17 a. Source Code, to the extent any producing party agrees to provide 18 any such information, shall ONLY be made available for inspection, not produced except as 19 provided for below, and shall be made available in electronic format at one of the following 20 locations chosen at the sole discretion of the producing party: (1) the offices of the producing 21 party’s primary outside counsel of record in this action; (2) a single, third-party site located 22 within any judicial district in which the Source Code is stored in the ordinary course of business 23 (e.g., an escrow company); or (3) a location mutually agreed upon by the receiving and producing 24 parties. Any location under (1), (2) or (3) above shall be in the continental United States. Source 25 Code will be loaded on a single, non-networked computer that is password protected and 26 maintained in a secure, locked area. Use or possession of any input/output device (e.g., USB 27 28 4 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 memory stick, cameras or any camera-enabled device, CDs, floppy disk, portable hard drive, 2 laptop, etc.) is prohibited while accessing the computer containing the Source Code. All persons 3 entering the locked room containing the Source Code must agree to submit to reasonable security 4 measures to insure they are not carrying any prohibited items before they will be given access to 5 the locked room. The computer containing Source Code will be made available for inspection 6 during regular business hours, upon reasonable notice to the producing party, which shall not be 7 less than 3 business days in advance of the requested inspection. 8 b. The receiving party's outside counsel and/or experts may request 9 that commercially available licensed software tools for viewing and searching Source Code be 10 installed on the secured computer. The receiving party must provide the producing party with 11 the CD or DVD containing such software tool(s) at least four business days in advance of the 12 inspection. 13 c. The receiving party’s outside counsel and/or expert shall be entitled 14 to take notes relating to the Source Code but may not copy any portion of the Source Code into 15 the notes. No copies of all or any portion of the Source Code may leave the room in which the 16 Source Code is inspected except as otherwise provided herein. Further, no other written or 17 electronic record of the Source Code is permitted except as otherwise provided herein. 18 d. No person shall copy, e-mail, transmit, upload, download, print, 19 photograph or otherwise duplicate any portion of the designated Source Code, except as the 20 receiving party may request a reasonable number of pages of Source Code to be printed by the 21 producing party, but only if and to the extent necessary for use in this action. In no event may the 22 receiving party print more than 25 consecutive pages, or an aggregate total of more than 500 23 pages, of Source Code during the duration of the case without prior written approval by the 24 producing party. Within 5 business days or such additional time as necessary due to volume 25 requested, the producing party will provide the requested material on watermarked or colored 26 paper bearing Bates numbers and the legend “RESTRICTED CONFIDENTIAL - SOURCE 27 28 5 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 CODE” unless objected to as discussed below. The printed pages shall constitute part of the 2 Source Code produced by the producing party in this action. At the inspecting parties request, up 3 to two additional sets (or subsets) of printed Source Code may be requested and provided by the 4 producing party in a timely fashion. 5 e. If the producing party objects that the printed portions are not 6 reasonably necessary to any case preparation activity, the producing party shall make such 7 objection known to the receiving party within five business days. If after meeting and conferring 8 the producing party and the receiving party cannot resolve the objection (where such meet-and- 9 confer need not take place in person), the producing party shall be entitled, but not required, to 10 seek a Court resolution of whether the printed Source Code in question is reasonably necessary to 11 any case preparation activity. Contested Source Code print outs need not be produced to the 12 requesting party until the matter is resolved by the Court. 13 f. Any printed pages of Source Code, and any other documents or 14 things reflecting Source Code that have been designated by the producing party as 15 “RESTRICTED CONFIDENTIAL - SOURCE CODE” may not be copied, digitally imaged or 16 otherwise duplicated, except in limited excerpts necessary to attach as exhibits to depositions, 17 expert reports, or court filings as discussed below. 18 g. Any paper copies designated “RESTRICTED CONFIDENTIAL - 19 SOURCE CODE” shall be stored or viewed only at (i) the offices of outside counsel for the 20 receiving party, (ii) the offices of outside experts or consultants who have been approved to 21 access Source Code; (iii) the site where any deposition is taken (iv) the Court; or (v) any 22 intermediate location necessary to transport the information to a hearing, trial or deposition. Any 23 such paper copies shall be maintained at all times in secure location under the direct control of 24 counsel responsible for maintaining the security and confidentiality of the designated materials. 25 26 h. A list of names of persons who will view the Source Code will be provided to the producing party in conjunction with any written (including email) notice 27 28 6 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 requesting inspection. The receiving party shall maintain a daily log of the names of persons who 2 enter the locked room to view the Source Code and when they enter and depart. The producing 3 party shall be entitled to have a person observe all entrances and exits from the Source Code 4 viewing room, and to a copy of the log. 5 i. Unless otherwise agreed in advance by the parties in writing, 6 following each inspection, the receiving party’s outside counsel and/or experts shall remove all 7 notes, documents, and all other materials from the room that may contain work product and/or 8 attorney-client privileged information. The producing party shall not be responsible for any items 9 left in the room following each inspection session. 10 j. The receiving party will not copy, remove, or otherwise transfer 11 any portion of the Source Code from the Source Code Computer including, without limitation, 12 copying, removing, or transferring any portion of the Source Code onto any other computers or 13 peripheral equipment. The receiving party will not transmit any portion of the Source Code in 14 any way from the location of the Source Code inspection. 15 k. Only the following individuals shall have access to “RESTRICTED 16 CONFIDENTIAL - SOURCE CODE” materials, absent the express written consent of the 17 Producing Party or further court order: 18 (1) Outside counsel of record for the parties to this action, 19 including any attorneys, paralegals, technology specialists and clerical employees of their 20 respective law firms; 21 (2) Up to three (3) outside experts or consultants per party, pre- 22 approved in accordance with Paragraphs 3A-3F and specifically identified as eligible to access 23 Source Code; 24 (3) The Court, its technical advisor (if one is appointed), the 25 jury, court personnel, and court reporters or videographers recording testimony or other 26 proceedings in this action. Court reporters and/or videographers shall not retain or be given 27 28 7 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 copies of any portions of the Source Code. If used during a deposition, the deposition record will 2 identify the exhibit by its production numbers; 3 (4) While testifying at deposition or trial in this action only: (i) 4 any current or former officer, director or employee of the producing party or original source of 5 the information; (ii) any person designated by the producing party to provide testimony pursuant 6 to Rule 30(b)(6) of the Federal Rules of Civil Procedure; and/or (iii) any person who authored, 7 previously received (other than in connection with this litigation), or was directly involved in 8 creating, modifying, or editing the Source Code, as evident from its face or reasonably certain in 9 view of other testimony or evidence. Persons authorized to view Source Code pursuant to this 10 sub-paragraph shall not retain or be given copies of the Source Code except while so testifying. 11 l. The Receiving Party’s outside counsel shall maintain a log of all 12 copies of the Source Code (received from a Producing Party) that are delivered by the Receiving 13 Party to any qualified person under Paragraph g above. The log shall include the names of the 14 recipients and reviewers of copies and locations where the copies are stored. Upon request by the 15 producing party, the receiving party shall provide reasonable assurances and/or descriptions of the 16 security measures employed by the receiving party and/or qualified person that receives a copy of 17 any portion of the Source Code; 18 m. Except as provided in this paragraph, the Receiving Party may not 19 create electronic images, or any other images, of the Source Code from the paper copy for use on 20 a computer (e.g., may not scan the source code to a PDF, or photograph the code). The Receiving 21 Party may create an electronic copy or image of limited excerpts of Source Code only to the 22 extent necessary in a pleading, exhibit, expert report, discovery document, deposition transcript, 23 other 24 DOCUMENTS"). The receiving party shall only include such excerpts as are reasonably 25 necessary for the purposes for which such part of the Source Code is used. Images or copies of 26 Source Code shall not be included in correspondence between the parties (references to Court document, or any drafts of these documents ("SOURCE CODE 27 28 8 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 production numbers shall be used instead) and shall be omitted from pleadings and other papers 2 except to the extent permitted herein. The receiving party may create an electronic image of a 3 selected portion of the Source Code only when the electronic file containing such image has been 4 encrypted 5 protection. The communication and/or disclosure of electronic files containing any portion of 6 Source Code shall at all times be limited to individuals who are authorized to see Source Code 7 under the provisions of this Protective Order. The receiving party shall maintain a log of all 8 electronic images and paper copies of Source Code in its possession or in the possession of its 9 retained consultants, including the names of the recipients and reviewers of any electronic or 10 paper copies and the locations where the copies are stored. Additionally, all electronic copies 11 must be labeled "RESTRICTED CONFIDENTIAL - SOURCE CODE." using 12 commercially n. reasonable encryption software including password To the extent portions of Source Code are quoted in a SOURCE 13 CODE DOCUMENT, either (1) the entire document will be stamped and treated as 14 RESTRICTED CONFIDENTIAL-SOURCE CODE or (2) those pages containing quoted Source 15 Code will be separately bound, and stamped and treated as RESTRICTED CONFIDENTIAL- 16 SOURCE CODE. 17 o. All copies of any portion of the Source Code in whatever form shall 18 be securely destroyed if they are no longer in use. Copies of Source Code that are marked as 19 deposition exhibits shall not be provided to the Court Reporter or attached to deposition 20 transcripts; rather, the deposition record will identify the exhibit by its production numbers. 21 p. The receiving party’s outside counsel may only disclose a copy of 22 the Source Code to individuals specified in Paragraph k above (e.g., Source Code may not be 23 disclosed to in-house counsel). 24 D. 25 A party shall provide a minimum of two business day's notice to the producing party in 26 the event that a party intends to use any Protected Information during trial. In addition, the Use of Protected Information at Trial 27 28 9 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 parties will not oppose any request by the producing party that the courtroom should be sealed, if 2 allowed by the Court, during the presentation of any testimony relating to or involving the use of 3 any 4 II. 5 Protected Information. PROSECUTION BAR A. Any person reviewing any of an opposing party’s Confidential Outside Counsel 6 Only Materials or Source Code (all of which shall also be automatically designated as 7 “Prosecution Bar Materials”) shall not, for a period commencing upon receipt of such information 8 and ending one year following the conclusion of this case (including any appeals) engage in any 9 Prosecution Activity (as defined below) on behalf of a party asserting a patent in this case. 10 B. 11 mean any activity related to the competitive business decisions involving the preparation or 12 prosecution (for any person or entity) of patent applications relating to coding, categorizing, 13 and/or retrieving information from a computer network or advising or counseling clients 14 regarding the same, including but not limited to providing any advice, counseling or drafting of 15 claims for any patent application or reissue application. Nothing in this paragraph shall prevent 16 any attorney from sending non-confidential prior art to an attorney involved in patent prosecution 17 for purposes of ensuring that such prior art is submitted to the U.S. Patent and Trademark Office 18 (or any similar agency of a foreign government) to assist a patent applicant in complying with its 19 duty of candor. Nothing in this provision shall prohibit any attorney of record in this litigation 20 from discussing any aspect of this case that is reasonably necessary for the prosecution or defense 21 of any claim or counterclaim in this litigation with his/her client. The parties expressly agree that 22 the Prosecution Bar set forth herein shall be personal to any attorney who reviews Prosecution 23 Bar Materials and shall not be imputed to any other persons or attorneys at the attorneys' law 24 firm. It is expressly agreed that attorneys who work on this matter without reviewing Prosecution 25 Bar Materials shall not be restricted from engaging in Prosecution Activity on matters that fall 26 within the Prosecution Bar. Except with respect to reexaminations of the patent-in-suit, Prosecution Activity shall 27 28 10 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 III. 2 DISCLOSURE OF TECHNICAL ADVISERS A. Information designated by the producing party under any category of Protected 3 Information and such copies of this information as are reasonably necessary for maintaining, 4 defending or evaluating this litigation may be furnished and disclosed to the receiving party's 5 technical advisers and their necessary support personnel. 6 B. No disclosure of Protected Information to a technical adviser or their necessary 7 support personnel shall occur until that person has signed the form attached hereto as Attachment 8 A, and a signed copy has been provided to the producing party; and to the extent there has been 9 an objection under paragraph 3.C., that objection is resolved according to the procedures set forth 10 11 below. C. Any party desiring to disclose Protected Information to a technical advisor shall 12 also give prior written notice of such intent specifically informing all counsel of record in the 13 litigation whether such intended disclosure extends to source code. In addition, the party desiring 14 to disclose Protected Information to a technical adviser must provide the following information 15 for each technical adviser: the name, address, curriculum vitae, current employer, employment 16 history for the past ten years, a listing of cases in which the witness has testified as an expert at 17 trial or by deposition within the preceding five years, and a identification of any patents or patent 18 applications in which the technical adviser is identified as an inventor or applicant, is involved in 19 prosecuting or maintaining, or has any pecuniary interest. The producing party shall have ten 20 business days after such notice to object in writing to the disclosure. No Protected Information 21 shall be disclosed to such expert(s) or consultant(s) until after the expiration of the foregoing 22 notice period and resolution of any objection. 23 D. A party objecting to disclosure of Protected Information to a technical adviser 24 shall state with particularity the ground(s) of the objection. The objecting party's consent to the 25 disclosure of Protected Information to a technical adviser shall not be unreasonably withheld, and 26 its objection must be based on that party's good faith belief that disclosure of its Protected 27 28 11 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 Information to the technical adviser will result in specific business or economic harm to that 2 party. 3 E. If after consideration of the objection, the party desiring to disclose the Protected 4 Information to a technical adviser refuses to withdraw the technical adviser, that party shall 5 provide notice to the objecting party. Thereafter, the objecting party shall move the Court, within 6 ten business days of receiving such notice, for a ruling on its objection. A failure to file a motion 7 within the ten business day period, absent an agreement of the parties to the contrary or for an 8 extension of such ten business day period, shall operate as an approval of disclosure of Protected 9 Information to the technical adviser. The parties agree to cooperate in good faith to shorten the 10 time frames set forth in this paragraph if necessary to abide by any discovery or briefing 11 schedules. 12 F. The objecting party shall have the burden of showing to the Court "good cause" 13 for preventing the disclosure of its Protected Information to the technical adviser. This "good 14 cause" shall include a particularized showing that: (1) the Protected Information is confidential 15 commercial information, (2) disclosure of the Protected Information likely would result in a 16 clearly defined and serious injury to the objecting party's business, (3) the proposed technical 17 advisor is in a position to allow the Protected Information to be disclosed to or become known by 18 the objecting party's competitors, and (4) that the technical advisor’s access to Protected 19 Information may create other confidentiality or legal risks in connection with other patent-related 20 activities or interests tied to the technical advisor. 21 G. A party who has not previously objected to disclosure of Protected Information to 22 a technical adviser or whose objection has been resolved with respect to previously produced 23 information shall not be precluded from raising an objection to a technical adviser at a later time 24 with respect to materials or information that are produced after the time for objecting to such a 25 technical adviser has expired. Any such objection shall be handled in accordance with the 26 provisions set forth above in Section 3(B) through (F). 27 28 12 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 IV. 2 CHALLENGES TO CONFIDENTIALITY DESIGNATIONS A. The parties shall use reasonable care when designating documents or information 3 as Protected Information. Nothing in this Order shall prevent a receiving party from contending 4 that any documents or information designated as Protected Information have been improperly 5 designated. A receiving party may at any time request that the producing party cancel or modify 6 the Protected Information designation with respect to any document or information contained 7 therein. 8 B. A party shall not be obligated to challenge the propriety of a designation of any 9 category of Protected Information at the time of production, and a failure to do so shall not 10 preclude a subsequent challenge thereto. Such a challenge shall be written, shall be served on 11 counsel for the producing party, and shall particularly identify the documents or information that 12 the receiving party contends should be differently designated. The parties shall use their best 13 efforts to resolve promptly and informally such disputes. If an agreement cannot be reached, the 14 receiving party shall request that the Court cancel or modify a designation. The burden of 15 demonstrating the confidential nature of any information shall at all times be and remain on the 16 designating party. 17 C. Until a determination by the Court, the information in issue shall be treated as 18 having been properly designated and subject to the terms of this Order. 19 V. 20 LIMITATIONS ON THE USE OF PROTECTED INFORMATION A. All Protected Information shall be held in confidence by each person to whom it is 21 disclosed, shall be used only for purposes of this litigation, shall not be used for any business 22 purpose or in connection with any other legal proceeding, and shall not be disclosed to any person 23 who is not entitled to receive such information as herein provided. All produced Protected 24 Information shall be carefully maintained so as to preclude access by persons who are not entitled 25 to receive such information. 26 27 28 13 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 B. Except as may be otherwise ordered by the Court, any person may be examined as 2 a witness at depositions and trial and may testify concerning all Protected Information of which 3 such person has prior knowledge. Without in any way limiting the generality of the foregoing: 4 1. A present director, officer, and/or employee of a producing party may be 5 examined and may testify concerning all Protected Information which has been produced by that 6 party and of which the witness has personal knowledge; 7 2. A former director, officer, agent and/or employee of a producing party may 8 be interviewed, examined and may testify concerning all Protected Information of which he or 9 she has personal knowledge, including any Protected Information that refers to matters of which 10 the witness has personal knowledge, which has been produced by that party and which pertains to 11 the period or periods of his or her employment; and 12 3. Non-parties may be examined or testify concerning any document 13 containing Protected Information of a producing party which appears on its face or from other 14 documents or testimony to have been received from or communicated to the non-party as a result 15 of any contact or relationship with the producing party or a representative of the producing 16 party. Any person other than the witness, his or her attorney(s), or any person qualified to receive 17 Protected Information under this Order shall be excluded from the portion of the examination 18 concerning such information, unless the producing party consents to persons other than qualified 19 recipients being present at the examination. If the witness is represented by an attorney who is 20 not qualified under this Order to receive such information, then prior to the examination, the 21 attorney must provide a signed statement, in the form of Attachment A hereto, that he or she will 22 comply with the terms of this Order and maintain the confidentiality of Protected Information 23 disclosed during the course of the examination. In the event that such attorney declines to sign 24 such a statement prior to the examination, the parties, by their attorneys, shall jointly seek a 25 protective order from the Court prohibiting the attorney from disclosing Protected Information. 26 27 28 14 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 4. All transcripts of depositions, exhibits, answers to interrogatories, 2 pleadings, briefs, and other documents submitted to the Court which have been designated as 3 Protected Information, or which contain information so designated, shall be filed under seal in a 4 manner prescribed by the Court for such filings. 5 5. Outside attorneys of record for the parties are hereby authorized to be the 6 persons who may retrieve confidential exhibits and/or other confidential matters filed with the 7 Court upon termination of this litigation without further order of this Court, and are the persons to 8 whom such confidential exhibits or other confidential matters may be returned by the Clerk of the 9 Court, if they are not so retrieved. No material or copies thereof so filed shall be released except 10 by order of the Court, to outside counsel of record, or as otherwise provided for 11 hereunder. Notwithstanding the foregoing and with regard to material designated as Restricted 12 Confidential - Source Code, the provisions of Paragraph 1.C. are controlling to the extent those 13 provisions differ from this paragraph. 14 6. Protected Information shall not be copied or otherwise produced by a 15 receiving party, except for transmission to qualified recipients, without the written permission of 16 the producing party, or, in the alternative, by further order of the Court. Nothing herein shall, 17 however, restrict a qualified recipient from making working copies, abstracts, digests and 18 analyses of CONFIDENTIAL and CONFIDENTIAL OUTSIDE COUNSEL ONLY information 19 for use in connection with this litigation and such working copies, abstracts, digests and analyses 20 shall be deemed Protected Information under the terms of this Order. Further, nothing herein 21 shall restrict a qualified recipient from converting or translating CONFIDENTIAL and 22 CONFIDENTIAL OUTSIDE COUNSEL ONLY information into machine readable form for 23 incorporation into a data retrieval system used in connection with this action, provided that access 24 to that Protected Information, in whatever form stored or reproduced, shall be limited to qualified 25 recipients. 26 27 28 15 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 7. At the request of any party, the original and all copies of any deposition 2 transcript, in whole or in part, shall be marked "CONFIDENTIAL” by the reporter. This request 3 may be made orally during the deposition or in writing within fifteen (15) days of receipt of the 4 final certified transcript. Deposition transcripts shall be treated by default as CONFIDENTIAL 5 OUTSIDE COUNSEL ONLY until the expiration of the time to make a confidentiality 6 designation. Any portions so designated shall thereafter be treated in accordance with the terms 7 of this Order. 8 C. No Protected Information may leave the territorial boundaries of the United States 9 of America. Without limitation, this prohibition extends to Protected Information (including 10 copies) in physical and electronic form. The viewing of Protected Information through electronic 11 means outside the territorial limits of the United States of America is similarly prohibited. 12 Notwithstanding this prohibition, Protected Information, exclusive of material designated 13 RESTRICTED CONFIDENTIAL - SOURCE CODE, and to the extent otherwise permitted by 14 law, may be taken outside the territorial limits of the United States if it is reasonably necessary 15 for a deposition taken in a foreign country. The restrictions contained within this paragraph may 16 be amended through the consent of the producing Party to the extent that such agreed to 17 procedures conform with applicable export control laws and regulations. 18 VI. 19 NON-PARTY USE OF THIS PROTECTIVE ORDER A. A nonparty producing information or material voluntarily or pursuant to a 20 subpoena or a court order may designate such material or information as Protected Information 21 pursuant to the terms of this Protective Order. 22 23 B. A nonparty's use of this Protective Order to protect its Protected Information does not entitle that nonparty access to the Protected Information produced by any party in this case. 24 25 26 27 28 16 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 VII. NO WAIVER OF PRIVILEGE 2 Nothing in this Protective Order shall require production of information that a party 3 contends is protected from disclosure by the attorney-client privilege, the work product immunity 4 or other privilege, doctrine, right, or immunity. If information subject to a claim of attorney- 5 client privilege, work product immunity, or other privilege, doctrine, right, or immunity is 6 nevertheless inadvertently or unintentionally produced, such production shall in no way prejudice 7 or otherwise constitute a waiver or estoppel as to any such privilege, doctrine, right or 8 immunity. Any party that inadvertently produces materials protected the attorney-client privilege, 9 work product privilege, or other privilege, doctrine, right, or immunity may obtain the return of 10 those materials by promptly notifying the recipient(s) and providing a privilege log for the 11 inadvertently produced materials. The recipient(s) shall gather and return all copies of the 12 privileged material to the producing party, except for any pages containing privileged markings 13 by the recipient, which pages shall instead be destroyed and certified as such by the recipient to 14 the producing party. Notwithstanding this provision, outside litigation counsel of record are not 15 required to delete information that may reside on their respective firm's electronic back-up 16 systems 17 VIII. MISCELLANEOUS PROVISIONS 18 A. that are over-written in the normal course of business. Any of the notice requirements herein may be waived, in whole or in part, but only 19 in writing signed by the attorney-in-charge for the party against whom such waiver will be 20 effective. 21 B. Inadvertent or unintentional production of documents or things containing 22 Protected Information which are not designated as one or more of the three categories of 23 Protected Information at the time of production shall not be deemed a waiver in whole or in part 24 of a claim for confidential treatment. With respect to documents, the producing party shall 25 immediately upon discovery notify the other parties of the error in writing and provide 26 replacement pages bearing the appropriate confidentiality legend. In the event of any disclosure 27 28 17 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 of Protected Information other than in a manner authorized by this Protective Order, including 2 any unintentional or inadvertent disclosure, counsel for the party responsible for the disclosure 3 shall immediately notify opposing counsel of all of the pertinent facts, and make every effort to 4 further prevent unauthorized disclosure including, retrieving all copies of the Protected 5 Information from the recipient(s) thereof, and securing the agreement of the recipients not to 6 further disseminate the Protected Information in any form. Compliance with the foregoing shall 7 not prevent the producing party from seeking further relief from the Court. 8 C. Within sixty days after the entry of a final non-appealable judgment or order, or 9 the complete settlement of all claims asserted against all parties in this action, each party shall, at 10 the option of the producing party, either return or destroy all physical objects and documents 11 which embody Protected Information it has received, and shall destroy in whatever form stored or 12 reproduced, all physical objects and documents, including but not limited to, correspondence, 13 memoranda, and notes, which contain or refer to any category of Protected Information. All 14 Protected Information, not embodied in physical objects and documents shall remain subject to 15 this Order. In the event that a party is dismissed before the entry of a final non-appealable 16 judgment or order, this same procedure shall apply to any Protected Information received from or 17 produced to the dismissed party. Notwithstanding this provision, outside litigation counsel of 18 record are not required to delete information that may reside on their respective firm's electronic 19 back-up systems that are over-written in the normal course of business. Notwithstanding the 20 foregoing, outside counsel shall be entitled to maintain two (2) copies of all pleadings, motions 21 and trial briefs (including all supporting and opposing papers and exhibits thereto), written 22 discovery requests and responses (and exhibits thereto), deposition transcripts (and exhibits 23 thereto), trial transcripts, and exhibits offered or introduced into evidence at any hearing or trial, 24 and their attorney work product which refers or is related to any CONFIDENTIAL and 25 CONFIDENTIAL OUTSIDE COUNSEL ONLY information for archival purposes only. If a 26 27 28 18 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 party opts to destroy CONFIDENTIAL or CONFIDENTIAL OUTSIDE COUNSEL ONLY 2 information, the party must provide a Certificate of Destruction to the producing party. 3 D. If at any time documents containing Protected Information are subpoenaed by any 4 court, arbitral, administrative or legislative body, or are otherwise requested in discovery, the 5 person to whom the subpoena or other request is directed shall immediately give written notice 6 thereof to every party who has produced such documents and to its counsel and shall provide each 7 such party with an opportunity to object to the production of such documents. If a producing 8 party does not take steps to prevent disclosure of such documents within ten business days of the 9 date written notice is given, the party to whom the referenced subpoena is directed may produce 10 such documents in response thereto, but shall take all reasonable measures to have such 11 documents treated in accordance with terms of this Protective Order. 12 E. Testifying experts shall not be subject to discovery of any draft of their reports in 13 this case and such draft reports, notes, outlines, or any other writings leading up to an issued 14 report(s) in this litigation are exempt from discovery. In addition, all communications between 15 counsel for a party and that party’s testifying expert, and all materials generated by a testifying 16 expert with respect to that person’s work, are exempt from discovery unless they relate to the 17 expert’s compensation or identify facts, data or assumptions relied upon by the expert in forming 18 any opinions in this litigation and such information is not already disclosed in the expert’s report. 19 F. No party shall be required to identify on their respective privilege log any 20 document or communication dated on or after the filing of the lawsuit, which absent this 21 provision, the party would have been obligated to so identify on said privilege log. The parties 22 shall exchange their respective privilege document logs at a time to be agreed upon by the parties 23 following the production of documents. 24 G. This Order is entered without prejudice to the right of any party to apply to the 25 Court at any time for additional protection, or to relax or rescind the restrictions of this Order, 26 when convenience or necessity requires. Furthermore, without application to this Court, any 27 28 19 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 party that is a beneficiary of the protections of this Order may enter a written agreement releasing 2 any other party hereto from one or more requirements of this Order even if the conduct subject to 3 the release would otherwise violate the terms herein. 4 H. The United States District Court for the Eastern District of California is 5 responsible for the interpretation and enforcement of this Agreed Protective Order. After 6 termination of this litigation, the provisions of this Agreed Protective Order shall continue to be 7 binding except with respect to those documents and information that become a matter of public 8 record. This Court retains and shall have continuing jurisdiction over the parties and recipients of 9 the Protected Information for enforcement of the provision of this Agreed Protective Order 10 following termination of this litigation. All disputes concerning Protected Information produced 11 under the protection of this Agreed Protective Order shall be resolved by the United States 12 District Court for the Eastern District of California. 13 I. Nothing in this Protective Order shall preclude or impede outside litigation counsel 14 of record’s ability to communicate with or advise their client in connection with this litigation 15 only based on such counsel’s review and evaluation of Protected Information, provided however, 16 that such communications or advice shall not disclose or reveal the substance or content of any 17 Protected Information other than as permitted under this Protective Order. 18 J. Each of the parties agrees to be bound by the terms of this Protective Order as of 19 the date counsel for such party executes this Protective Order, even if prior to entry of this order 20 by the Court. 21 22 23 24 25 26 27 28 20 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 Dated: 2 By: 3 4 ______________________ ______________________________ [Name] NIRO, HALLER & NIRO Attorneys for IconFind, Inc. By: ________________________________ [Name] KAYE SCHOLER LLP Attorneys for Google Inc. 5 6 7 8 Dated: ________________________________________________ HON. GARLAND E. BURRELL, JR. UNITED STATES DISTRICT JUDGE 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 21 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM 1 2 ATTACHMENT A TO THE AGREED PROTECTIVE ORDER CONFIDENTIAL AGREEMENT 3 1. My name is ______________________________________________________________. 4 2. I reside at 5 3. My present employer is ______________ 6 4. My present occupation or job description is _________ 7 5. I have read the Agreed Protective Order dated , 2011, and have been engaged as on behalf of in the preparation and conduct of litigation styled Iconfind, Inc. v. Google Inc., Case No. 2:11-CV-00319 GEB JFM. 8 9 10 11 12 13 14 15 __________________ ___ . . . 6. I am fully familiar with and agree to comply with and be bound by the provisions of said Order. I understand that I am to retain all copies of any documents designated as CONFIDENTIAL, CONFIDENTIAL OUTSIDE COUNSEL ONLY and/or RESTRICTED CONFIDENTIAL-SOURCE CODE, or any similar designation, in a secure manner, and that all copies are to remain in my personal custody until I have completed my assigned duties, whereupon the copies and any writings prepared by me containing any information designated CONFIDENTIAL, CONFIDENTIAL OUTSIDE COUNSEL ONLY and/or RESTRICTED CONFIDENTIAL-SOURCE CODE, or any similar designation, are to be returned to counsel who provided me with such material. 16 17 18 7. I will not divulge to persons other than those specifically authorized by said Order, and will not copy or use except solely for the purpose of this action, any information obtained pursuant to said Order, except as provided in said Order. I also agree to notify any stenographic or clerical personnel who are required to assist me of the terms of said Order. 19 20 21 22 23 24 8. In accordance with paragraph 3C of the Agreed Protective Order (if applicable), I have attached my resume, curriculum vitae or other information to this executed Confidentiality Agreement sufficient to identify my current employer and employment history for the past ten years, and the cases in which I have testified as an expert at trial or by deposition within the preceding five years. 9. I state under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. 25 26 By: _____________________________________________ 27 28 PROTECTIVE ORDER Case No. 2:11-CV-00319 GEB JFM

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