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.).

1
2
3
4
5

Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

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.,

19

)
)
)

Case No. 2:11-CV-00319 GEB JFM
AGREED TO PROTECTIVE ORDER

)
)
)
)

17
18

)

Defendant.

)
)
)

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 hereby ORDERED THAT:
I.

INFORMATION SUBJECT 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
16

B.

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 CONFIDENTIAL OUTSIDE ATTORNEYS’ EYES ONLY, HIGHLY

25

CONFIDENTIAL or RESTRICTED CONFIDENTIAL shall be treated as if designated

26

CONFIDENTIAL OUTSIDE COUNSEL ONLY. In determining whether information should be

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 Court document, or any drafts of these documents ("SOURCE CODE DOCUMENTS").

24

The receiving party shall only include such excerpts as are reasonably necessary for the purposes

25

for which such part of the Source Code is used. Images or copies of Source Code shall not be

26

included in correspondence between the parties (references to production numbers shall be used

27
28

8
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

instead) and shall be omitted from pleadings and other papers except to the extent permitted

2

herein. The receiving party may create an electronic image of a selected portion of the Source

3

Code only when the electronic file containing such image has been encrypted using commercially

4

reasonable encryption software including password protection. The communication and/or

5

disclosure of electronic files containing any portion of Source Code shall at all times be limited to

6

individuals who are authorized to see Source Code under the provisions of this Protective Order.

7

The receiving party shall maintain a log of all electronic images and paper copies of Source Code

8

in its possession or in the possession of its retained consultants, including the names of the

9

recipients and reviewers of any electronic or paper copies and the locations where the copies are

10

stored. Additionally, all electronic copies must be labeled "RESTRICTED CONFIDENTIAL -

11

SOURCE CODE."

12

n.

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

Use of Protected Information at Trial

the event that a party intends to use any Protected Information during trial. In addition, the

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 Protected Information.

4

II.

5

PROSECUTION BAR
A.

A producing material may designate any Confidential Materials, Confidential

6

Outside Counsel Only Materials or Source Code as “PROSECUTION BAR MATERIAL.” Any

7

person reviewing any parties Prosecution Bar Materials shall not, for a period commencing upon

8

receipt of such information and ending one year following the conclusion of this case (including

9

any appeals) engage in any Prosecution Activity (as defined below) on behalf of a party asserting

10

a patent in this case. Furthermore, any person reviewing any of an opposing party’s Prosecution

11

Bar Materials shall not, for a period commencing upon receipt of such information and ending

12

one year following last reviewing such Prosecution Bar Material engage in any Prosecution

13

Activity involving claims on a method, apparatus, or system that involve coding, categorizing,

14

and/or retrieving information from a computer network.

15

B.

Prosecution Activity shall mean any activity related to the competitive business

16

decisions involving the preparation or prosecution (for any person or entity) of patent applications

17

relating to coding, categorizing, and/or retrieving information from a computer network or

18

advising or counseling clients regarding the same, including but not limited to providing any

19

advice, counseling or drafting of claims for any patent application, reexamination, or reissue

20

application. Notwithstanding the above, with respect to any reexamination relating to the patent-

21

in-suit in this matter, an attorney who reviews an opposing party’s Prosecution Bar Materials may

22

participate in such a reexamination to the extent limited to assisting reexamination counsel with

23

respect to issues relating to the characterization of the prior art but, in no event, relating to

24

amending or adding additional claims. Nothing in this paragraph shall prevent any attorney from

25

sending non-confidential prior art to an attorney involved in patent prosecution for purposes of

26

ensuring that such prior art is submitted to the U.S. Patent and Trademark Office (or any similar

27
28

10
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

agency of a foreign government) to assist a patent applicant in complying with its duty of candor.

2

Nothing in this provision shall prohibit any attorney of record in this litigation from discussing

3

any aspect of this case that is reasonably necessary for the prosecution or defense of any claim or

4

counterclaim in this litigation with his/her client. The parties expressly agree that the Prosecution

5

Bar set forth herein shall be personal to any attorney who reviews Prosecution Bar Materials and

6

shall not be imputed to any other persons or attorneys at the attorneys' law firm. It is expressly

7

agreed that attorneys who work on this matter without reviewing Prosecution Bar Materials shall

8

not be restricted from engaging in Prosecution Activity on matters that fall within the Prosecution

9

Bar.

10

III.

11

DISCLOSURE OF TECHNICAL ADVISERS
A.

Information designated by the producing party under any category of Protected

12

Information and such copies of this information as are reasonably necessary for maintaining,

13

defending or evaluating this litigation may be furnished and disclosed to the receiving party's

14

technical advisers and their necessary support personnel.

15

B.

No disclosure of Protected Information to a technical adviser or their necessary

16

support personnel shall occur until that person has signed the form attached hereto as Attachment

17

A, and a signed copy has been provided to the producing party; and to the extent there has been

18

an objection under paragraph 3.C., that objection is resolved according to the procedures set forth

19

below.

20

C.

Any party desiring to disclose Protected Information to a technical advisor shall

21

also give prior written notice of such intent specifically informing all counsel of record in the

22

litigation whether such intended disclosure extends to source code. In addition, the party desiring

23

to disclose Protected Information to a technical adviser must provide the following information

24

for each technical adviser: the name, address, curriculum vitae, current employer, employment

25

history for the past ten years, a listing of cases in which the witness has testified as an expert at

26

trial or by deposition within the preceding five years, and a identification of any patents or patent

27
28

11
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

applications in which the technical adviser is identified as an inventor or applicant, is involved in

2

prosecuting or maintaining, or has any pecuniary interest. The producing party shall have ten

3

business days after such notice to object in writing to the disclosure. No Protected Information

4

shall be disclosed to such expert(s) or consultant(s) until after the expiration of the foregoing

5

notice period and resolution of any objection.

6

D.

A party objecting to disclosure of Protected Information to a technical adviser

7

shall state with particularity the ground(s) of the objection. The objecting party's consent to the

8

disclosure of Protected Information to a technical adviser shall not be unreasonably withheld, and

9

its objection must be based on that party's good faith belief that disclosure of its Protected

10

Information to the technical adviser will result in specific business or economic harm to that

11

party.

12

E.

If after consideration of the objection, the party desiring to disclose the Protected

13

Information to a technical adviser refuses to withdraw the technical adviser, that party shall

14

provide notice to the objecting party. Thereafter, the objecting party shall move the Court, within

15

ten business days of receiving such notice, for a ruling on its objection. A failure to file a motion

16

within the ten business day period, absent an agreement of the parties to the contrary or for an

17

extension of such ten business day period, shall operate as an approval of disclosure of Protected

18

Information to the technical adviser. The parties agree to cooperate in good faith to shorten the

19

time frames set forth in this paragraph if necessary to abide by any discovery or briefing

20

schedules.

21

F.

The objecting party shall have the burden of showing to the Court "good cause"

22

for preventing the disclosure of its Protected Information to the technical adviser. This "good

23

cause" shall include a particularized showing that: (1) the Protected Information is confidential

24

commercial information, (2) disclosure of the Protected Information likely would result in a

25

clearly defined and serious injury to the objecting party's business, (3) the proposed technical

26

advisor is in a position to allow the Protected Information to be disclosed to or become known by

27
28

12
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

the objecting party's competitors, and (4) that the technical advisor’s access to Protected

2

Information may create other confidentiality or legal risks in connection with other patent-related

3

activities or interests tied to the technical advisor.

4

G.

A party who has not previously objected to disclosure of Protected Information to

5

a technical adviser or whose objection has been resolved with respect to previously produced

6

information shall not be precluded from raising an objection to a technical adviser at a later time

7

with respect to materials or information that are produced after the time for objecting to such a

8

technical adviser has expired. Any such objection shall be handled in accordance with the

9

provisions set forth above in Section 3(B) through (F).

10
11

IV.

CHALLENGES TO CONFIDENTIALITY DESIGNATIONS
A.

The parties shall use reasonable care when designating documents or information

12

as Protected Information. Nothing in this Order shall prevent a receiving party from contending

13

that any documents or information designated as Protected Information have been improperly

14

designated. A receiving party may at any time request that the producing party cancel or modify

15

the Protected Information designation with respect to any document or information contained

16

therein.

17

B.

A party shall not be obligated to challenge the propriety of a designation of any

18

category of Protected Information at the time of production, and a failure to do so shall not

19

preclude a subsequent challenge thereto. Such a challenge shall be written, shall be served on

20

counsel for the producing party, and shall particularly identify the documents or information that

21

the receiving party contends should be differently designated. The parties shall use their best

22

efforts to resolve promptly and informally such disputes. If an agreement cannot be reached, the

23

receiving party shall request that the Court cancel or modify a designation. The burden of

24

demonstrating the confidential nature of any information shall at all times be and remain on the

25

designating party.

26
27
28

13
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

C.

Until a determination by the Court, the information in issue shall be treated as

2

having been properly designated and subject to the terms of this Order.

3

V.

4

LIMITATIONS ON THE USE OF PROTECTED INFORMATION
A.

All Protected Information shall be held in confidence by each person to whom it is

5

disclosed, shall be used only for purposes of this litigation, shall not be used for any business

6

purpose or in connection with any other legal proceeding, and shall not be disclosed to any person

7

who is not entitled to receive such information as herein provided. All produced Protected

8

Information shall be carefully maintained so as to preclude access by persons who are not entitled

9

to receive such information.

10

B.

Except as may be otherwise ordered by the Court, any person may be examined as

11

a witness at depositions and trial and may testify concerning all Protected Information of which

12

such person has prior knowledge. Without in any way limiting the generality of the foregoing:

13

1.

A present director, officer, and/or employee of a producing party may be

14

examined and may testify concerning all Protected Information which has been produced by that

15

party and of which the witness has personal knowledge;

16

2.

A former director, officer, agent and/or employee of a producing party may

17

be interviewed, examined and may testify concerning all Protected Information of which he or

18

she has personal knowledge, including any Protected Information that refers to matters of which

19

the witness has personal knowledge, which has been produced by that party and which pertains to

20

the period or periods of his or her employment; and

21

3.

Non-parties may be examined or testify concerning any document

22

containing Protected Information of a producing party which appears on its face or from other

23

documents or testimony to have been received from or communicated to the non-party as a result

24

of any contact or relationship with the producing party or a representative of the producing party.

25

Any person other than the witness, his or her attorney(s), or any person qualified to receive

26

Protected Information under this Order shall be excluded from the portion of the examination

27
28

14
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

concerning such information, unless the producing party consents to persons other than qualified

2

recipients being present at the examination. If the witness is represented by an attorney who is

3

not qualified under this Order to receive such information, then prior to the examination, the

4

attorney must provide a signed statement, in the form of Attachment A hereto, that he or she will

5

comply with the terms of this Order and maintain the confidentiality of Protected Information

6

disclosed during the course of the examination. In the event that such attorney declines to sign

7

such a statement prior to the examination, the parties, by their attorneys, shall jointly seek a

8

protective order from the Court prohibiting the attorney from disclosing Protected Information.

9

4.

All transcripts of depositions, exhibits, answers to interrogatories,

10

pleadings, briefs, and other documents submitted to the Court which have been designated as

11

Protected Information, or which contain information so designated, shall be filed under seal in a

12

manner prescribed by the Court for such filings.

13

5.

Outside attorneys of record for the parties are hereby authorized to be the

14

persons who may retrieve confidential exhibits and/or other confidential matters filed with the

15

Court upon termination of this litigation without further order of this Court, and are the persons to

16

whom such confidential exhibits or other confidential matters may be returned by the Clerk of the

17

Court, if they are not so retrieved. No material or copies thereof so filed shall be released except

18

by order of the Court, to outside counsel of record, or as otherwise provided for hereunder.

19

Notwithstanding the foregoing and with regard to material designated as Restricted Confidential -

20

Source Code, the provisions of Paragraph 1.C. are controlling to the extent those provisions differ

21

from this paragraph.

22

6.

Protected Information shall not be copied or otherwise produced by a

23

receiving party, except for transmission to qualified recipients, without the written permission of

24

the producing party, or, in the alternative, by further order of the Court. Nothing herein shall,

25

however, restrict a qualified recipient from making working copies, abstracts, digests and

26

analyses of CONFIDENTIAL and CONFIDENTIAL OUTSIDE COUNSEL ONLY information

27
28

15
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

for use in connection with this litigation and such working copies, abstracts, digests and analyses

2

shall be deemed Protected Information under the terms of this Order. Further, nothing herein

3

shall restrict a qualified recipient from converting or translating CONFIDENTIAL and

4

CONFIDENTIAL OUTSIDE COUNSEL ONLY information into machine readable form for

5

incorporation into a data retrieval system used in connection with this action, provided that access

6

to that Protected Information, in whatever form stored or reproduced, shall be limited to qualified

7

recipients.

8

7.

At the request of any party, the original and all copies of any deposition

9

transcript, in whole or in part, shall be marked "CONFIDENTIAL” by the reporter. This request

10

may be made orally during the deposition or in writing within fifteen (15) days of receipt of the

11

final certified transcript. Deposition transcripts shall be treated by default as CONFIDENTIAL

12

OUTSIDE COUNSEL ONLY until the expiration of the time to make a confidentiality

13

designation. Any portions so designated shall thereafter be treated in accordance with the terms

14

of this Order.

15

C.

No Protected Information may leave the territorial boundaries of the United States

16

of America. Without limitation, this prohibition extends to Protected Information (including

17

copies) in physical and electronic form. The viewing of Protected Information through electronic

18

means outside the territorial limits of the United States of America is similarly prohibited.

19

Notwithstanding this prohibition, Protected Information, exclusive of material designated

20

RESTRICTED CONFIDENTIAL - SOURCE CODE, and to the extent otherwise permitted by

21

law, may be taken outside the territorial limits of the United States if it is reasonably necessary

22

for a deposition taken in a foreign country. The restrictions contained within this paragraph may

23

be amended through the consent of the producing Party to the extent that such agreed to

24

procedures conform with applicable export control laws and regulations.

25
26
27
28

16
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

VI.

2

NON-PARTY USE OF THIS PROTECTIVE ORDER
A.

A nonparty producing information or material voluntarily or pursuant to a

3

subpoena or a court order may designate such material or information as Protected Information

4

pursuant to the terms of this Protective Order.

5

B.

A nonparty's use of this Protective Order to protect its Protected Information does

6

not entitle that nonparty access to the Protected Information produced by any party in this case.

7

VII.

NO WAIVER OF PRIVILEGE

8

Nothing in this Protective Order shall require production of information that a party

9

contends is protected from disclosure by the attorney-client privilege, the work product immunity

10

or other privilege, doctrine, right, or immunity. If information subject to a claim of attorney-

11

client privilege, work product immunity, or other privilege, doctrine, right, or immunity is

12

nevertheless inadvertently or unintentionally produced, such production shall in no way prejudice

13

or otherwise constitute a waiver or estoppel as to any such privilege, doctrine, right or immunity.

14

Any party that inadvertently produces materials protected the attorney-client privilege, work

15

product privilege, or other privilege, doctrine, right, or immunity may obtain the return of those

16

materials by promptly notifying the recipient(s) and providing a privilege log for the inadvertently

17

produced materials. The recipient(s) shall gather and return all copies of the privileged material

18

to the producing party, except for any pages containing privileged markings by the recipient,

19

which pages shall instead be destroyed and certified as such by the recipient to the producing

20

party. Notwithstanding this provision, outside litigation counsel of record are not required to

21

delete information that may reside on their respective firm's electronic back-up systems that are

22

over-written in the normal course of business.

23

VIII. MISCELLANEOUS PROVISIONS

24

A.

Any of the notice requirements herein may be waived, in whole or in part, but only

25

in writing signed by the attorney-in-charge for the party against whom such waiver will be

26

effective.

27
28

17
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

B.

Inadvertent or unintentional production of documents or things containing

2

Protected Information which are not designated as one or more of the three categories of

3

Protected Information at the time of production shall not be deemed a waiver in whole or in part

4

of a claim for confidential treatment. With respect to documents, the producing party shall

5

immediately upon discovery notify the other parties of the error in writing and provide

6

replacement pages bearing the appropriate confidentiality legend. In the event of any disclosure

7

of Protected Information other than in a manner authorized by this Protective Order, including

8

any unintentional or inadvertent disclosure, counsel for the party responsible for the disclosure

9

shall immediately notify opposing counsel of all of the pertinent facts, and make every effort to

10

further prevent unauthorized disclosure including, retrieving all copies of the Protected

11

Information from the recipient(s) thereof, and securing the agreement of the recipients not to

12

further disseminate the Protected Information in any form. Compliance with the foregoing shall

13

not prevent the producing party from seeking further relief from the Court.

14

C.

Within sixty days after the entry of a final non-appealable judgment or order, or

15

the complete settlement of all claims asserted against all parties in this action, each party shall, at

16

the option of the producing party, either return or destroy all physical objects and documents

17

which embody Protected Information it has received, and shall destroy in whatever form stored or

18

reproduced, all physical objects and documents, including but not limited to, correspondence,

19

memoranda, and notes, which contain or refer to any category of Protected Information. All

20

Protected Information, not embodied in physical objects and documents shall remain subject to

21

this Order. In the event that a party is dismissed before the entry of a final non-appealable

22

judgment or order, this same procedure shall apply to any Protected Information received from or

23

produced to the dismissed party. Notwithstanding this provision, outside litigation counsel of

24

record are not required to delete information that may reside on their respective firm's electronic

25

back-up systems that are over-written in the normal course of business. Notwithstanding the

26

foregoing, outside counsel shall be entitled to maintain two (2) copies of all pleadings, motions

27
28

18
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

and trial briefs (including all supporting and opposing papers and exhibits thereto), written

2

discovery requests and responses (and exhibits thereto), deposition transcripts (and exhibits

3

thereto), trial transcripts, and exhibits offered or introduced into evidence at any hearing or trial,

4

and their attorney work product which refers or is related to any CONFIDENTIAL and

5

CONFIDENTIAL OUTSIDE COUNSEL ONLY information for archival purposes only. If a

6

party opts to destroy CONFIDENTIAL or CONFIDENTIAL OUTSIDE COUNSEL ONLY

7

information, the party must provide a Certificate of Destruction to the producing party.

8
9

D.

If at any time documents containing Protected Information are subpoenaed by any

court, arbitral, administrative or legislative body, or are otherwise requested in discovery, the

10

person to whom the subpoena or other request is directed shall immediately give written notice

11

thereof to every party who has produced such documents and to its counsel and shall provide each

12

such party with an opportunity to object to the production of such documents. If a producing

13

party does not take steps to prevent disclosure of such documents within ten business days of the

14

date written notice is given, the party to whom the referenced subpoena is directed may produce

15

such documents in response thereto, but shall take all reasonable measures to have such

16

documents treated in accordance with terms of this Protective Order.

17

E.

Testifying experts shall not be subject to discovery of any draft of their reports in

18

this case and such draft reports, notes, outlines, or any other writings leading up to an issued

19

report(s) in this litigation are exempt from discovery. In addition, all communications between

20

counsel for a party and that party’s testifying expert, and all materials generated by a testifying

21

expert with respect to that person’s work, are exempt from discovery unless they relate to the

22

expert’s compensation or identify facts, data or assumptions relied upon by the expert in forming

23

any opinions in this litigation and such information is not already disclosed in the expert’s report.

24

F.

No party shall be required to identify on their respective privilege log any

25

document or communication dated on or after the filing of the lawsuit, which absent this

26

provision, the party would have been obligated to so identify on said privilege log. The parties

27
28

19
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

shall exchange their respective privilege document logs at a time to be agreed upon by the parties

2

following the production of documents.

3

G.

This Order is entered without prejudice to the right of any party to apply to the

4

Court at any time for additional protection, or to relax or rescind the restrictions of this Order,

5

when convenience or necessity requires. Furthermore, without application to this Court, any

6

party that is a beneficiary of the protections of this Order may enter a written agreement releasing

7

any other party hereto from one or more requirements of this Order even if the conduct subject to

8

the release would otherwise violate the terms herein.

9

H.

The United States District Court for the Eastern District of California is

10

responsible for the interpretation and enforcement of this Agreed Protective Order. After

11

termination of this litigation, the provisions of this Agreed Protective Order shall continue to be

12

binding except with respect to those documents and information that become a matter of public

13

record. This Court retains and shall have continuing jurisdiction over the parties and recipients of

14

the Protected Information for enforcement of the provision of this Agreed Protective Order

15

following termination of this litigation. All disputes concerning Protected Information produced

16

under the protection of this Agreed Protective Order shall be resolved by the United States

17

District Court for the Eastern District of California.

18

I.

Nothing in this Protective Order shall preclude or impede outside litigation counsel

19

of record’s ability to communicate with or advise their client in connection with this litigation

20

only based on such counsel’s review and evaluation of Protected Information, provided however,

21

that such communications or advice shall not disclose or reveal the substance or content of any

22

Protected Information other than as permitted under this Protective Order.

23

J.

Each of the parties agrees to be bound by the terms of this Protective Order as of

24

the date counsel for such party executes this Protective Order, even if prior to entry of this order

25

by the Court.

26
27
28

20
PROTECTIVE ORDER
Case No. 2:11-CV-00319 GEB JFM

1

SO ORDERED.

2
3
4

Dated:

________________________________________________
HON. GARLAND E. BURRELL, JR.
UNITED STATES DISTRICT JUDGE

5
6
7
8
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
on behalf of
engaged as
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