Jimenez Works, L.L.C. v. Otsuka et al

Filing 14

STIPULATED PROTECTIVE ORDER signed by Magistrate Judge Kendall J. Newman on 10/23/17 re 13 Motion for Protective Order. (Mena-Sanchez, L)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA

JIMENEZ WORKS, LLC.
Plaintiff,
v.
IVAN OTSUKA, et al.
Defendants.

) Case No.: 2:17−CV−01435−KJM−KJN
)
)
) STIPULATED PROTECTIVE
) ORDER
)
)
)

Disclosure and discovery activity in this action are likely to involve production of
confidential, proprietary, or private information for which special protection from public
disclosure and from use for any purpose other than prosecuting this litigation may be
warranted. Accordingly, the parties hereby stipulate to and petition the court to enter the
following Stipulated Protective Order. The parties acknowledge that this Order does not
confer blanket protections on all disclosures or responses to discovery and that the protection
it affords from public disclosure and use extends only to the limited information or items that
are entitled to confidential treatment under the applicable legal principles. The parties further
acknowledge that this Stipulated Protective Order does not entitle them to file confidential
information under seal; Civil Local Rule 141 sets forth the procedures that must be followed
and the standards that will be applied when a party seeks permission from the court to file

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material under seal.
In the interest of expediting discovery and limiting disputes regarding access to such
information, it is hereby stipulated and agreed, by and among the parties in the above-entitled
action (“the Action”), as follows:
1.

Applicability. This order for the protection of Confidential Material

(“Protective Order”) shall be applicable to and shall govern without limitation all documents,
testimony, materials, and information produced pursuant to Rule 26 disclosures, subpoena,
requests for production of documents and things, depositions, interrogatory answers,
responses to requests for admissions, any other discovery or production of information
required or authorized by the Federal Rules of Civil Procedure, court testimony, or matters of
evidence in connection with the Action. Any third party responding to subpoenas issued in
this Action or providing deposition or trial testimony in this Action, may gain the protection
of this Order by indicating an intention so to do and by comporting itself with the
requirements and obligations of this Order.
2.

Confidential Designation. Any party or non-party with a reasonable, good

faith belief that any documents, materials, or information produced in this case are
Confidential Material may, at the time of production (or in the case of testimony, pursuant to
the timeline set out hereinafter), and by written notice as described herein, designate such
documents, materials, or information as “Confidential” or “Confidential - Attorneys’ Eyes
The information so designated, collectively referred to herein as “Confidential

Only.”

Material,” shall thereafter be subject to the provisions of this Protective Order. A party
making such designation shall be referred to herein as the “Designating Party.” A party
receiving such Confidential Material shall be referred to herein as the “Receiving Party.”
3.

Marking Documents. Any documents, materials, or information to be

designated Confidential Material may be so designated either by:
(a)

Furnishing a separate written notice to the counsel for the Receiving

Party regarding such documents, materials, or information, at the time of their production or

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as soon thereafter as practicable, specifically identifying the documents, materials, or
information to be so designated (for example, by identifying the document number(s)) and
their respective designations; or
(b)

Affixing the legend “CONFIDENTIAL” or “CONFIDENTIAL -

ATTORNEYS’ EYES ONLY” on such documents, materials, or information prior to their
production. Stamping such a legend on the cover of any multi-page document shall designate
all pages of such document, unless otherwise indicated by the Designating Party.
4.

Scope Of “Confidential.” For purposes of this Protective Order, the term

“Confidential” shall mean information (regardless of how it is generated, stored or
maintained) or tangible things that qualify for protection under Federal Rule of Civil
Procedure 26(c), including but not limited to any and all documents, materials, or information
concerning the products, projects, activities, intellectual property, marketing, promotion,
business, or financial affairs of any party to the Action acquired in the course of the party’s
respective work that such party believes in good faith would qualify for a protective order if
sought from the Court. For purposes of this Protective Order, the term “Confidential Attorneys’ Eyes Only” shall mean any and all Confidential Material that qualifies as
“Confidential” and disclosure of which to another Party or Non-Party would create a
substantial risk of serious harm that could not be avoided by less restrictive means, including
but not limited to financial information about the party, future business and marketing plans,
pending patent applications, customer information, competitive information, product
formulation details, product design details, or proprietary computer source code.
5.

Inadvertent Production. The inadvertent production of any Confidential

Material during discovery in the Action without a “Confidential” or “Confidential Attorneys’ Eyes Only” designation shall be without prejudice to any claim that such material
is Confidential, Confidential - Attorneys’ Eyes Only, privileged in any respect, or protected
from discovery as trial preparation material, provided that, upon discovery of the omission of
the “Confidential” or “Confidential - Attorneys’ Eyes Only” designation, the party producing

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such material promptly provides a written notice to the parties to whom the material was
produced identifying the material and the designation to be applied to that material. No party
shall be held to have waived any rights by such inadvertent production. In the event that any
document, material, or information that is subject to a claim of privilege or that is protected
from discovery as trial preparation material is inadvertently produced, the party that received
the document, material, or information shall return same, together with all copies thereof, to
the producing party promptly after it receives a written notice from the producing party that
the document, material, or information was produced inadvertently.
6.

Disclosure Of “Confidential Information.” Subject to the provisions of

paragraphs 7, 9, and 14 below, Confidential information shall be disclosed only to:
a.

No more than two employees, officers, or board members of each

party, to be designated as such by each party in writing prior to disclosure;
b.

This Court and any court to which an appeal might lie, including court

personnel and trial jurors;
c.

Outside litigation counsel of record for the non-designating parties,

together with their respective associate attorneys and office personnel employed or engaged
in the preparation for, or aiding in the trial of, the Action;
d.

No more than two outside business counsel of each party, to be

designated as such by each party in writing prior to disclosure, together with their employed
office personnel;
e.

Outside vendors who perform microfiching, photocopying, computer

classification, or similar clerical functions, but only for so long as and to the extent necessary
to perform those services;
f.

Court reporters and other persons engaged in preparing transcripts of

testimony of hearings in the Action;
g.

Outside experts and/or advisors consulted by counsel in connection

with the Action, whether or not retained to testify at trial, except that, absent written consent

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from the Designating Party, no party shall disclose Confidential Material to any expert or
advisor, or to such person’s support personnel, if such person currently or at any time in the
past has been an employee, contractor, or customer of any of the parties ;
h.

Jury selection consultants, and participants in any mock trial or similar

simulation, employed for purposes of trial preparation in this matter but only for so long as
and to the extent necessary to perform those services;
i.

Witnesses at any deposition in the Action, subject to the provisions of

paragraphs 11, 12, and 13 of this Protective Order to the extent that the witness is reflected on
the face of the document, or is reasonably believed by counsel to be, a writer or a recipient of
the document; and
j.
7.

Any other persons to whom the Designating Party agrees in writing.

Agreements To Abide By The Order. Prior to being permitted access to

Confidential Material subject to this Protective Order, any individual or business entity
described in paragraphs 6(a), (d), (e), and (g)-(j) shall sign the form of agreement annexed
hereto as Appendix A. The original of each agreement shall be retained by counsel of record
for the party permitting disclosure.
8.

Disclosure Of “Confidential - Attorneys’ Eyes Only Information.” In the

event that a party designates information as Confidential - Attorneys’ Eyes Only, the
information shall be treated the same as and shall be subject to the same procedures as set
forth in this Protective Order for information designated Confidential, except that such
information shall be disclosed only to persons identified in subparagraphs b-j of Paragraph 6
above.
9.

“Restricted Source Code” Designation. A party may designate its computer

source code as “RESTRICTED SOURCE CODE.” In such an event, the code will be treated
as if designated CONFIDENTIAL - ATTORNEYS’ EYES ONLY, with the following
additional protections and procedures for review:
a.

The code may only be inspected or reviewed by persons identified in

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subparagraphs b, c, g or j of Paragraph 6 above (“Reviewing Parties”).
b.

The code will be made available in electronic format at (1) the offices

of the producing party’s primary outside counsel of record in this action; or (2) a location
mutually agreed upon by the parties.
c.

The code will be loaded on a single, non-networked computer that is

password protected and maintained in a secure area.
d.

The computer containing the code will be made available for

inspection during regular business hours, upon reasonable notice to the Designating Party,
which shall not be less than three business days in advance of the requested inspection.
e.

A Reviewing Party may request that commercially-available licensed

software tools for viewing and searching source code be installed on the secured computer.
The Reviewing Party must provide the Designating Party with such software tool(s) at least
four business days in advance of the inspection to allow for installation.
f.

The Reviewing Party shall be entitled to take notes relating to the code

but may not copy more than five consecutive lines of the code into the notes, and may not
copy more than thirty lines of the code into the notes in total. No copies of all or any portion
of the code may leave the room in which the code is inspected except as agreed to in writing
by the Designating Party.
g.

No Reviewing Party shall copy, e-mail, transmit, upload, download,

print, photograph or otherwise duplicate any portion of the designated code.
h.

The parties agree to negotiate in good faith regarding any additional

safeguards or procedures necessary to the review of compute source code. Failing agreement,
the parties agree to present their dispute expeditiously to the Court for resolution.
10.

No Other Purposes. All material designated Confidential Material in

accordance with this Protective Order shall be used solely for the purposes of prosecuting or
defending the Action and in connection with any appeals thereof. It may not be used for any
business or commercial purpose, or for any other litigations, administrative proceedings, or

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dispute resolution procedures, except by written agreement with the Designating Party or
upon order of this Court after reasonable notice and a hearing at which the Designating and
Receiving Parties shall have an opportunity to be heard. No person receiving any material
designated as Confidential or Confidential - Attorneys’ Eyes Only shall disclose such
material to any person other than those described above, and such disclosure shall be in
accordance with the terms of this Protective Order.
11.

Does Not Apply To Public Information. This Protective Order shall not be

construed to apply to information which:
a.

Is or becomes publicly known through no fault of the Receiving Party;

b.

The Receiving Party or its counsel has, subsequent to the date of

or

receipt of the information from the Designating Party, lawfully obtained from a third party or
independently developed.
12.

Use At Depositions. All testimony, documents, material, or information

disclosed at a deposition shall be treated as Confidential - Attorneys’ Eyes Only during the
deposition and until fourteen (14) days after the testimony is transcribed in final form and
provided to counsel, unless counsel for the parties agree to a different period of time. During
such period, any party to the Action may notify another in writing that designated portions of
the transcript, specified by pages and lines thereof, are Confidential or Confidential Attorneys’ Eyes Only. Such designated portions will then be treated as if so designated at the
deposition. Any portions not so designated within the fourteen (14) day period may be used
without restriction under this Protective Order.
13.

Prosecution Bar. Absent written consent from the Producing Party, any

individual who receives access to “Confidential - Attorneys’ Eyes Only Information” and/or
“Restricted Source Code” information shall not be involved in the prosecution of patents or
patent applications relating to the subject matter of this action, including without limitation
the patents asserted in this action and any patent or application claiming priority to or

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otherwise related to the patents asserted in this action, before any foreign or domestic agency,
including the United States Patent and Trademark Office (“the Patent Office”). For purposes
of this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising,
or otherwise affecting the scope or maintenance of patent claims. To avoid any doubt,
“prosecution” as used in this paragraph does not include representing a party challenging a
patent before a domestic or foreign agency (including, but not limited to, a reissue protest, ex
parte reexamination or inter partes reexamination). This Prosecution Bar shall begin when
access to “Confidential - Attorneys’ Eyes Only Information” and/or “Restricted Source
Code” information is first received by the affected individual and shall end two (2) years
after final termination of this action.
14.

Filing With The Court. In the event that any party, person, or entity

otherwise bound by this Protective Order intends to file any Confidential Material in the
public record, such material shall be filed under seal in accordance with the applicable Rules
of the Court.
15.

Destruction At Conclusion Of The Action. Within sixty (60) days after the

conclusion of the Action and any appeals arising therefrom, all originals and copies of
Confidential Material, other than material provided to the Court or Court personnel, shall be
destroyed and a written statement certifying destruction shall be sent to opposing counsel.
Alternatively, at the option of the Designating Party, and at that party’s expense, a party may
request all Confidential Material it produced be returned for its own disposition. Except for
Confidential Material that is (a) maintained by counsel as part of counsel’s collection of
documents filed of record in the case, or that is (b) included in counsel’s work product that is
securely stored, all copies summaries and compilations of, and extracts from, Confidential
Material, and all written, graphic, and recorded versions of information therein, shall be
destroyed by each Receiving Party and a certificate of destruction shall be provided by the
Receiving Party. The conclusion of the Action shall not relieve any person who has received
Confidential or Confidential - Attorneys’ Eyes Only material pursuant to this Protective

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Order from the obligation to maintain the confidentiality of such material and the information
contained therein.
16.

Challenging The Designation. If any documents, information, or testimony

are designated as Confidential or Confidential - Attorneys’ Eyes Only, but are not believed in
good faith to be Confidential or Confidential - Attorneys’ Eyes Only by any Receiving Party,
that party shall notify the Designating Party, in writing, and request a release of
confidentiality. If such a release is not forthcoming within five (5) days, the objecting party
may apply to the Court for an order requiring the release of confidentiality. On any motion to
the Court regarding a claim of confidentiality, the party seeking to assert confidentiality shall
have the burden of proof.
17.

Correcting Designation Errors. If Confidential or Confidential - Attorneys’

Eyes Only documents, materials, information, or things are produced or disclosed without
having been so designated, future disclosure of the documents, materials, information, or
things may be restricted in accordance with this Protective Order by the following procedure:
a.

The Designating Party shall notify all Receiving Parties in writing of

the proper designation and provide to all Receiving Parties new versions of the documents,
materials, or information containing the proper designations.
b.

The Receiving Parties shall take reasonable steps to destroy all copies

of the documents, materials, or information containing the incorrect designation. Within
seven (7) days of notification by the Designating Party, the Receiving Parties shall certify
completion of these efforts and identify all persons to whom the incorrectly designated
documents, materials, or information was disclosed except for persons who are properly
permitted access to the documents, materials, or information under Paragraph 6 above.
18.

Improper Disclosure. If Confidential or Confidential - Attorneys’ Eyes Only

documents, materials, or information designated in accordance with the procedures of this
Protective Order are disclosed to any person other than in the manner authorized by this
Protective Order, the party responsible for the disclosure must immediately bring all pertinent

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facts relating to such disclosure to the attention of the counsel of record for the party whose
Confidential Material was disclosed and, without prejudice to any other rights and remedies
of the provider, make every effort to prevent further disclosure by it or by the person or entity
who was the recipient of such documents, materials, or information.
19.

Jurisdiction After Conclusion Of The Action. The Court shall retain

jurisdiction after termination of the Action to enforce this Protective Order and to make such
amendments, modifications, deletions, and additions to this Protective Order as the Court
may from time to time deem appropriate. The parties hereto may apply to the Court at any
time, before or after termination, for an order modifying this Protective Order or seeking
further protection against discovery or use of Confidential or Confidential - Attorneys’ Eyes
Only documents, materials, or information.
20.

No Interference With Advice. Nothing in this Protective Order shall bar or

otherwise restrict any attorney herein from rendering advice to a client with respect to the
Action, and, in the course thereof, referring to or relying in a general way upon the attorney’s
examination of Confidential Material produced or exchanged hereunder. Provided, however,
that in rendering such advice and in otherwise communicating with their client, the attorney
shall not disclose the specific contents of any Confidential Materials produced by another
party herein, which disclosure would be contrary to the terms of this Protective Order.
21.

No Interference With Briefing. Nothing in this Protective Order shall bar or

otherwise restrict any attorney herein from making general references in publicly-filed
documents not under seal to Confidential Material, provided that the specific contents of the
Confidential Material is not revealed.
22.

Violation Of The Order. In the event anyone shall violate or threaten to

violate any terms of this Protective Order, the parties agree that the aggrieved party may
immediately apply to obtain injunctive relief against any such person violating or threatening
to violate any of the terms of this Protective Order. In the event the aggrieved party shall do
so, the respondent person subject to the provisions of this Protective Order shall not employ

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as a defense thereto the claim that the aggrieved party possesses an adequate remedy of law.
23.

Submission To The Court. The parties agree to submit this Protective Order

to the Court for the Court’s approval, and further agree that, until this Protective Order is
approved and entered by the Court, it shall be effective as between the parties as if so
approved and entered.
Respectfully submitted,
/s/ Jeffrey D. Shewchuk
John D. Pernick (Bar No. 155468)
[e-mail]
BERGESON LLP
2033 Gateway Place, Suite 300
San Jose, CA 95110
Telephone: [phone]
Facsimile: [phone]
Jeffrey D. Shewchuk (Pro Hac Vice)
[e-mail]
SHEWCHUK IP SERVICES, LLC
3356 Sherman Ct. Ste. 102
Eagan, MN 55121
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
Jimenez Works, LLC
/s/ Igor Shoiket
Michael E. Dergosits (SBN 118206)
[e-mail]
Igor Shoiket (SBN 190066)
[e-mail]
DERGOSITS & NOAH LLP
One Embarcadero Center, Suite 350
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendants
Ivan Otsuka and Hall of Fame Services, LLC

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IT IS SO ORDERED, with the following exceptions and clarifications:
1. The parties are not authorized to automatically file documents with the court under
seal. The parties shall comply with the provisions of Local Rules 140 and 141
with respect to sealing or redaction requests.
2. Prior to filing any motion related to this stipulated protective order or other
discovery motion, the parties shall first exhaust informal meet-and-confer efforts
and otherwise comply with Local Rule 251.
3. Nothing in this order limits the testimony of parties or non-parties, or the use of
certain documents, at any court hearing or trial—such determinations will only be
made by the court at the hearing or trial, or upon an appropriate motion.
4. Pursuant to Local Rule 141.1(f), the court will not retain jurisdiction over
enforcement of the terms of this stipulated protective order after the action is
terminated.
IT IS SO ORDERED. This order resolves ECF No. 13.

Dated: October 23, 2017

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