Oracle America, Inc. v. Google Inc.

Filing 163

ORDER re #145 Letter filed by Oracle America, Inc. Signed by Magistrate Judge Donna M. Ryu on 6/6/2011. (dmrlc2, COURT STAFF) (Filed on 6/6/2011)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

United States District Court

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ORACLE AMERICA, INC.,

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Plaintiff,

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v.

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SUPPLEMENTAL ORDER RE ACCESS
TO "ATTORNEYS' EYES ONLY"
INFORMATION

GOOGLE INC.,

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No. C-10-03561 WHA (DMR)

Defendant.
___________________________________/

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On May 18, 2011, the parties submitted a joint letter regarding Plaintiff Oracle's request that

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four of its in-house counsel be given access to certain highly sensitive "attorneys' eyes only"

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("AEO") information pursuant to the stipulated protective order in this case. [Docket No. 145].

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Since such decisions must be determined by the facts "on a counsel-by-counsel basis," In re

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Deutsche Bank Trust Co. Americas, 605 F.3d 1373, 1378 (Fed. Cir. 2010) (quoting U.S. Steel Corp.

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v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984) (quotation marks omitted)), the Court ordered

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Oracle to provide further detailed information in the form of declarations by the four attorneys.

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[Docket No. 146]. On May 31, 2011, the Court conducted a hearing, took oral argument, and

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ultimately found that one of the designated Oracle attorneys -- General Counsel Dorian Daley --

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participates in competitive decision-making and should not be provided access to AEO in this case.

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[Docket No. 155].

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The Court found that two other Oracle lawyers -- Deborah Miller and Matthew Sarboraria --

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are in-house litigators who largely do not participate in competitive decision-making and should be

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given access to most AEO. Id. However, because Ms. Miller and Mr. Sarboraria review license

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agreements as they arise in disputes, in the course of negotiating such agreements, and/or in the

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context of case settlements, the Court held that they should be barred from access to AEO in the

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form of contracts with carriers or hardware manufacturers. Id. This is due to the fact that their

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involvement in evaluating licensing agreements necessarily affects Oracle's competitiveness in the

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market.

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As noted by the case law, an attorney's agreement to keep certain information confidential
can be insufficient to prevent inadvertent disclosure of the information. Even with the best of efforts

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For the Northern District of California

United States District Court

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and intentions, it is not possible to "lock-up trade secrets in [one's] mind, safe from inadvertent

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disclosure to [one's] employer." See, e.g., Brown Bag Software v. Symantec Corp., 960 F.2d 1465,

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1471 (9th Cir. 1992); see also In re Deutsche Bank, 605 F.3d at 1378 (noting that it can be "humanly

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impossible" to control inadvertent disclosure by in-house counsel of "extremely potent" confidential

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information (quotation marks omitted)). Notwithstanding Ms. Miller’s and Mr. Sarboraria’s

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agreement to treat Google’s AEO information in the strictest confidence, they nevertheless may be

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affected by what they see. Having access to Google’s third party agreements may well impact their

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approach in crafting Oracle’s licensing agreements; barring them from access to such documents is a

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reasonable means to avoid that risk.

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With respect to Oracle designated in-house counsel Andrew Temkin, the Court held that it

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needed further information to evaluate whether he should be provided access to AEO materials.

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[Docket No. 155]. Oracle subsequently filed Mr. Temkin's supplemental declaration. [Docket No.

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159]. Google filed a responsive letter brief. [Docket No. 162]. The Court has reviewed the parties'

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supplemental materials and now finds that, as with Ms. Miller and Mr. Sarboraria, Mr. Temkin is an

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in-house litigator who, for the most part, does not participate in competitive decision-making.

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However, because of his involvement in reviewing and negotiating license agreements, he also

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should be barred from carrier and hardware manufacturer contracts that have been designated as

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AEO.

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Mr. Temkin to view AEO information. Defendant directs the Court to the analysis in Intel Corp. v.

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Via Techs., Inc., 198 F.R.D. 525, 529 (N.D. Ca. 2000), and argues that "[n]o demonstration of

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specialized knowledge has been made and [the proposed attorney's] limited experience fails to

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support any claim that [the lawyer] is indispensible to the litigation." However, the parties'

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stipulation requires a far more modest showing by the party seeking access to AEO by Designated

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House Counsel. That party must "set forth in detail the reasons why the disclosure to Designated

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House Counsel ... is reasonably necessary." [Docket No. 66 (Stipulated Protective Order) ¶ 7.4(c)].

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Here, Plaintiff has explained that Mr. Temkin requires access to AEO because he is one of the in-

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house attorneys responsible for the case, that he will be attending certain depositions and making

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rapid reports to more senior members of the in-house team, and also will be reviewing and reporting

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on certain documents. Although Oracle has retained a host of able outside counsel to represent its

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interests, it is understandable that Oracle also intends to rely on a handful of trusted members of its

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in-house team to provide oversight, advice, and guidance in this complex patent case. Indeed, the

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stipulated protective order itself contemplates that each party may designate up to five in-house

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counsel to view AEO materials. Id. ¶ 7.3(b).

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In sum, after conducting a counsel-by-counsel and case-specific evaluation, the Court finds

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that three of the four Designated House Counsel named by Oracle should be provided access to AEO

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information pursuant to the stipulated protective order, subject to the limitations set forth above.

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Dated: June 6, 2011

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Judge D
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Ryu

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O ORD
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IT IS SO ORDERED.

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UNIT
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For the Northern District of California

Defendant argues that Plaintiff has not met its burden of establishing the particular need for

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United States District Court

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N

OF
D ST I
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M. IRYUC T

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DONNA
United States Magistrate Judge

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