Oracle America, Inc. v. Google Inc.

Filing 596

ORDER DENYING MOTION TO RETAIN CONFIDENTIALITY DESIGNATIONS AND VACATING HEARING by Judge Alsup denying #513 Motion to Retain Confidentiality Designations (whalc1, COURT STAFF) (Filed on 11/2/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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ORACLE AMERICA, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

ORDER DENYING
MOTION TO RETAIN
CONFIDENTIALITY
DESIGNATIONS AND
VACATING HEARING

GOOGLE INC.,
Defendant.
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No. C 10-03561 WHA

INTRODUCTION
In this patent and copyright infringement action, defendant moves to retain its

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confidentiality designations as to certain produced documents. For the reasons stated below, the

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motion is DENIED.

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STATEMENT
The facts of this action have been set forth in previous orders (see Dkt. Nos. 137, 230,

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433). In August 2011, Magistrate Judge Ryu ordered defendant Google Inc. to produce the final

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version and all nine drafts of an email by Google engineer Tim Lindholm, based on a finding that

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“Google has not demonstrated that the Lindholm Email falls within the ambit of attorney-client

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privilege or the work product doctrine” (Dkt. No. 361 at 8–9). Google moved for relief from that

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order. The motion for relief was denied in an October 20 order by the undersigned judge, based

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on a finding that Google failed to identify any aspect of Magistrate Judge Ryu’s order that was

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clearly erroneous or contrary to law. The October 20 order quoted the full text of the final

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Lindholm email and described the history and content of the drafts (Dkt. No. 546). Those details

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need not be repeated here.

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The protective order governing discovery in this action defined two levels of

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confidentiality designations that the parties could invoke when producing documents or items

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other than computer source code, which had its own designation. First, the label

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“CONFIDENTIAL” could be applied to “information (regardless of how it is generated, stored or

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maintained) or tangible things that qualify for protection under Federal Rule of Civil

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Procedure 26(c)” (Dkt. No. 66 at 2). Rule 26(c), in turn, allows for protective orders to prevent

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“annoyance, embarrassment, oppression, or undue burden or expense.” Second, the label
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” could be applied to a subset of

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For the Northern District of California

United States District Court

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“CONFIDENTIAL” information or items which were “extremely sensitive” and “disclosure of

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which to another Party or Non-Party would create a substantial risk of serious harm that could not

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be avoided by less restrictive means” (Dkt. No. 66 at 2–3).

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When Google produced the Lindholm email and drafts to Oracle America, Inc., it

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designated each of them as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” and

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added a “Privileged & Confidential” footer to each page. Oracle challenged the confidentiality

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designation and requested that Google re-designate the documents as merely

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“CONFIDENTIAL,” which would have enabled Oracle’s retained counsel to discuss the

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documents with Oracle’s in-house counsel (Francis Exh. A). Google refused. The parties

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attempted to resolve this dispute informally, but they were unable to do so (Francis Decl. ¶ 3).

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Pursuant to the dispute-resolution procedures set forth in the protective order, Google now

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moves to retain its attorneys’-eyes-only confidentiality designations (Dkt. No. 66 at 8–9).

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Despite the fact that the full text of the Lindholm email was made public in the October 20 order,

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Google refuses to withdraw its motion. Google explains that it “intends to seek appellate review

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of that decision” and in order to preserve its right to do so, it must take all reasonable steps

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available “to prevent disclosure of the information Google contends is privileged and

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confidential” (Reply Br. 1). Oracle opposes the motion and now argues that Google should not be

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permitted to maintain any confidentiality designation as to the documents in question. Oracle
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requests production of a “clean” set of the documents without any “Privileged & Confidential”

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footer added. This order follows full briefing.

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ANALYSIS
Pursuant to the protective order, the burden of persuasion in this “challenge proceeding” is

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on “the Designating Party” — i.e., Google in this instance (Dkt. No. 66 at 9). To prevail on its

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motion, Google must show that its challenged confidentiality designations are appropriate.

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Google has not done so.

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The protections conferred by the protective order “do not cover . . . any information that is
in the public domain at the time of disclosure to a Receiving Party or becomes part of the public
domain after its disclosure to a Receiving Party as a result of publication not involving a

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For the Northern District of California

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violation of this Order, including becoming part of the public record through trial or otherwise”

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(Dkt. No. 66 at 4) (emphasis added). The content of the Lindholm email and drafts became part

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of the public record on October 20, when the final version of the email was quoted in its entirety

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and the drafts were described in a public order issued by the undersigned judge. The issuance of

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that order did not violate the protective order. Accordingly, the Lindholm email and drafts are

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not subject to the protections conferred by the protective order.

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Google argues that Oracle’s references to the email in open court violated the protective

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order, and that but for this supposed violation the email would not have become public until

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October 20. Google, however, does not argue that the October 20 publication violated the

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protective order or was somehow tainted by Oracle’s earlier supposed violation. Google also

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does not argue that any of this procedural history removes the documents from the ambit of the

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exclusionary provision in the protective order quoted above. Indeed, Google does not address

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that provision at all despite the fact that Oracle cited it in its opposition brief (Opp. 1–2,

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Reply Br. 1).

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This order finds that the Lindholm email and drafts are not subject to protection under the

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protective order because they became part of the public domain on October 20 via a publication

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that did not violate the protective order. The exclusionary provision quoted above controls. This

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order need not reach the parties’ arguments concerning whether the documents satisfied the
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definitions of material that could be designated as “CONFIDENTIAL” or “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY” under the protective order. This order also

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need not reach the other exclusionary provision in the protective order cited by Oracle. Google’s

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argument that the documents should retain their confidentiality designation until the privilege

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dispute is resolved is moot, because that dispute has been resolved.

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The Lindholm email and drafts shall be treated as neither privileged nor confidential in

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this action. Accordingly, Google must produce to Oracle new copies of those documents without

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the “Privileged & Confidential” footer that was added for production.

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For the foregoing reasons, defendant’s motion to retain its “HIGHLY CONFIDENTIAL –

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For the Northern District of California

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CONCLUSION

ATTORNEYS’ EYES ONLY” designation as to the Lindholm email and drafts is DENIED. The

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Lindholm email and drafts shall be treated as neither privileged nor confidential in this action.

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Defendant must produce to plaintiff new copies of those documents without the “Privileged &

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Confidential” footer that was added for production. The motion hearing previously set for

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November 17, 2011, is VACATED.

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IT IS SO ORDERED.

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Dated: November 2, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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