Sandisk Corporation v. Round Rock Research LLC

Filing 89

STIPULATED PROTECTIVE ORDER. Signed by Judge Richard Seeborg on 5/14/12. (cl, COURT STAFF) (Filed on 5/14/2012)

1
2
3

CHUCK P. EBERTIN (SBN 161374)
[e-mail]
VINSON & ELKINS LLP
525 University Avenue, Suite 410
Palo Alto, CA 94301-1918
Tel: [phone] / Fax: [phone]

DESMARAIS LLP
Jon T. Hohenthaner (pro hac vice)
[e-mail]
John C. Spaccarotella (pro hac vice)
[e-mail]
Ameet A. Modi (pro hac vice)
[e-mail]
230 Park Avenue
New York, NY 10169
Telephone: [phone]
Facsimile: 212-351-3401

4
5
6
7
8

CHRISTOPHER V. RYAN (pro hac vice)
[e-mail]
JANICE L. TA (pro hac vice)
[e-mail]
VINSON & ELKINS LLP
The Terrace 7
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: [phone] / Fax: [phone]

BLACK CHANG & HAMILL LLP
Bradford J. Black (SBN 252031)
[e-mail]
Andrew G. Hamill (SBN 251156)
[e-mail]
333 Bush Street, Suite 2250
San Francisco, CA 94104
Telephone: [phone]
Facsimile: 4 15-813-6222

9
10
11
12
13
14

DAVID J. TOBIN (pro hac vice)
[e-mail]
VINSON & ELKINS LLP
2001 Ross Avenue, Suite 3700
Dallas, TX 75201
Tel: [phone] / Fax [phone]

Attorneys for Defendant and
Counterclaim Plaintiff
ROUND ROCK RESEARCH LLC

Attorneys for Plaintiff and
Counterclaim Defendant
SANDISK CORPORATION

15
16

UNITED STATES DISTRICT COURT

17

NORTHERN DISTRICT OF CALIFORNIA

18
19

SANDISK CORPORATION,

20

Plaintiff and Counterclaim Defendant,

21
22

Case No. 11-cv-05243-RS

vs.

[PROPOSED]
STIPULATED PROTECTIVE
ORDER

ROUND ROCK RESEARCH LLC,

23

Defendant and Counterclaim Plaintiff.

24
25

1.

PURPOSES AND LIMITATIONS.

26

Disclosure and discovery activity in this action are likely to involve production of

27

confidential, proprietary, or private information for which special protection from public disclosure

28

and from use for any purpose other than prosecuting this litigation may be warranted. Accordingly,
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

1

Case No. 11-cv-05243-RS

1

SanDisk Corporation and Round Rock Research LLC hereby stipulate to and petition the court to

2

enter the following Stipulated Protective Order. The parties acknowledge that this Order does not

3

confer blanket protections on all disclosures or responses to discovery and that the protection it

4

affords from public disclosure and use extends only to the limited information or items that are

5

entitled to confidential treatment under the applicable legal principles.

6

acknowledge, as set forth in Section 14.4 below, that this Stipulated Protective Order does not entitle

7

them to file confidential information under seal; Civil Local Rule 79-5 and General Order 62 set

8

forth the procedures that must be followed and the standards that will be applied when a party seeks

9

permission from the court to file material under seal.

10

2.

11
12

The parties further

DEFINITIONS.
2.1

Challenging Party:

a Party or Non-Party that challenges the designation of

information or items under this Order.

13

2.2

“CONFIDENTIAL” Information or Items: information (regardless of how it is

14

generated, stored or maintained) or tangible things that qualify for protection under Federal Rule of

15

Civil Procedure 26(c).

16
17

2.3

as their support staff).

18
19

Counsel (without qualifier): Outside Counsel of Record and House Counsel (as well

2.4

Designated House Counsel:

House Counsel who seek access to “HIGHLY

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this matter.

20

2.5

Designating Party: a Party or Non-Party that designates information or items that it

21

produces in disclosures or in responses to discovery as “CONFIDENTIAL,” “HIGHLY

22

CONFIDENTIAL – ATTORNEYS' EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

23

CODE.”

24

2.6

Disclosure or Discovery Material: all items or information, regardless of the medium

25

or manner in which it is generated, stored, or maintained (including, among other things, testimony,

26

transcripts, and tangible things), that are produced or generated in disclosures or responses to

27

discovery in this matter.

28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

2

Case No. 11-cv-05243-RS

1

2.7

Expert: a person with specialized knowledge or experience in a matter pertinent to

2

the litigation who (1) has been retained by a Party or its counsel to serve as an expert witness or as a

3

consultant in this action, and (2) at the time of retention, is not anticipated to become an employee of

4

a Party or of a Party's competitor.

5

2.8

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information or Items:

6

sensitive “Confidential Information or Items,” disclosure of which to another Party or Non-Party

7

would create a substantial risk of serious harm that could not be avoided by less restrictive means.

8

2.9

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items: sensitive

9

“Confidential Information or Items” representing computer code and associated comments and

10

revision histories, formulas, engineering specifications, or schematics that define or otherwise

11

describe in detail the algorithms or structure of software or hardware designs, disclosure of which to

12

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

13

by less restrictive means.

14
15

2.10

Counsel does not include Outside Counsel of Record or any other outside counsel.

16
17

House Counsel: attorneys who are employees of a party to this action. House

2.11

Non-Party: any natural person, partnership, corporation, association, or other legal

entity not named as a Party to this action.

18

2.12

Outside Counsel of Record: attorneys who are not employees, partners or principals

19

of a party to this action but are retained to represent or advise a party to this action and have

20

appeared in this action on behalf of that party or are affiliated with a law firm which has appeared on

21

behalf of that party.

22

2.13

23

consultants, retained experts, and Outside Counsel of Record (and their support staffs).

24
25

Party: any party to this action, including all of its officers, directors, employees,

2.14

Producing Party:

a Party or Non-Party that produces Disclosure or Discovery

Material in this action.

26

2.15

Professional Vendors: persons or entities that provide litigation support services

27

(e.g., photocopying, videotaping, translating, preparing exhibits or demonstrations, and organizing,

28

storing, or retrieving data in any form or medium) and their employees and subcontractors.
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

3

Case No. 11-cv-05243-RS

1

2.16

Protected Material:

any Disclosure or Discovery Material that is designated as

2

“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY

3

CONFIDENTIAL – SOURCE CODE.”

4

2.17

Receiving Party: a Party that receives Disclosure or Discovery Material from a

5

Producing Party.

6

3.

SCOPE.

7

The protections conferred by this Stipulation and Order cover not only Protected Material (as

8

defined above), but also (1) any information copied or extracted from Protected Material; (2) all

9

copies, excerpts, summaries, or compilations of Protected Material; and (3) any testimony,

10

conversations, or presentations by Parties or their Counsel that might reveal Protected Material.

11

However, the protections conferred by this Stipulation and Order do not cover the following

12

information: (a) any information that is in the public domain at the time of disclosure to a Receiving

13

Party or becomes part of the public domain after its disclosure to a Receiving Party as a result of

14

publication not involving a violation of this Order, including becoming part of the public record

15

through trial or otherwise; and (b) any information known to the Receiving Party prior to the

16

disclosure or obtained by the Receiving Party after the disclosure from a source who obtained the

17

information lawfully and under no obligation of confidentiality to the Designating Party. Any use of

18

Protected Material at trial shall be governed by a separate agreement or order.

19

4.

DURATION.

20

Even after final disposition of this litigation, the confidentiality obligations imposed by this

21

Order shall remain in effect until a Designating Party agrees otherwise in writing or a court order

22

otherwise directs. Final disposition shall be deemed to be the later of (1) dismissal of all claims and

23

defenses in this action, with or without prejudice; and (2) final judgment herein after the completion

24

and exhaustion of all appeals, rehearings, remands, trials, or reviews of this action, including the

25

time limits for filing any motions or applications for extension of time pursuant to applicable law.

26

5.

27
28

DESIGNATING PROTECTED MATERIAL.
5.1

Each Party or Non-Party that designates information or items for protection under this

Order must take care to limit any such designation to specific material that qualifies under the
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

4

Case No. 11-cv-05243-RS

1

appropriate standards. To the extent it is practical to do so, the Designating Party must designate for

2

protection only those parts of material, documents, items, or oral or written communications that

3

qualify – so that other portions of the material, documents, items, or communications for which

4

protection is not warranted are not swept unjustifiably within the ambit of this Order.

5

If it comes to a Designating Party’s attention that information or items that it designated for

6

protection do not qualify for protection at all or do not qualify for the level of protection initially

7

asserted, that Designating Party must promptly notify all other Parties that it is withdrawing the

8

mistaken designation.

9

5.2

Manner and Timing of Designations. Except as otherwise provided in this Order

10

(see, e.g., second paragraph of section 5.2(a) below), or as otherwise stipulated or ordered,

11

Disclosure or Discovery Material that qualifies for protection under this Order must be clearly so

12

designated before the material is disclosed or produced. Designation in conformity with this Order

13

requires:

14

(a)

for information in documentary form (e.g., paper or electronic documents, but

15

excluding transcripts of depositions or other pretrial or trial proceedings), that the

16

Producing Party affix the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL

17

– ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

18

CODE” to each page that contains protected material.

19

A Party or Non-Party that makes original documents or materials available for

20

inspection need not designate them for protection until after the inspecting Party has

21

indicated which material it would like copied and produced. During the inspection

22

and before the designation, all of the material made available for inspection shall be

23

deemed “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” After the

24

inspecting Party has identified the documents it wants copied and produced, the

25

Producing Party must determine which documents, or portions thereof, qualify for

26

protection under this Order. Then, before producing the specified documents, the

27

Producing Party must affix the appropriate legend (“CONFIDENTIAL,” “HIGHLY

28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

5

Case No. 11-cv-05243-RS

1

CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL

2

– SOURCE CODE”) to each page that contains Protected Material.

3

(b)

for testimony given in deposition or in other pretrial or trial proceedings, that the

4

Designating Party identify on the record, before the close of the deposition, hearing,

5

or other proceeding, all protected testimony and specify the level of protection being

6

asserted. When it is impractical to identify separately each portion of testimony that

7

is entitled to protection and it appears that substantial portions of the testimony may

8

qualify for protection, the Designating Party may invoke on the record (before the

9

deposition, hearing, or other proceeding is concluded) a right to have up to 21 days to

10

identify the specific portions of the testimony as to which protection is sought and to

11

specify the level of protection being asserted. Only those portions of the testimony

12

that are appropriately designated for protection within the 21 days shall be covered by

13

the provisions of this Stipulated Protective Order. Alternatively, a Designating Party

14

may specify, at the deposition or up to 21 days afterwards if that period is properly

15

invoked, that the entire transcript shall be treated as “CONFIDENTIAL” or

16

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.”

17

Parties shall give the other parties notice if they reasonably expect a

18

deposition, hearing, or other proceeding to include Protected Material so that the

19

other parties can ensure that only authorized individuals who have signed the

20

“Acknowledgment and Agreement to Be Bound” (Exhibit A) are present at those

21

proceedings. The use of a document as an exhibit at a deposition shall not in any way

22

affect its designation as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –

23

ATTORNEYS’ EYES ONLY.”

24

Transcripts containing Protected Material shall have an obvious legend on the

25

title page that the transcript contains Protected Material, and the title page shall be

26

followed by a list of all pages (including line numbers as appropriate) that have been

27

designated as Protected Material and the level of protection being asserted by the

28

Designating Party. The Designating Party shall inform the court reporter of these
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

6

Case No. 11-cv-05243-RS

1

requirements. Any transcript that is prepared before the expiration of a 21-day period

2

for designation shall be treated during that period as if it had been designated

3

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in its entirety unless

4

otherwise agreed. After the expiration of that period, the transcript shall be treated

5

only as actually designated.

6

(c)

for information produced in some form other than documentary and for any other

7

tangible items, that the Producing Party affix in a prominent place on the exterior of

8

the container or containers in which the information or item is stored the legend

9

“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,”

10

or “HIGHLY CONFIDENTIAL – SOURCE CODE.” If only a portion or portions of

11

the information or item warrant protection, the Producing Party, to the extent

12

practicable, shall identify the protected portion(s) and specify the level of protection

13

being asserted.

14

5.3

Inadvertent Failures to Designate.

If timely corrected, an inadvertent failure to

15

designate qualified information or items does not, standing alone, waive the Designating Party’s

16

right to secure protection under this Order for such material.

17

designation, the Receiving Party must make reasonable efforts to assure that the material is treated in

18

accordance with the provisions of this Order.

19

6.

20

Upon timely correction of a

CHALLENGING CONFIDENTIALITY DESIGNATIONS.
6.1

Timing of Challenges. Any Party or Non-Party may challenge a designation of

21

confidentiality at any time.

22

designation by electing not to mount a challenge promptly after the original designation is disclosed.

23

6.2

A Party does not waive its right to challenge a confidentiality

Meet and Confer. The Challenging Party shall initiate the dispute resolution process

24

by providing written notice of each designation it is challenging and describing the basis for each

25

challenge. To avoid ambiguity as to whether a challenge has been made, the written notice must

26

recite that the challenge to confidentiality is being made in accordance with this specific paragraph

27

of the Protective Order. The parties shall attempt to resolve each challenge in good faith and must

28

begin the process by conferring directly (in voice to voice dialogue; other forms of communication
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

7

Case No. 11-cv-05243-RS

1

are not sufficient) within 7 days of the date of service of notice. In conferring, the Challenging Party

2

must explain the basis for its belief that the confidentiality designation was not proper and must give

3

the Designating Party an opportunity to review the designated material, to reconsider the

4

circumstances, and, if no change in designation is offered, to explain the basis for the chosen

5

designation. A Challenging Party may proceed to the next stage of the challenge process only if it

6

has engaged in this meet and confer process first or establishes that the Designating Party is

7

unwilling to participate in the meet and confer process in a timely manner.

8

6.3

Judicial Intervention. If the Parties cannot resolve a challenge without court

9

intervention, the Challenging Party may file and serve a motion to remove confidentiality under

10

Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5 and General Order 62, if

11

applicable) if the parties agree that the meet and confer process will not resolve their dispute. Each

12

such motion must be accompanied by a competent declaration affirming that the movant has

13

complied with the meet and confer requirements imposed in the preceding paragraph.

14

Challenging Party may file a motion challenging a confidentiality designation if there is good cause

15

for doing so, including a challenge to the designation of a deposition transcript or any portions

16

thereof. The burden of persuasion in any such challenge proceeding shall be on the Designating

17

Party. All parties shall continue to afford the material in question the level of protection to which it

18

is entitled under the Producing Party’s designation until the court rules on the challenge.

19

7.

20

The

ACCESS TO AND USE OF PROTECTED MATERIAL.
7.1

Basic Principles. A Receiving Party may use Protected Material that is disclosed or

21

produced by another Party or by a Non-Party in connection with this case only for prosecuting,

22

defending, or attempting to settle this litigation. Such Protected Material may be disclosed only to

23

the categories of persons and under the conditions described in this Order. When the litigation has

24

been terminated, a Receiving Party must comply with the provisions of section 15 below (FINAL

25

DISPOSITION). Protected Material must be stored and maintained by a Receiving Party at a

26

location and in a secure manner that ensures that access is limited to the persons authorized under

27

this Order.

28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

8

Case No. 11-cv-05243-RS

1

7.2

Disclosure of “CONFIDENTIAL” Information or Items. Unless otherwise ordered

2

by the court or permitted in writing by the Designating Party, a Receiving Party may disclose any

3

information or item designated “CONFIDENTIAL” only to:

4

(a)

the Receiving Party’s Outside Counsel of Record in this action, as well as employees

5

of said Outside Counsel of Record to whom it is reasonably necessary to disclose the

6

information for this litigation and who have signed the “Acknowledgment and

7

Agreement to Be Bound” that is attached hereto as Exhibit A;

8

(b)

9

the officers, directors, and employees (including House Counsel) of the Receiving
Party to whom disclosure is reasonably necessary for this litigation and who have

10

signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);

11

(c)

Experts (as defined in this Order) of the Receiving Party to whom disclosure is

12

reasonably necessary for this litigation and who have signed the “Acknowledgment

13

and Agreement to Be Bound” (Exhibit A);

14

(d)

the court and its personnel;

15

(e)

court reporters and their staff, professional jury or trial consultants, and Professional

16

Vendors to whom disclosure is reasonably necessary for this litigation and who have

17

signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A); and

18

(f)

19

the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.

20

7.3

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” and

21

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items. Unless otherwise ordered

22

by the court or permitted in writing by the Designating Party, a Receiving Party may disclose any

23

information or item designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or

24

“HIGHLY CONFIDENTIAL – SOURCE CODE” only to:

25

(a)

the Receiving Party’s Outside Counsel of Record in this action, as well as employees

26

of said Outside Counsel of Record to whom it is reasonably necessary to disclose the

27

information for this litigation and who have signed the “Acknowledgment and

28

Agreement to Be Bound” that is attached hereto as Exhibit A;
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

9

Case No. 11-cv-05243-RS

1

(b)

Designated House Counsel of the Receiving Party (1) who has no involvement in

2

patent prosecution activities, (2) to whom disclosure is reasonably necessary for this

3

litigation, (3) who has signed the “Acknowledgment and Agreement to Be Bound”

4

(Exhibit A), and (4) as to whom the procedures set forth in paragraph 7.4(a)(1),

5

below, have been followed;

6

(c)

Experts of the Receiving Party (1) to whom disclosure is reasonably necessary for

7

this litigation, (2) who have signed the “Acknowledgment and Agreement to Be

8

Bound” (Exhibit A), and (3) as to whom the procedures set forth in paragraph

9

7.4(a)(2), below, have been followed;

10

(d)

the court and its personnel;

11

(e)

court reporters and their staff, professional jury or trial consultants, and Professional

12

Vendors to whom disclosure is reasonably necessary for this litigation and who have

13

signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A); and

14

(f)

15

the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.

16

7.4

Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL

17

– ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” Information

18

or Items to Designated House Counsel or Experts.

19

(a)(1) Unless otherwise ordered by the court or agreed to in writing by the Designating

20

Party, a Party that seeks to disclose to Designated House Counsel any information or

21

item that has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

22

ONLY” pursuant to paragraph 7.3(b) first must make a written request to the

23

Designating Party that (1) sets forth the full name of the Designated House Counsel

24

and the city and state of his or her residence and (2) describes the Designated House

25

Counsel’s current and reasonably foreseeable future primary job duties and

26

responsibilities in sufficient detail to determine if House Counsel is involved, or may

27

become involved, in any patent prosecution activities.

28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

10

Case No. 11-cv-05243-RS

1

(a)(2) Unless otherwise ordered by the court or agreed to in writing by the Designating

2

Party, a Party that seeks to disclose to an Expert (as defined in this Order) any

3

information or item that has been designated “HIGHLY CONFIDENTIAL –

4

ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”

5

pursuant to paragraph 7.3(c) first must make a written request to the Designating

6

Party that (1) identifies the general categories of “HIGHLY CONFIDENTIAL –

7

ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”

8

information that the Receiving Party seeks permission to disclose to the Expert,

9

(2) sets forth the full name of the Expert and the city and state of his or her primary

10

residence, (3) attaches a copy of the Expert’s current resume, (4) identifies the

11

Expert’s current employer(s), (5) identifies each person or entity from whom the

12

Expert has received compensation or funding for work in his or her areas of expertise

13

or to whom the expert has provided professional services, including in connection

14

with a litigation, at any time during the preceding five years, and (6) identifies (by

15

name and number of the case, filing date, and location of court) any litigation in

16

connection with which the Expert has offered expert testimony, including through a

17

declaration, report, or testimony at a deposition or trial, during the preceding five

18

years.

19

(b)

A Party that makes a request and provides the information specified in the preceding

20

respective paragraphs may disclose the subject Protected Material to the identified

21

Designated House Counsel or Expert unless, within 10 days of delivering the request,

22

the Party receives a written objection from the Designating Party. Any such objection

23

must set forth in detail the grounds on which it is based.

24

(c)

A Party that receives a timely written objection must meet and confer with the

25

Designating Party (through direct voice to voice dialogue) to try to resolve the matter

26

by agreement within 7 days of the written objection. If no agreement is reached, the

27

Party seeking to make the disclosure to Designated House Counsel or the Expert may

28

file a motion as provided in Civil Local Rule 7 (and in compliance with Civil Local
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

11

Case No. 11-cv-05243-RS

1

Rule 79-5 and General Order 62, if applicable) seeking permission from the court to

2

do so. Any such motion must describe the circumstances with specificity, set forth in

3

detail the reasons why disclosure to Designated House Counsel or the Expert is

4

reasonably necessary, assess the risk of harm that the disclosure would entail, and

5

suggest any additional means that could be used to reduce that risk. In addition, any

6

such motion must be accompanied by a competent declaration describing the parties’

7

efforts to resolve the matter by agreement and setting forth the reasons advanced by

8

the Designating Party for its refusal to approve the disclosure.

9

proceeding, the Party opposing disclosure to Designated House Counsel or the Expert

10

shall bear the burden of proving that the risk of harm that the disclosure would entail

11

(under the safeguards proposed) outweighs the Receiving Party’s need to disclose the

12

Protected Material to its Designated House Counsel or Expert.

13

8.

In any such

PROSECUTION BAR.

14

Absent written consent from the Producing Party, any individual who receives access to

15

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –

16

SOURCE CODE” information shall not be involved in the prosecution of patents or patent

17

applications relating to flash memory design, operation or fabrication, including without limitation

18

the patents asserted in this action and any patent or application claiming priority to or otherwise

19

related to the patents asserted in this action, before any foreign or domestic agency, including the

20

United States Patent and Trademark Office (“the Patent Office”). For purposes of this paragraph,

21

“prosecution” includes directly or indirectly drafting, amending, advising, or otherwise affecting the

22

scope or maintenance of patent claims. To avoid any doubt, “prosecution” as used in this paragraph

23

does not include representing a party challenging a patent before a domestic or foreign agency

24

(including, but not limited to, a reissue protest, ex parte reexamination or inter parties

25

reexamination). This Prosecution Bar shall begin when access to “HIGHLY CONFIDENTIAL –

26

ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information is

27

first received by the affected individual and shall end two (2) years after final termination of this

28

action.
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

12

Case No. 11-cv-05243-RS

1

9.

2

SOURCE CODE.
(a)

To the extent production of source code becomes necessary in this case, a Producing

3

Party may designate source code as “HIGHLY CONFIDENTIAL – SOURCE

4

CODE” if it comprises or includes confidential, proprietary or trade secret source

5

code.

6

(b)

Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE CODE”

7

shall be subject to all of the protections afforded to “HIGHLY CONFIDENTIAL –

8

ATTORNEYS’ EYES ONLY” information, including the Prosecution Bar set forth in

9

Paragraph 8, and may be disclosed only to the individuals to whom “HIGHLY

10

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information may be disclosed, as

11

set forth in Paragraphs 7.3 and 7.4, with the exception of Designated House Counsel.

12

(c)

Any source code produced in discovery shall be made available for inspection, in a

13

format allowing it to be reasonably reviewed and searched, during normal business

14

hours or at other mutually agreeable times, at an office of the Producing Party’s

15

counsel or another mutually agreed upon location. The source code shall be made

16

available for inspection on a secured computer in a secured room without Internet

17

access or network access to other computers, and the Receiving Party shall not copy,

18

remove, or otherwise transfer any portion of the source code onto any recordable

19

media or recordable device. The Producing Party may visually monitor the activities

20

of the Receiving Party’s representatives during any source code review, but only to

21

ensure that there is no unauthorized recording, copying, or transmission of the source

22

code.

23

(d)

The Receiving Party may request paper copies of limited portions of source code that

24

are reasonably necessary for the preparation of court filings, pleadings, expert reports,

25

or other papers, or for deposition or trial, but shall not request paper copies for the

26

purpose of reviewing the source code other than electronically as set forth in

27

paragraph (c) in the first instance. The Producing Party shall provide all such source

28

code in paper form, including bates numbers and the label “HIGHLY
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

13

Case No. 11-cv-05243-RS

1

CONFIDENTIAL – SOURCE CODE.” The Producing Party may challenge the

2

amount of source code requested in hard copy form pursuant to the dispute resolution

3

procedure and timeframes set forth in Paragraph 6 whereby the Producing Party is the

4

“Challenging Party” and the Receiving Party is the “Designating Party” for purposes

5

of dispute resolution.

6

(e)

The Receiving Party shall maintain a record of any individual who has inspected any

7

portion of the source code in electronic or paper form. The Receiving Party shall

8

maintain all paper copies of any printed portions of the source code in a secured area.

9

The Receiving Party shall only make additional paper copies if such additional copies

10

are (1) necessary to prepare court filings, pleadings, or other papers (including a

11

testifying expert’s expert report), (2) necessary for deposition, or (3) otherwise

12

necessary for the preparation of its case.

13

10.

14

LITIGATION.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER

15

If a Party is served with a subpoena or a court order issued in other litigation that compels

16

disclosure of any information or items designated in this action as “CONFIDENTIAL,” “HIGHLY

17

CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

18

CODE,” that Party must:

19

(a)

20

promptly notify in writing the Designating Party. Such notification shall include a
copy of the subpoena or court order;

21

(b)

promptly notify in writing the party who caused the subpoena or order to issue in the

22

other litigation that some or all of the material covered by the subpoena or order is

23

subject to this Protective Order.

24

Stipulated Protective Order; and

25

(c)

26

Such notification shall include a copy of this

cooperate with respect to all reasonable procedures sought to be pursued by the
Designating Party whose Protected Material may be affected.

27

If the Designating Party timely seeks a protective order, the Party served with the subpoena

28

or court order shall not produce any information designated in this action as “CONFIDENTIAL,”
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

14

Case No. 11-cv-05243-RS

1

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” or “HIGHLY CONFIDENTIAL –

2

SOURCE CODE” before a determination by the court from which the subpoena or order issued,

3

unless the Party has obtained the Designating Party’s permission. The Designating Party shall bear

4

the burden and expense of seeking protection in that court of its confidential material – and nothing

5

in these provisions should be construed as authorizing or encouraging a Receiving Party in this

6

action to disobey a lawful directive from another court.

7

11.

8

THIS LITIGATION.

9

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED IN

(a)

The terms of this Order are applicable to information produced by a Non-Party in this

10

action and designated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –

11

ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE

12

CODE.” Such information produced by Non-Parties in connection with this litigation

13

is protected by the remedies and relief provided by this Order. Nothing in these

14

provisions should be construed as prohibiting a Non-Party from seeking additional

15

protections.

16

(b)

In the event that a Party is required, by a valid discovery request, to produce a Non-

17

Party’s confidential information in its possession, and the Party is subject to an

18

agreement with the Non-Party not to produce the Non-Party’s confidential

19

information, then the Party shall:

20

1.

promptly notify in writing the Requesting Party and the Non-Party that some

21

or all of the information requested is subject to a confidentiality agreement

22

with a Non-Party;

23

2.

promptly provide the Non-Party with a copy of the Stipulated Protective

24

Order in this litigation, the relevant discovery request(s), and a reasonably

25

specific description of the information requested; and

26

3.

27

(c)

28

make the information requested available for inspection by the Non-Party.

If the Non-Party fails to object or seek a protective order from this court within 14
days of receiving the notice and accompanying information, the Receiving Party may

[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

15

Case No. 11-cv-05243-RS

1

produce the Non-Party’s confidential information responsive to the discovery request.

2

If the Non-Party timely seeks a protective order, the Receiving Party shall not

3

produce any information in its possession or control that is subject to the

4

confidentiality agreement with the Non-Party before a determination by the court.

5

Absent a court order to the contrary, the Non-Party shall bear the burden and expense

6

of seeking protection in this court of its Protected Material.

7

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL.

8

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed Protected

9

Material to any person or in any circumstance not authorized under this Stipulated Protective Order,

10

the Receiving Party must immediately (a) notify in writing the Designating Party of the unauthorized

11

disclosures, (b) use its best efforts to retrieve all unauthorized copies of the Protected Material,

12

(c) inform the person or persons to whom unauthorized disclosures were made of all the terms of this

13

Order, and (d) request such person or persons to execute the “Acknowledgment and Agreement to

14

Be Bound” that is attached hereto as Exhibit A.

15

13.

16

MATERIAL.

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE PROTECTED

17

When a Producing Party gives notice to Receiving Parties that certain inadvertently produced

18

material is subject to a claim of privilege or other protection, the obligations of the Receiving Parties

19

are those set forth in Federal Rule of Civil Procedure 26(b)(5)(B). This provision is not intended to

20

modify whatever procedure may be established in an e-discovery order that provides for production

21

without prior privilege review. Pursuant to Federal Rule of Evidence 502(d) and (e), insofar as the

22

parties reach an agreement on the effect of disclosure of a communication or information covered by

23

the attorney-client privilege or work product protection, the parties may incorporate their agreement

24

in the stipulated protective order submitted to the court.

25

14.

26
27

MISCELLANEOUS.
14.1

Right to Further Relief. Nothing in this Order abridges the right of any person to seek

its modification by the court in the future.

28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

16

Case No. 11-cv-05243-RS

1

14.2

Right to Assert Other Objections. By stipulating to the entry of this Protective Order,

2

no Party waives any right it otherwise would have to object to disclosing or producing any

3

information or item on any ground not addressed in this Stipulated Protective Order. Similarly, no

4

Party waives any right to object on any ground to use in evidence of any of the material covered by

5

this Protective Order.

6

14.3

Export Control. Disclosure of Protected Material shall be subject to all applicable

7

laws and regulations relating to the export of technical data contained in such Protected Material,

8

including the release of such technical data to foreign persons or nationals in the United States or

9

elsewhere. The Producing Party shall be responsible for identifying any such controlled technical

10

data, and the Receiving Party shall take measures necessary to ensure compliance.

11

14.4

Filing Protected Material. Without written permission from the Designating Party or a

12

court order secured after appropriate notice to all interested persons, a Party may not file in the

13

public record in this action any Protected Material. A Party that seeks to file under seal any

14

Protected Material must comply with Civil Local Rule 79-5 and General Order 62. Protected

15

Material may only be filed under seal pursuant to a court order authorizing the sealing of the specific

16

Protected Material at issue. Pursuant to Civil Local Rule 79-5 and General Order 62, a sealing order

17

will issue only upon a request establishing that the Protected Material at issue is privileged,

18

protectable as a trade secret, or otherwise entitled to protection under the law. If a Receiving Party’s

19

request to file Protected Material under seal pursuant to Civil Local Rule 79-5(d) and General Order

20

62 is denied by the court, then the Receiving Party may file the Protected Material in the public

21

record pursuant to Civil Local Rule 79-5(e) unless otherwise instructed by the court.

22

15.

FINAL DISPOSITION.

23

Within 60 days after the final disposition of this action, as defined in paragraph 4, each

24

Receiving Party must return all Protected Material to the Producing Party or destroy such material.

25

As used in this subdivision, “all Protected Material” includes all copies, abstracts, compilations,

26

summaries, and any other format reproducing or capturing any of the Protected Material. Whether

27

the Protected Material is returned or destroyed, the Receiving Party must submit a written

28

certification to the Producing Party (and, if not the same person or entity, to the Designating Party)
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

17

Case No. 11-cv-05243-RS

1

by the 60 day deadline that (1) identifies (by category, where appropriate) all the Protected Material

2

that was returned or destroyed and (2) affirms that the Receiving Party has not retained any copies,

3

abstracts, compilations, summaries or any other format reproducing or capturing any of the Protected

4

Material. Notwithstanding this provision, Counsel are entitled to retain an archival copy of all

5

pleadings, motion papers, trial, deposition, and hearing transcripts, legal memoranda,

6

correspondence, deposition and trial exhibits, expert reports, attorney work product, and consultant

7

and expert work product, even if such materials contain Protected Material. Any such archival

8

copies that contain or constitute Protected Material remain subject to this Protective Order as set

9

forth in Section 4 (DURATION).

10

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.

11
12

Dated: May 11, 2012

VINSON & ELKINS LLP

13
By:

14
15

/s/ Chuck P. Ebertin
Chuck P. Ebertin
Attorneys for Plaintiff and Counterclaim
Defendant SANDISK CORPORATION

16
17
18

Dated: May 11, 2012

DESMARAIS LLP

19
By:

/s/ John C. Spaccarotella
John C. Spaccarotella (admitted pro hac vice)

20
21

Attorneys for Defendant and Counterclaim
Plaintiff ROUND ROCK RESEARCH LLC

22
23

GENERAL ORDER 45, SECTION X.B.

24

I, Chuck P. Ebertin, hereby attest that John Spaccarotella has concurred in the filing of this

25
26

document.
By: /s/ Chuck P. Ebertin
Chuck P. Ebertin

27
28
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

18

Case No. 11-cv-05243-RS

1

[PROPOSED] ORDER

2

Pursuant to the above stipulation, IT IS SO ORDERED.

3
4

5/14/12
Dated: _______________________

_____________________________________
Honorable Richard Seeborg
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
[PROPOSED] STIPULATED PROTECTIVE ORDER
1397127

19

Case No. 11-cv-05243-RS