Natera v. Sequenom, Inc
Filing
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ORDER signed on 7/24/12 by Judge Susan Illston granting 60 Stipulation for Protective Order (tfS, COURT STAFF) (Filed on 7/25/2012)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
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NATERA, INC.,
Plaintiff/Counterclaim
Defendant; and
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DNA DIAGNOSTICS CENTER, INC.
Counterclaim Defendant.
v.
SEQUENOM, INC.
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Defendant/Counterclaim
Plaintiff; and
ISIS INNOVATION LIMITED
Nominal Counterclaim21
Defendant.
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Case No. 3:12-cv-0132-SI
STIPULATED PROTECTIVE ORDER
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STIPULATED PROTECTIVE ORDER
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Plaintiff and Counterclaim-defendant Natera, Inc. and Counterclaim-defendant DNA
Diagnostics Center, Inc., Defendant and Counter-plaintiff, Sequenom, Inc., and Nominal
Counterdefendant Isis Innovation Limited (the “Parties”) assert that they may possess confidential
information in the form of trade secrets or other confidential business, personal, and/or technical
information related to the subject matter of this Litigation, as well as information that constitutes
“protected health information” under the Health Insurance Portability and Accountability Act of
1996 (“HIPAA”). The Parties recognize that it may be necessary to disclose certain of the
asserted confidential information during the course of this Litigation. As a result, the Parties
desire limiting disclosure and preventing use of such information for purposes other than the
prosecution and defense of this Litigation. In addition, the Parties contemplate that non-parties
may produce confidential information. Pursuant to Rule 26(c) of the Federal Rules of Civil
Procedure, the Parties, by and through their respective undersigned counsel, hereby stipulate and
agree to the request for, and entry of, the following Stipulated Protective Order (hereinafter,
“Order”).
This Order shall apply to all information, documents, and things within the scope of
discovery in this Litigation that are in the possession or custody of, or are owned or controlled by
the Parties or third parties, including but not limited to documents and things responsive to
requests for production of documents and things under Federal Rule of Civil Procedure 34
(including business records produced pursuant to Federal Rule of Civil Procedure 33(d)); answers
to interrogatories under Federal Rule of Civil Procedure 33; responses to requests for admission
under Federal Rule of Civil Procedure 36; testimony provided at deposition pursuant to Federal
Rule of Civil Procedure 30 or 31; testimony provided at any hearing in this Litigation; documents
and things responsive to, and testimony provided pursuant to any subpoena issued in this
Litigation under Federal Rule of Civil Procedure 45; and documents, things, testimony, or other
information obtained through discovery from foreign third parties, including but not limited to
such discovery taken under the Hague Convention on the Taking of Evidence Abroad in Civil or
Commercial Matters. All such materials shall be used only in connection with the preparation,
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trial, and appeal of this Litigation. This limitation shall not apply to the Party that created or
produced such materials, or otherwise had possession, custody, ownership, or control of the
materials outside of this lawsuit.
1.
DEFINITIONS
(a)
Designated Material: The term “Designated Material” shall mean and refer to all
information and material subject to this Order that constitutes or contains a trade secret or other
confidential research, development, or commercial information, including but not limited to nonpublic technical, business, or financial information, marketing plans, customer lists, vendor lists
and proposals, pricing and cost data, business plans, user information, and all information,
documents, and things referring or relating to the foregoing, including copies, abstracts, and
summaries of the same. “Designated Material” includes “CONFIDENTIAL INFORMATION”
and “OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION” as those terms are defined
below. The scope of this Order shall be understood to encompass not only Designated Material
which is expressly designated as “CONFIDENTIAL INFORMATION” or “OUTSIDE
ATTORNEYS’ EYES ONLY INFORMATION,” but also any information copied therefrom, and
all copies, excerpts, and summaries thereof, as well as testimony and oral conversations which
reveal that information.
(b)
Discovery Material: The term “Discovery Material” shall mean any document (as
defined below), material, item, testimony, information, or thing filed with or presented to the
Court or produced, disclosed, served, or generated in connection with the discovery process or
Federal Rule 26(a) disclosures in this Litigation, including without limitation, for example, initial
disclosures; exhibits; answers to interrogatories; responses to requests for admissions; responses to
requests for production; expert reports; subpoenas; declarations; affidavits; and deposition
testimony or transcripts; and all copies, extracts, summaries, compilations, presentation by parties
or counsel to or in court, designations, and portions thereof.
(c)
Confidential Information: The term “CONFIDENTIAL INFORMATION” means
information or material that a designating party believes, in good faith, embodies, contains or
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reflects confidential information or material that is used by the designating Party in, or pertaining
to, its business, which information or material is not generally known and which the designating
Party would normally not reveal to third parties, including but not limited to confidential research,
development, commercial, proprietary, technical, business, financial, sensitive or private
information or material.
(d)
Outside Attorneys’ Eyes Only Information: The term “OUTSIDE ATTORNEYS’
EYES ONLY INFORMATION” means “CONFIDENTIAL INFORMATION” (i) of a
commercially sensitive nature such as a trade secret that a designating party determines, in good
faith, is likely to cause significant competitive harm to its existing or prospective commercial
relationships if disclosed to third parties or select employees or agents of the Receiving Party,
including, but not limited to, unpublished pending domestic or foreign patent applications; nonpublic financial, marketing, strategic, organizational, operational or competitive information; and
highly sensitive technical information relating to the design, development, research, testing and
production of products, or (ii) that a designating party believes, in good faith, embodies, contains,
or reflects “protected health information” under HIPAA; for purposes of this Order, “protected
health information” comprises the identifiers set forth in 45 C.F.R. § 164.514(b)(2)(i).
(e)
Document: The term “Document” shall mean every means of recording any form
of communication or representation upon any tangible thing, including letters, words, pictures,
sounds, or symbols, or combinations thereof, whether recorded by handwriting, printing,
photostatic, or photographic means, magnetic impulse, tape, computer disk, CD-ROM or any other
form of data storage, data compilation, or mechanical or electronic recording, and all other
tangible things which come within the meaning of “document” or “tangible thing” contained in
Rule 34 of the Federal Rules of Civil Procedure.
(f)
Outside Counsel: The term “outside counsel” means attorneys who are not
employees of a Party to this Litigation but are retained to represent or advise a Party to this
Litigation and have appeared in this Litigation on behalf of that Party or are affiliated with a law
firm which has appeared on behalf of that Party.
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STIPULATED PROTECTIVE ORDER
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(g)
officers, directors, and employees, and (other than its legal counsel) consultants.
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(h)
or agents, who produces any Discovery Material during discovery in connection with this
Litigation.
(i)
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(j)
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Litigation: The term “Litigation” shall mean Case No. 3:12-cv-0132-SI in the
United States District Court For The Northern District of California, including any appeals
therefrom.
2.
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Receiving Party: The term “Receiving Party” shall mean any Party to this
Litigation who receives any Discovery Material from a Producing Party.
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Producing Party: The term “Producing Party” shall mean any Party to this
Litigation or any third party, including its counsel, retained experts, directors, officers, employees,
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Party: The term “Party” means any party to this Litigation including all of its
PROCEDURE FOR MARKING PRODUCED DOCUMENTS
Copies of documents produced in this Litigation, whether pursuant to a formal discovery
request or otherwise, shall bear a unique identifying number, except such unique identifying
number is not required when documents are produced only for inspection.
3.
CATEGORIES OF DESIGNATED MATERIAL
(a)
Types. Any Producing Party may mark Designated Material as follows: (i) if
containing “CONFIDENTIAL INFORMATION,” by marking the Designated Material
“CONFIDENTIAL”; or (ii) if containing “OUTSIDE ATTORNEYS’ EYES ONLY
INFORMATION,” by marking the Designated Material “OUTSIDE ATTORNEYS’ EYES
ONLY” if the Producing Party reasonably believes in good faith that the Designated Material
meets the requirements of Paragraphs 1(c) and 1(d) above.
(b)
Additional Categories. The Parties may agree to add additional categories of
Designated Material (in addition to CONFIDENTIAL INFORMATION and OUTSIDE
ATTORNEYS’ EYES ONLY INFORMATION) from time to time as may be necessary or
appropriate. If the Parties cannot resolve the issue of whether this Order should be amended to
include the proposed new category of Designated Material, the dispute may be submitted to the
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Court by motion or otherwise. Disclosure of the Discovery Material, however, shall still be
made, but with the highest level of confidentiality available under this Order, pending resolution
of the objection by the Parties or the Court, as the case may be.
4.
PROCEDURE FOR MARKING DESIGNATED MATERIAL
Marking Designated Material as CONFIDENTIAL or OUTSIDE ATTORNEYS’ EYES
ONLY shall be made by the Producing Party in the following manner:
(a)
In the case of documents or any other tangible thing produced, designation shall be
made by placing the legend “CONFIDENTIAL” or “OUTSIDE ATTORNEYS’ EYES ONLY” on
each page of the document or on the cover or in a prominent place on any other tangible thing
prior to production of the document or tangible thing;
(b)
In the case of electronically stored information (“ESI”), (i) digital image files, such
as TIFFs, will be marked by the Producing Party with the appropriate designation on each
viewable page or image, and (ii) native documents and databases will be marked by the Producing
Party with the appropriate designation using a naming convention that conveys its confidentiality
status, or some other appropriate means to communicate the confidential nature of the ESI that is
agreed upon by the Parties.
(c)
In producing original files and records for inspection, no marking need be made by
the Producing Party in advance of the inspection. For the purposes of the inspection, all
documents produced shall be considered as marked “OUTSIDE ATTORNEYS’ EYES ONLY.”
Thereafter, upon selection of specified documents for copying by the Receiving Party, the
Producing Party shall mark as “CONFIDENTIAL” or “OUTSIDE ATTORNEYS’ EYES ONLY”
the copies of such documents as may contain confidential information at the time the copies are
produced to the Receiving Party;
(d)
Any individual response to written interrogatories or requests for admissions or any
expert report that contains or constitutes Designated Material shall be labeled or marked by the
Producing Party as “CONFIDENTIAL” or “OUTSIDE ATTORNEYS’ EYES ONLY” as the case
may be, at the time it is provided or disclosed to the Receiving Party, by indicating either at the
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outset of the document embodying the response or in the body of each individual response, the
designation applicable to each response. With respect to responses to written interrogatories or
requests for admissions already served in this Litigation, the outside counsel for the respective
Parties shall exchange letters within ten (10) business days following entry of this Order
identifying the designation, if any, applicable to each. Any document or thing created (e.g., any
abstract, summary, memorandum, or exhibit) containing Designated Material subject to this Order,
shall likewise be marked or labeled as “CONFIDENTIAL” or “OUTSIDE ATTORNEYS’ EYES
ONLY” as the case may be; and
(e)
In the case of deposition testimony, transcripts or portions thereof, designation shall
be made by any Party either (i) orally on the record during the deposition, in which case the
portion of the transcript of the designated testimony shall be bound in a separate volume and
marked “CONFIDENTIAL INFORMATION” or “OUTSIDE ATTORNEYS’ EYES ONLY
INFORMATION” by the reporter, as the Party may direct, or (ii) by captioned, written notice to
the reporter and all counsel of record, given within ten (10) business days after receipt of the
official transcript. All counsel receiving such notice shall be responsible for marking the copies of
the designated transcript or portion thereof in their possession or control as directed by the Party
or deponent. Pending expiration of the ten (10) business days, all Parties and, if applicable, any
third party witnesses or attorneys, shall treat the deposition transcript as if it had been designated
“OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION.” If the deposition is videotaped, the
video technician shall mark the original and all copies of the videotape to indicate that the contents
of the videotape are subject to this Order, substantially along the lines of “This videotape contains
confidential testimony used in this case. Its contents may not be viewed, displayed, or revealed
except by order of the Court or pursuant to written stipulation of the Parties.” No person shall
attend the designated portions of such depositions unless such person is an authorized recipient of
Designated Material (based on the designation of such Designated Material) under the terms of
this Order.
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UNINTENTIONAL FAILURE TO DESIGNATE
If, through inadvertence, a Producing Party provides any Designated Material pursuant to
this Litigation without designating and marking the Designated Material as CONFIDENTIAL or
OUTSIDE ATTORNEYS’ EYES ONLY, or fails to designate materials correctly, this does not,
standing alone, waive the Producing Party’s right to secure protection under this Order. The
Producing Party may subsequently inform the Receiving Party of the confidential nature of the
disclosed Designated Material, and the Receiving Party shall treat the disclosed Designated
Material as CONFIDENTIAL INFORMATION or OUTSIDE ATTORNEYS’ EYES ONLY
INFORMATION, as the case may be, upon receipt of written notice from the Producing Party, to
the extent the Receiving Party has not disclosed this Designated Material. Disclosure of such
Designated Material to persons not authorized to receive that material prior to receipt of the
confidentiality designation shall not be deemed a violation of this Order. However, in the event
the material has been distributed in a manner inconsistent with the categorical designation, the
Receiving Party will take the steps necessary to conform distribution to the categorical
designation, i.e., by retrieving all copies of the Designated Material, or notes or extracts thereof, in
the possession of the persons not authorized under this Order to possess such Designated Material
and advising the person to whom disclosure was made that the material is confidential and should
be treated as provided in the Order.
6.
CONTESTING THE DESIGNATION
(a)
No Party to this Litigation shall be obligated to challenge the propriety of any
designation by any Producing Party at the time the designation is made, and a failure to do so shall
not constitute a waiver or in any way preclude a subsequent challenge thereto unless a prompt
challenge to a Producing Party’s confidentiality designation is necessary to avoid foreseeable,
substantial unfairness, unnecessary economic burdens, or a later significant disruption or delay of
the Litigation.
(b)
A Party may contest a claim of confidentiality. Such Party objecting to the
designation of any Discovery Material as Designated Material, such as CONFIDENTIAL
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INFORMATION or OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION, must give
outside counsel for the Producing Party written notice that specifically identifies the documents or
information that the objecting party contends should be differently designated and the grounds for
the objection. Outside counsel for the objecting party and outside counsel for the Producing Party
are to then meet and confer in person, in writing, or by telephone in an effort to resolve the
contested designation. Failing resolution after service of the written notice of its reasons for the
objection, the objecting Party may, on a duly noticed motion or other procedure set forth by the
Court, seek an order changing or removing the designation. In the resolution of such matter, the
burden of establishing confidentiality shall be on the Party who made the claim of confidentiality,
i.e., the Producing Party, but information designated as CONFIDENTIAL INFORMATION or
OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION shall be deemed as such until the
matter is resolved.
7.
ACCESS TO DESIGNATED MATERIAL
(a)
Basic Principles. A Receiving Party is authorized under this Order to use
Designated Material that is disclosed by another Party or by a non-party in connection with this
case only for prosecuting, defending or attempting to settle this Litigation. Such Designated
Material may be disclosed only to those categories of persons and under the conditions described
in this Order.
Designated Material must be stored and maintained by a Receiving Party at a location and
in a secure manner that ensures that access is limited to the persons authorized under this Order.
A Producing Party is free to do whatever it desires with its own Designated Material,
provided that it complies with the requirements under HIPAA.
(b)
Disclosure of “CONFIDENTIAL INFORMATION.” Designated Material marked
“CONFIDENTIAL” may be disclosed only to:
(i)
any employee of the Producing Party;
(ii)
any former counsel or employee of the Producing Party who was involved
with the matters to which the “CONFIDENTIAL INFORMATION” relates or refers;
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(iii)
INFORMATION” prior to its production or disclosure in this Litigation;
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(iv)
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the Receiving Party’s outside counsel, their staff, and their commercial
copying vendors, data processing vendors, electronic discovery vendors, and/or database services ;
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the Court, its technical advisor, its personnel, and the jury in this Litigation;
(v)
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any person who authored or received the “CONFIDENTIAL
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no more than five (5) officers, directors, and employees (including in-house
counsel) of the Receiving Party to whom disclosure is reasonably necessary for this Litigation and
who have signed the undertaking attached as EXHIBIT A agreeing to be bound by the terms of
this Order;
(vii)
court reporters and videographers engaged for depositions, inspections, and
other proceedings in this Litigation;
(viii)
subject to Paragraph 8, approved persons or entities engaged by a Party or
counsel as consultants, experts, translators, or interpreters to consult, testify, translate, or interpret
in the case, excluding employees, officers or directors of a named Party or of any parent,
subsidiary, or affiliate of any named Party, and provided that, prior to receiving
“CONFIDENTIAL INFORMATION,” such persons or entities execute an undertaking in the form
attached as EXHIBIT A agreeing to be bound by the terms of this Order;
(ix)
persons or entities engaged by a Party or counsel for a Party to provide jury
or trial consulting services, provided that, prior to receiving “CONFIDENTIAL
INFORMATION,” such persons or entities execute an undertaking in the form attached as
EXHIBIT A, agreeing to be bound by the terms of this Order;
(x)
mock jurors or focus group members, provided that, prior to receiving
“CONFIDENTIAL INFORMATION,” such persons execute an undertaking in the form attached
as EXHIBIT B, agreeing to be bound by the terms of this Order; and
(xi)
persons or entities engaged by a Party or counsel for a Party to prepare
graphic or visual aids, or demonstrative exhibits, provided that, prior to receiving
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“CONFIDENTIAL INFORMATION,” such persons or entities execute an undertaking in the form
attached as EXHIBIT A, agreeing to be bound by the terms of this Order.
(c)
Disclosure of “OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION.”
Designated Material marked “OUTSIDE ATTORNEYS’ EYES ONLY” may be disclosed only to:
(i)
the Receiving Party’s Outside Counsel, their staff, and their commercial
copying vendors, data processing vendors, electronic discovery vendors, and/or database services;
(ii)
any person who (a) appears on the face of the Designated Material marked
“OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION” as an author, addressee, or recipient
thereof, or (b) is a witness during a deposition, court hearing, or trial where specific documentary
or testimonial evidence establishes that such person authored or received the Designated Material
marked “OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION” prior to its production or
disclosure in this Litigation;
(iii)
the Court, its technical advisor, its personnel, and the jury in this Litigation;
(iv)
court reporters and videographers engaged for depositions, inspections, and
other proceedings in this Litigation;
(v)
subject to Paragraph 8, approved persons or entities engaged by a Party or
counsel as consultants, experts, translators, or interpreters to consult, testify, translate or interpret
in the case, excluding employees, officers or directors of a named Party or of any parent,
subsidiary, or affiliate of any named Party, and provided that, prior to receiving “OUTSIDE
ATTORNEYS’ EYES ONLY INFORMATION,” such persons or entities execute an undertaking
in the form attached as EXHIBIT A agreeing to be bound by the terms of this Order;
(vi)
persons or entities engaged by a Party or counsel for a Party to provide jury
or trial consulting services, provided that, prior to receiving “OUTSIDE ATTORNEYS’ EYES
ONLY INFORMATION,” such persons or entities execute an undertaking in the form attached as
EXHIBIT A, agreeing to be bound by the terms of this Order; and
(vii)
persons or entities engaged by a Party or counsel for a Party to prepare
graphic or visual aids, or demonstrative exhibits, provided that, prior to receiving “OUTSIDE
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ATTORNEYS’ EYES ONLY INFORMATION,” such persons or entities execute an undertaking
in the form attached as EXHIBIT A, agreeing to be bound by the terms of this Order.
8.
CONDITIONS ON ACCESS TO DESIGNATED MATERIAL
(a)
Consultants and Experts. Prior to a Receiving Party giving, showing, disclosing,
making available, or communicating Designated Material to any expert or consultant under
Paragraph 7(c)(v), the Receiving Party shall: serve a written notice on the Producing Party that
includes: (i) the person’s name and business address; (ii) the person’s present employer and title
(along with a job description); (iii) the person’s up-to-date curriculum vitae or resume; (iv) a list
of the cases in which the person has testified at deposition or trial and all companies with which
the person has consulted or by which the person has been employed for the past five (5) years; and
(v) any previous or current relationship (personal or professional) with any of the Parties. If the
up-to-date curriculum vitae or resume of the expert or consultant provides the information
required under this paragraph, then the information need not be separately provided. The
Receiving Party shall include with such notice, a copy of the Acknowledgment of Protective
Order, in the form attached as EXHIBIT A, signed by the proposed expert or consultant agreeing
to be bound by the terms of this Order.
(b)
Objections to Proposed Consultants and Experts. The Producing Party shall be
entitled to object to such disclosure to the expert or consultant within five (5) business days after
receipt of the Acknowledgment of Protective Order executed by such expert or consultant, by
stating specifically in writing the reasons why such expert or consultant should not receive the
Designated Material. Outside counsel for the Producing Party and outside counsel for the
Receiving Party shall meet and confer within three (3) business days after the Producing Party
serves its objection, for the purpose of attempting to resolve the objection. If the objection is not
resolved by the Parties, the Producing Party must file and serve a motion to prevent disclosure
within five calendar (5) business days after such meet and confer. Otherwise, the Producing Party
shall be deemed to have withdrawn its objection. In any motion before the Court, the Producing
Party shall set forth the Parties’ meet and confer efforts and shall bear the burden of showing the
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need for confidentiality and the grounds for its objection. No disclosure of Designated Material
shall be made to the proposed expert or consultant until the Parties resolve the matter, the
objection is withdrawn, or the Court permits such disclosure. The filing and pendency of
objections shall not limit, delay, or defer any disclosures of Designated Material to persons as to
whom no such objection has been made, nor shall it delay or defer any other pending discovery
unless the level of confidentiality bears directly on the objecting Party’s ability to conduct such
discovery.
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(c)
Authorization and Acknowledgment. Each person authorized to receive Designated
Material under this Order (excluding Judges, Magistrate Judges, judicial law clerks, and clerical
personnel of the Court before which this Litigation is pending or qualified court reporters, as well
as third party contractors and their employees involved solely in document management, delivery
or copying services for this Litigation) to whom Designated Material is to be given, shown,
disclosed, made available or communicated in any way, shall first execute an Acknowledgment of
Protective Order in the form attached as EXHIBIT A, agreeing to be bound by the terms of this
Order, acknowledging that Designated Material is subject to this Order, that the person is
authorized under Paragraphs 7(b)-(c) to receive Designated Material marked as CONFIDENTIAL
or OUTSIDE ATTORNEYS’ EYES ONLY, that the person has read this Order, that such person
agrees to comply with, and be bound by, this Order, and that such person is aware that contempt
sanctions may be entered for violation of this Order. Outside counsel to whom Designated
Material is produced shall keep in his or her files an original of each such executed
Acknowledgment of Protective Order until sixty (60) calendar days after the final termination of
this Litigation. Upon final termination of this Litigation and at the written request of the
Producing Party, all such executed agreements shall be provided to outside counsel for the
Producing Party.
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PROCEDURE FOR DISCLOSURES TO OTHER PERSONS
If it becomes necessary for a Receiving Party’s outside counsel to seek the assistance of
any person, other than those persons referred to in Paragraph 7, and to disclose Designated
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Material to such person to properly prepare this Litigation for trial, the following procedures shall
be employed:
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(a)
the Producing Party, identifying therein the specific Designated Material to be disclosed and the
name, address, and position (along with a job description) of the person(s) to whom such
disclosure is to be made;
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(b)
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shall be free to make such disclosure to the designated person(s); provided, however, that outside
counsel for the Receiving Party shall serve upon outside counsel for the Producing Party, prior to
disclosure, an Acknowledgment of Protective Order in the form attached as EXHIBIT A, whereby
such person agrees to comply with and be bound by this Order. The acknowledgment shall be
retained by outside counsel for the Receiving Party, and distributed upon final disposition of this
Litigation as set forth in Paragraph 8 above.
(c)
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If, within five (5) business days, the outside counsel for the Producing Party
objects, in writing, to such disclosure, no disclosure shall be made, except by order of the Court
upon a regularly noticed motion brought by the Receiving Party. Before filing such a motion,
outside counsel for the Receiving Party shall meet and confer with outside counsel for the
Producing Party in a good faith effort to resolve their differences.
20
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If no objection to such disclosure is made by outside counsel for the Producing
Party within five (5) business days of such notification, outside counsel for the Receiving Party
15
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Outside counsel of the Receiving Party shall notify, in writing, outside counsel for
(d)
Any Party moving for such an order requesting disclosure shall explain why the
requested disclosure is appropriate, but the Producing Party shall bear the burden of justifying the
confidentiality designation and explaining the harm that would result from the requested
disclosure.
10.
PROSECUTION BAR
Absent written consent from the Producing Party, any attorney, patent agent, paralegal,
expert, or consultant of, for, or representing the Receiving Party that gains access to “OUTSIDE
ATTORNEYS’ EYES ONLY INFORMATION” shall not be involved in the prosecution of
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patents or patent applications relating to non-invasive pre-natal testing of cell-free DNA in
maternal serum or plasma samples, including without limitation the patents asserted in this
Litigation and any patent or application claiming priority to or otherwise related to the patents
asserted in this Litigation, before any foreign or domestic agency, including the United States
Patent and Trademark Office (“the Patent Office”). This prosecution bar is personal to the person
who has gained access to such “OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION” and
shall not be imputed to any other person or entity. For purposes of this paragraph, “prosecution”
includes directly or indirectly drafting, amending, advising, or otherwise affecting the scope or
maintenance of patent claims (for example, original prosecution, reissue and reexamination
proceedings). 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 “OUTSIDE ATTORNEYS’ EYES ONLY
INFORMATION” is first received by the affected individual and shall end two (2) years after final
termination of this Litigation.
11.
PROCEDURES FOR FILING PAPERS WITH DESIGNATED MATERIAL
Designated Material may be included with, or referred to in, papers filed with the Court
where this case is now pending or in any other court only in accordance with the following
procedures:
(a)
The Designated Material must be filed under seal in sealed envelopes endorsed
with the title of this Litigation, an indication of the contents of the envelope, the identity of the
filing Party and the notation “CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER - NOT
TO BE DISCLOSED EXCEPT BY COURT ORDER OR WRITTEN STIPULATION OF THE
PARTIES.” A Party that seeks to file under seal any Designated Material must comply with Civil
Local Rule 79-5.
(b)
All papers filed with the Court, including but not limited to pleadings and
memoranda of law, which include all or any portion of information set forth in Designated
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Material must be filed under seal in accordance with the terms and procedures set forth in this
Order and applicable Court Rules, including the procedures for filing materials set forth above in
Paragraph 11(a). Counsel for the Party filing papers with Designated Material shall be responsible
for designating all papers filed with the Court as Designated Material and marked as
CONFIDENTIAL or OUTSIDE ATTORNEYS’ EYES ONLY depending on the contents of the
papers being filed and for complying with Court Rules governing sealing and redacting of such
filings. Such papers shall be subject to the terms of this Order.
12.
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11
Subject to the Court’s ruling upon an appropriate motion, in accordance with the Court
Rules, redacted versions of papers with Designated Material filed under seal may be filed with the
Court in accordance with Court Rules and made publicly available provided that:
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(a)
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All Designated Material set forth in the papers is deleted or completely obscured
and all Designated Material is removed as exhibits; and
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REDACTED FILINGS OF PAPERS WITH DESIGNATED MATERIAL
(b)
Redacted versions of the papers are clearly marked “Public Version Confidential
Material Omitted.” Redacted versions of the papers also must clearly identify each place where
information or exhibits have been deleted.
13.
UNINTENTIONAL DISCLOSURE OF PRIVILEGED INFORMATION
Counsel shall exert their best efforts to identify information (including documents or
material) protected from discovery by the attorney-client privilege, the work-product doctrine, or
any other applicable privilege or immunity prior to the disclosure of any such documents or
material. If information subject to a claim of attorney-client privilege, work-product immunity, or
other privilege, doctrine, right, or immunity is nevertheless inadvertently or unintentionally
produced, such production shall in no way prejudice or otherwise constitute a waiver or estoppel
as to any such privilege, doctrine, right or immunity.
If a Producing Party unintentionally or inadvertently discloses information that it believes
is protected privileged or otherwise immune from discovery, the Party shall, within seven (7)
business days upon discovery of the disclosure, so advise the Receiving Party in writing, request
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the information be returned, and attach a privilege log with an entry pertaining to the information
that is privileged or otherwise immune from discovery. If that request is made and the privilege
log provided, no Party to this Litigation shall thereafter assert on this basis that the disclosure
waived any privilege or immunity. If a Receiving Party receives information that the Receiving
Party believes may be subject to a claim of privilege or protection from discovery, the Receiving
Party shall promptly identify the information to the Producing Party.
When a Producing Party or Receiving Party identifies such privileged or protected
information, a Receiving Party: (1) shall not use, and shall immediately cease any prior use of,
such information; (2) shall immediately take reasonable steps to retrieve the information from
others to which the Receiving Party disclosed the information; (3) shall immediately, and not later
than three (3) business days after receipt of the Producing Party’s request, return to the Producing
Party or destroy the information and destroy all copies thereof; and (4) shall confirm to the
Producing Party the destruction under (3) above of all copies of the information not returned to the
Producing Party. No one shall use the fact or circumstances of production of the information in
this Litigation to argue that any privilege or protection has been waived. The cost, if any, for
excising such documents or materials by the Receiving Party shall be borne by the Producing
Party. Notwithstanding this provision, no Party or its outside counsel shall be required to return or
destroy any information that may exist on any disaster recovery backup system. The Receiving
Party may file a motion to compel the production of the information on the basis that: (a) the
information was never privileged or protected from disclosure; or (b) any applicable privilege or
immunity has been waived by some act other than the production of the information in this
Litigation. Outside counsel for the Producing Party and outside counsel for the Receiving Party
shall meet and confer in accordance with applicable law or Court rules regarding any such motion
to compel.
To the extent that any such inadvertently produced material has been used, included,
referenced, or summarized in a pleading, deposition or other proceeding, nothing in this paragraph
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shall require a Receiving Party to purge, redact, or excise any such information that has been used
in good faith before a request for the return of the unintentionally produced material.
14.
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This Order is intended to comply with the HIPAA requirements of 45 CFR §
164.512(e)(1)(v). A Producing Party is entitled to redact information that constitutes, embodies,
or reflects “protected health information” under HIPAA from documents and material produced in
this Litigation. Alternatively, a Producing Party may produce such documents or material in
unredacted form by designating the document or material as “OUTSIDE ATTORNEYS’ EYES
ONLY INFORMATION” in accordance with the provisions of this Order, and the Receiving
Party shall treat all such “protected health information” accordingly. If a Party uses Designated
Material containing “protected health information” in an expert report or at deposition, trial, or any
motion or other presentation in or to the Court, the Party using such Designated Material shall
redact the “protected health information” from such Designated Material.
15.
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PROCEDURE REGARDING HIPAA-PROTECTED INFORMATION
INFORMATION NOT COVERED BY THIS ORDER
The restrictions set forth in this Order shall not apply to information which is in the
possession of or otherwise known to the Receiving Party or the public before the date of its
transmission by the Producing Party to the Receiving Party in this Litigation, or which lawfully
comes into the possession of or becomes known to the Receiving Party or lawfully comes into the
possession of or otherwise becomes known to the public after the date of its transmission to the
Receiving Party, provided that such information does not become publicly known by any act or
omission of the Receiving Party which would be in violation of this Order.
16.
RESPONSIBILITY OF ATTORNEYS
Outside counsel for the Receiving Party shall be responsible for employing reasonable
measures to control duplication of, access to, and distribution of copies of Designated Materials it
received. The Receiving Party shall not duplicate any Designated Material except, as
contemplated by this Order, for use as exhibits at depositions, in connection with court filings or,
as necessary, by counsel, and experts or consultants approved under Paragraphs 7 and 8, for use as
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working copies. All copies, extracts and translations must be appropriately marked and are subject
to Paragraph 17 of this Order.
17.
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Upon termination, settlement or final judgment of this Litigation including exhaustion of
all appeals, the originals and all copies of Designated Material, including without limitation
documents containing “protected health information” under HIPAA, shall be either destroyed or
turned over to the Producing Party, or to their respective outside counsel, within sixty (60)
calendar days. However, outside counsel may retain pleadings, attorney and consultant work
product, attorney-client communications, communications with opposing counsel, and depositions
for archival purposes. If Designated Material is destroyed (in lieu of return) pursuant to this
paragraph, outside counsel for the Receiving Party shall provide to outside counsel for the
Producing Party a certification identifying when and how the destruction was performed. The
provisions of this Order insofar as it restricts the disclosure, communication of, and use of
Designated Material produced hereunder shall continue to be binding after the conclusion of this
Litigation.
18.
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REFERENCE TO THIS ORDER AT TRIAL
No reference may be made at the trial in this Litigation in the presence of a jury to the
existence of this Order or to the effect that certain material is subject to this Order.
19.
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FINAL DISPOSITION
NO LIMITATION OF OTHER RIGHTS OR OBJECTIONS
By stipulating to the entry of this Order, no Party waives any right it otherwise would have
to object to disclosing or producing any information or item on any ground not addressed in this
Order.
20.
ADMISSIBILITY
Nothing herein shall be construed to affect in any way the evidentiary admissibility of any
document, testimony, or other matter at any court proceeding related to this Litigation. The marking
of Designated Material as CONFIDENTIAL or OUTSIDE ATTORNEYS’ EYES ONLY pursuant
to this Order shall not, for that reason alone, bar its introduction or use at any court proceeding
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related to this Litigation pursuant to such terms and conditions as the Court may deem appropriate,
consistent with the need for a complete and accurate record of the proceedings; provided, however,
that every effort shall be made, through the use of procedures agreed upon by the Parties or
otherwise, to preserve the confidentiality of Designated Material marked as CONFIDENTIAL or
OUTSIDE ATTORNEYS’ EYES ONLY.
21.
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This Order is entered without prejudice to the right of any Party to apply to the Court at
any time for additional protection, or to release, rescind, or modify the restrictions of this Order, to
determine whether a particular person shall be entitled to receive any particular information or to
seek relief from inadvertent disclosure of privileged or work-product information. This Order
does not preclude all of the Parties to this Order from entering into any stipulation (in writing or
on the record) constituting a modification of this Order. On any motion seeking disclosures
beyond those authorized by this Order, the burden will be on the Receiving Party to justify the
disclosure.
22.
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RELEASE FROM OR MODIFICATION OF THIS ORDER
DISCOVERY FROM THIRD PARTIES
If discovery is sought of a person not a Party to this Litigation (“third party”) requiring
disclosure of such third party’s Designated Material, the Designated Material disclosed by any
such third party will be accorded the same protection as the Parties’ respective Designated
Material, and will be subject to the same procedures as those governing disclosure of the parties’
respective Designated Material pursuant to this Order.
23.
MATERIAL CONFIDENTIAL TO THIRD PARTIES
During the course of this Litigation, a Party may be requested to produce to another Party
information subject to contractual or other obligations of confidentiality owed to a third party by
the Party receiving the request. The Party subject to such contractual or other obligation of
confidentiality shall timely contact the third party to determine whether such third party is willing
to permit disclosure of the information under the terms of this Order. If the third party is willing
to permit such disclosure, the information shall be produced in accordance with this Order. If the
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third party is not willing to permit disclosure of the information under the terms of this Order, the
Requesting Party in the Litigation shall be notified and any information withheld on the basis of
such contractual or other confidentiality obligation shall be identified on a separate index stating
the reason for withholding the document and the third party to whom the obligation of
confidentiality is owed. This Order shall not preclude any Party from moving the Court for an
order compelling production of such information.
24.
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If a Receiving Party receives a subpoena or other compulsory process from a non-party to
this Order seeking production or other disclosure of a Producing Party’s Designated Material, that
Receiving Party shall give written notice to outside counsel for the Producing Party immediately,
and in no event more than five (5) business days after receipt of the subpoena or other compulsory
process, identifying the specific Designated Material sought and enclosing a copy of the subpoena
or other compulsory process.
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The Receiving Party must also promptly inform in writing the party who caused the
subpoena or order to issue in the other litigation that some or all of the materials covered by the
subpoena or order is the subject of this Order. In addition, the Receiving Party must deliver a
copy of this Order promptly to the party in the other action that caused the subpoena or order to
issue.
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NON-PARTY REQUEST/SUBPOENA OF DESIGNATED MATERIAL
If the Producing Party timely seeks a protective order, the Receiving Party to whom the
subpoena or other compulsory process was issued or served shall not produce the Designated
Material requested prior to receiving a Court order or consent of the Producing Party. In the event
that Designated Material is produced to the non-party, such material shall be treated as Designated
Material pursuant to this Order.
25.
UNAUTHORIZED DISCLOSURE OF DESIGNATED MATERIAL
If Designated Material, or any portion thereof, is disclosed by the Receiving Party, through
inadvertence or otherwise, to any person or party not authorized under this Order, then the
Receiving Party shall use its best efforts to retrieve immediately all copies of such Designated
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Material, and to bind such person to the terms of this Order. In such event, the Receiving Party
shall also (a) promptly inform such person of all the provisions of this Order; (b) identify such
person immediately to the Producing Party; and (c) request such person to execute the
Acknowledgment of Stipulated Protective Order in the form shown in EXHIBIT A.
26.
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Nothing in this Order shall bar or otherwise restrict any counsel herein from rendering
advice to the counsel’s client with respect to this Litigation, and in the course thereof, relying
upon an examination of Designated Material, provided, however, that in rendering such advice and
in otherwise communicating with the Party-client, the counsel shall not disclose any Designated
Material, nor the source of any Designated Material, to anyone not authorized to receive such
Designated Material pursuant to the terms of this Order.
27.
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the Court’s consideration and approval as an Order. The Parties’ stipulation shall not be construed
to create a contract between the Parties or between the Parties and their respective counsel.
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EFFECTIVE DATE
This Order shall be effective on the date of its execution, provided that all material
previously produced shall be deemed OUTSIDE ATTORNEYS’ EYES ONLY INFORMATION
unless and until they are re-designated by the Producing Party or by further order of the Court.
29.
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NO CONTRACT
To the extent that the Parties have agreed on the terms of this Order, such stipulation is for
17
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COUNSEL’S RIGHT TO PROVIDE ADVICE
TERMINATION
The final termination of this Litigation shall not automatically terminate the effectiveness
of this Order and persons subject to this Order shall be bound by the confidentiality obligations of
this Order until the Producing Party agrees otherwise in writing or this Court (or any other court of
competent jurisdiction) orders otherwise.
30.
OTHER PROCEEDINGS
By entering this Order and limiting the disclosure of information in this case, the Court
does not intend to preclude another court from finding that information may be relevant and
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subject to disclosure in another case. Any person or Party subject to this Order who becomes
subject to a motion to disclose another Party’s Designated Material pursuant to this Order shall
promptly notify that Party of the motion so that the Party may have an opportunity to appear and
be heard on whether that information should be disclosed, as noted above in Paragraph 24.
5
IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.
6
Dated: July 23, 2012
7
THOMAS WHITELAW LLP
W. Paul Schuck
8
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By: ______________________________
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Attorneys for Natera, Inc. and DNA Diagnostics
Center, Inc.
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Dated: July 23, 2012
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KAYE SCHOLER LLP
Michael J. Malacek
Peter E. Root
Stephen C. Holmes
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By:
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Attorneys for Sequenom, Inc.
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Dated: July 23, 2012
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SATTERLEE STEPHENS BURKE
& BURKE LLP
Mario Aieta
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By:
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Attorneys for Isis Innovation Limited
23
24 IT IS SO ORDERED.
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Dated:
7/24/12
United States District Judge
Susan Illston
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EXHIBIT A
2
ACKNOWLEDGEMENT OF PROTECTIVE ORDER
3
4
UNITED STATES DISTRICT COURT
5
NORTHERN DISTRICT OF CALIFORNIA
6
SAN FRANCISCO DIVISION
7
NATERA, INC. and DNA DIAGNOSTICS
8 CENTER, INC.
9
Plaintiff/Counterclaim
Defendant,
10
11
v.
12 SEQUENOM, INC.
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Defendant/Counterclaim
Plaintiff; and
15 ISIS INNOVATION LIMITED
Nominal Counterclaim16
Defendant.
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Case No. 3:12-cv-0132-SI
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I, ________________________________________________, state that:
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I have read and reviewed in its entirety the annexed Stipulated Protective Order
21 (“Protective Order”) that has been signed and entered in this matter.
22
I hereby agree to be bound by and comply with the terms of the Protective Order, and not
23 to disseminate or disclose any information subject to the Protective Order that I review or about
24 which I am told, to any person, entity, party, or agency for any reason, except in accordance with
25 the terms of the Protective Order.
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I understand that contempt sanctions may be entered for violation of this Protective Order
and further agree to submit to the jurisdiction of this Court for the purposes of enforcement of the
terms of this Protective Order.
DATED this _______ day of ______________________, 20___.
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____________________________________
(Signature)
____________________________________
(Typed or Printed Name)
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EXHIBIT B
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ACKNOWLEDGEMENT OF PROTECTIVE ORDER
3
4
UNITED STATES DISTRICT COURT
5
NORTHERN DISTRICT OF CALIFORNIA
6
SAN FRANCISCO DIVISION
7
NATERA, INC. and DNA DIAGNOSTICS
8 CENTER, INC.
9
Plaintiff/Counterclaim
Defendant,
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11
v.
12 SEQUENOM, INC.
13
Defendant/Counterclaim
Plaintiff; and
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15 ISIS INNOVATION LIMITED
Nominal Counterclaim16
Defendant.
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Case No. 3:12-cv-0132-SI
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1.
This agreement is made between ______________________________________
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[INSERT NAME OF COUNSEL or CONSULTANT] and
20
_________________________________________________ (NAME OF PARTICIPANT),
21
residing at _____________________________________________________ (ADDRESS OF
22
PARTICIPANT).
23
2.
I understand that, in connection with the research project in which I am
24
participating today, I may receive information that is confidential, and that I may not share or
25
disclose that information with anyone (including members of my family) outside of this research
26
group.
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3.
I agree not to disclose any information I learn here today to anyone outside of this
research group, or to use such information in any way outside of my participation in this research
project today.
4.
I agree that, at the end of the research project today, I will not keep or take with me
any documents or other materials shown to me, or any notes or other records I may make about
those documents or other materials shown to me today.
7
Signed:
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Date:
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