OpenTV, Inc. et al v. Apple, Inc.

Filing 75

Order by Magistrate Judge Kandis A. Westmore regarding 72 Discovery Letter Brief.(kawlc2S, COURT STAFF) (Filed on 10/9/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OPENTV, INC., et al.,

Case No. 14-cv-01622-JST (KAW)

Plaintiffs,
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v.

ORDER REGARDING JOINT
DISCOVERY LETTER

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APPLE, INC.,

Re: Dkt. No. 72
Defendant.

United States District Court
Northern District of California

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The parties in this patent case dispute the terms of the proposed protective order that will

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govern discovery. Having reviewed the parties' joint discovery letter, the Court finds that the

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relevant terms of the Patent Local Rule 2-2 Interim Protective Order shall govern where the parties

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have failed to agree on terms.
I.

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LEGAL STANDARD

When a party from whom discovery is requested moves for a protective order, the court

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may "for good cause, issue an order to protect a party or person from undue burden or expense."

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Fed. R. Civ. P. 26(c)(1). In general, "good cause requires the moving party to show that specific

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prejudice or harm will result if the protective order is not issued." Dynetix Design Solutions, Inc.

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v. Synopsys, Inc., C-11-05973 PSG, 2012 WL 1232105, at *2 (N.D. Cal. Apr. 12, 2012). In patent

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cases, "[t]he Protective Order authorized by the Northern District of California shall govern unless

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the Court enters a different protective order." Patent L.R. 2-2.
II.

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DISCUSSION

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A.

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The model protective order grants in-house counsel, if properly nominated as "Designated

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In-house counsel access to attorneys' eyes only materials

House Counsel," access to materials designated "Highly Confidential - Attorneys' Eyes Only."

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Model Protective Order ¶¶ 7.3(a)(1), 7.4(a)(1). In-house counsel may be so nominated if counsel

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is not engaged in competitive decision-making. Id.

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The parties agree that three in-house counsel for each party should have access to certain

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information disclosed under the proposed protective order. (Joint Ltr. at 2, 3.) They dispute

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whether that should include materials designated "Highly Confidential – Attorneys' Eyes Only."

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OpenTV advances the position that disclosure to in-house counsel is appropriate so long as

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counsel is not engaged in competitive decision-making. (Id. at 2.) Apple proposes that in-house

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attorneys should have access to materials designated "Highly Confidential – Attorneys' Eyes

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Only" only if the materials consist of financial or sales information. (Id.) It argues that given the
nature of the information at issue, i.e., Apple's most sensitive technical and internal business

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United States District Court
Northern District of California

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information, "the risk of disclosure outweighs any need for access." (Id.)

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In deciding whether disclosure of trade secret information is appropriate, the Court must

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balance the risk of inadvertent disclosure of Apple's trade secrets against the risk that protecting

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those trade secrets from disclosure will impair OpenTV's ability to prosecute its claims. See

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Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992). This inquiry is

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necessarily informed by in-house counsel's specific role, including his or her duties and

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responsibilities, as only with such information may the Court properly determine whether allowing

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in-house access to trade secret information would place counsel in the untenable position of

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having to refuse his employer legal advice or reveal the competitor's trade secret information. See

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id. at 1471.

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Absent these details, Apple cannot make the requisite showing. Accordingly, the terms of

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the model protective order shall govern disclosure of materials designated "Highly Confidential –

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Attorneys' Eyes Only."

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B.

Limits on printing source code and the number of copies of source code
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Limits on printing source code

The model protective order allows a receiving party to "request paper copies of limited

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portions of source code that are reasonably necessary for the preparation of court filings,

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pleadings, expert reports, or other papers, or for deposition or trial." Model Protective Order ¶
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9(d). A party cannot request printed source code for the purposes of review. Id.

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OpenTV proposes that the terms of the model protective order govern the printing of

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source code. (Joint Ltr. at 4.) It argues that the order "already limits a Receiving Party to printing

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source code only 'when necessary.'" (Id.) OpenTV describes this as "an appropriate and

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reasonable restriction." (Id.) In addition, OpenTV points out that "Apple has not yet produced

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any source code or explained how its proposed restrictions bear any relationship to the total

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amount of source code that it expects to produce." (Id.)

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Apple, however, contends that the printing of source code should be limited to 250 total
pages, with no more than 25 continuous pages of any particular block of source code. (Joint Ltr.

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at 5.) It asserts that these limits are necessary to prevent "potentially devastating and irreparable

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United States District Court
Northern District of California

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competitive harm" and to preserve the confidentiality of its source code, which ensures that

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Apple's products are secure from hacking and viruses. (Id.) It also argues that declining to adopt

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the proposed limitations would invite "countless disputes as to the number of pages of Source

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Code that can be printed." (Id.)

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As OpenTV notes, Apple has not yet produced any source code in this case. At this stage,

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then, any presumptive limits are unnecessary given the existing language in the model protective

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order. The Court disagrees that the language in the model protective order, which parties routinely

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adopt, will invite "countless disputes" on the issue of source code printing. The model protective

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order limits the printing of source to that which is reasonably necessary, and both the model

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protective order and the parties' proposed protective order outline the procedure the parties are to

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follow in the event there is a dispute on the issue. Model Protective Order ¶¶ 6, 9(d); Proposed

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Order ¶ 11(c)(v). Either variant requires that the parties meet and confer to resolve disputes,

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which should facilitate the resolution of any disputes the parties anticipate in this case. See id. ¶ 6;

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Proposed Order ¶ 11(c)(v).

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Accordingly, Apple has failed to show good cause to impose its proposed limitations on

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the printing of source code. The parties may print portions of source code, as is reasonably

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necessary, consistent with Paragraph 9(d) of the model protective order.

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2.

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Limits on the number of copies of source code

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The model protective order provides that "[t]he Receiving Party shall only make additional

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paper copies [of any printed portions of source code] if such additional copies are (1) necessary to

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prepare court filings, pleadings, or other papers (including a testifying expert’s expert report), (2)

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necessary for deposition, or (3) otherwise necessary for the preparation of its case." Id. ¶ 9(e).
Again, the parties seek to depart from the terms of the model protective order. Apple

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suggests that a limit of three copies of printed source code is sufficient. (Joint Ltr. at 5.) OpenTV

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disagrees. (Id. at 5.) It proposes that the parties be permitted to maintain seven copies of any

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printed source code. (Id. at 4.) It explains that its litigation team includes attorneys working in
three offices, so Apple's proposal would only permit each office to maintain a copy, with no

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United States District Court
Northern District of California

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copies available to any outside expert witnesses. (Id.) Apple argues that the risk that its source

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code "will be disseminated increases exponentially with each copy that is made." (Id.)

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Here, neither party has shown good cause for imposing either proposed limit on the

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number of copies of source code that may be maintained. For this reason, the number of copies of

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source code shall be limited to those that are "necessary," consistent with Paragraph 9(e) of the

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model protective order.

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C.

Restrictions on copies of source code at depositions

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As stated above, the model protective order provides that "[t]he Receiving Party shall only

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make additional paper copies if such additional copies are (1) necessary to prepare court filings,

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pleadings, or other papers (including a testifying expert’s expert report), (2) necessary for

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deposition, or (3) otherwise necessary for the preparation of its case." Model Protective Order ¶

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9(d).

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OpenTV proposes that during a deposition, Apple should provide both a printed copy of

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source code and an electronic copy of source code. (Id.) It asserts that its proposal "would allow

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the attorney to have both forms available at a deposition in order to question a witness as she sees

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fit." (Joint Ltr. at 7.) Apple argues that both formats are not necessary, as the proposed protective

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order contains generous provisions for review of source code. (Id. at 7-8.) It suggests that

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OpenTV should elect, in advance of a deposition, whether it will use source code in electronic
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format or in print format. (Id. at 8.)
Neither party has shown why its respective proposal warrants a departure from the terms of

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the model protective order. OpenTV prefers that source code be available in both printed and

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electronic format, but it concedes that "[p]rinted source code has Bates numbers and allows the

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examining attorney to clearly refer to specific portions of the code and create a clear record as to

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the witness's testimony." (Joint Ltr. at 7.)

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Accordingly, source code shall be available, in printed form, for use at depositions as
necessary, consistent with the relevant provisions of the model protective order.
III.

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CONCLUSION

For the reasons set forth above, the model protective order shall govern where the parties

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United States District Court
Northern District of California

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have failed to agree on the terms of the stipulated protective order to be entered in this case. The

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parties are to file a proposed stipulated protective order that is consistent with this order.

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IT IS SO ORDERED.
Dated: 10/09/2014
______________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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