dpiX LLC v. Yieldboost Tech Inc et al

Filing 72

ORDER APPROVING STIPULATED PROTECTIVE ORDER re 71 STIPULATION WITH PROPOSED ORDER Errata to Stipulated Protective Order filed by dpiX LLC, 70 STIPULATION WITH PROPOSED ORDER FOR PROTECTIVE ORDER filed by dpiX LLC. Signed by Judge Jon S. Tigar on September 11, 2015. (wsn, COURT STAFF) (Filed on 9/11/2015)

IN THE UNITED STATES DISTRICT COURT

1

NORTHERN DISTRICT OF CALIFORNIA

2

SAN FRANCISCO DIVISION

3
4
5

DPIX LLC, a Delaware limited liability
company,
Plaintiff,

6
7
8
9

vs.

No. 3:14-CV-05382-JST
ORDER APPROVING STIPULATED
PROTECTIVE ORDER
Re: ECF Nos. 70, 71

YIELDBOOST TECH, INC., a California
corporation, and KYO YOUNG CHUNG,
an individual,
Defendants.

10
11
12

1.

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

13
14

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

15

and from use for any purpose other than prosecuting this litigation may be warranted. Accordingly,

16

the Parties hereby stipulate to and petition the court to enter the following Stipulated Protective

17

Order. The Parties acknowledge that this Stipulated Protective Order does not confer blanket

18

protections on all disclosures or responses to discovery and that the protection it affords from public

19

disclosure and use extends only to the limited information or items that are entitled to confidential

20

treatment under the applicable legal principles. The Parties further acknowledge, as set forth in

21

Section 14.4, below, that this Stipulated Protective Order does not entitle them to file confidential

22

information under seal; Civil Local Rule 79-5 sets forth the procedures that must be followed and

23

the standards that will be applied when a Party seeks permission from the court to file material

24

under seal.

25

2.

26
27

DEFINITIONS
2.1

Challenging Party: a Party or Non-Party that challenges the designation of

information or items under this Stipulated Protective Order.

28
-1ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

2.2

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

2

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

3

Civil Procedure 26(c).

4
5
6

2.3

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

as their support staff).
2.4

Designated House Counsel: House Counsel who seek access to “HIGHLY

7

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this matter and (1) who has no

8

involvement in competitive decision-making, (2) to whom disclosure is reasonably necessary for

9

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

10
11

and (4) as to whom the procedures set forth in paragraph 7.4(a)(1), below, have been followed.
2.5

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

12

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

13

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

14

COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”.

15

2.6

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

16

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

17

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

18

discovery in this matter.

19

2.7

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

20

the litigation who (1) has been retained by a Party or its Outside Counsel of Record to serve as a

21

disclosed expert witness in this action, (2) is not a past or current employee of a Party or of a Party’s

22

competitor, and (3) at the time of retention, is not anticipated to become an employee of a Party or

23

of a Party’s competitor. Expert does not include experts or consultants who have not been retained

24

by Outside Counsel of Record to be a disclosed Expert, who have not been disclosed as an Expert,

25

and/or who will not be a disclosed Expert in this action.

26
27

2.8

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

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

28
-2ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

restrictive means.

3

2.9

“HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” Information

4

or Items: extremely sensitive “Confidential Information or Items,” including without limitation

5

proprietary or trade secret information, disclosure of which to another Party or Non-Party would

6

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

7

2.10

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

8

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

9

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

10

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

11

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

12

by less restrictive means.

13
14
15
16
17

2.11

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

Counsel does not include Outside Counsel of Record.
2.12

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

entity not named as a Party to this action.
2.13

Outside Counsel of Record: attorneys who are not employees of a Party to this action

18

but are retained to represent or advise a Party to this action and have appeared in this action on

19

behalf of that Party or, for the purpose of this action, are affiliated with a law firm which has

20

appeared on behalf of that Party. Outside Counsel of Record does not include House Counsel or

21

Designated House Counsel.

22
23
24
25
26
27

2.14

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

consultants, retained Experts, and Outside Counsel of Record (and their support staffs).
2.15

Producing Party: a Party or Non-Party that produces Disclosure or Discovery

Material in this action.
2.16

Professional Vendors: persons or entities that provide Outside Counsel of Record

litigation support services (e.g., photocopying, videotaping, translating, preparing exhibits or

28
-3ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

demonstrations, and organizing, storing, or retrieving data in any form or medium) and their

2

employees and subcontractors.
2.17

3

Protected Material: any Disclosure or Discovery Material that is designated as

4

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

5

“HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” or as “HIGHLY

6

CONFIDENTIAL – SOURCE CODE.”
2.18

7

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

8

Producing Party.

9

3.

SCOPE
The protections conferred by this Stipulated Protective Order cover not only Protected

10
11

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

12

Material; (2) all copies, excerpts, summaries, or compilations of Protected Material; and (3) any

13

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

14

Material. However, the protections conferred by this Stipulated Protective Order do not cover the

15

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

16

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

17

result of publication not involving a violation of this Stipulated Protective Order, including

18

becoming part of the public record through trial or otherwise; and (b) any information known to the

19

Receiving Party prior to the disclosure or obtained by the Receiving Party after the disclosure from

20

a source who obtained the information lawfully and under no obligation of confidentiality to the

21

Designating Party. Any use of Protected Material at trial shall be governed by a separate agreement

22

or order.

23

4.

24

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

25

Stipulated Protective Order shall remain in effect until a Designating Party agrees otherwise in

26

writing or a court order otherwise directs. Final disposition shall be deemed to be the later of (1)

27

dismissal of all claims and defenses in this action, with or without prejudice; and (2) final judgment

28
-4ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

herein after the completion and exhaustion of all appeals, rehearings, remands, trials, or reviews of

2

this action, including the time limits for filing any motions or applications for extension of time

3

pursuant to applicable law.

4

///

5

5.

6

DESIGNATING PROTECTED MATERIAL
5.1

Exercise of Restraint and Care in Designating Material for Protection. Each Party or

7

Non-Party that designates information or items for protection under this Stipulated Protective Order

8

must take care to limit any such designation to specific material that qualifies under the appropriate

9

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

10

only those parts of material, documents, items, or oral or written communications that qualify – so

11

that other portions of the material, documents, items, or communications for which protection is not

12

warranted are not swept unjustifiably within the ambit of this Stipulated Protective Order.

13

Mass, indiscriminate, or routinized designations are prohibited. Designations that are shown

14

to be clearly unjustified or that have been made for an improper purpose (e.g., to unnecessarily

15

encumber or retard the case development process or to impose unnecessary expenses and burdens on

16

other Parties) expose the Designating Party to sanctions.

17

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

18

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

19

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

20

mistaken designation.

21

5.2

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

22

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

23

ordered, Disclosure or Discovery Material that qualifies for protection under this Stipulated

24

Protective Order must be clearly so designated before the material is disclosed or produced.

25
26
27

Designation in conformity with this Stipulated Protective Order requires:
(a) for information in documentary form (e.g., paper or electronic documents, but
excluding transcripts of depositions or other pretrial or trial proceedings), that the Producing Party

28
-5ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

affix the legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

2

ONLY” or “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” or “HIGHLY

3

CONFIDENTIAL – SOURCE CODE” to each page that contains protected material. If only a

4

portion or portions of the material on a page qualifies for protection, the Producing Party also must

5

clearly identify the protected portion(s) (e.g., by making appropriate markings in the margins) and

6

must specify, for each portion, the level of protection being asserted.

7

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

8

need not designate them for protection until after the Receiving Party has indicated which material it

9

would like copied and produced. During the inspection and before the designation, all of the

10

material made available for inspection shall be deemed “HIGHLY CONFIDENTIAL – OUTSIDE

11

COUNSEL EYES ONLY.” After the Receiving Party has identified the documents it wants copied

12

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

13

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

14

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

15

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

16

COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE) to each page that

17

contains Protected Material. If only a portion or portions of the material on a page qualifies for

18

protection, the Producing Party also must clearly identify the protected portion(s) (e.g., by making

19

appropriate markings in the margins) and must specify, for each portion, the level of protection

20

being asserted.

21

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

22

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

23

proceeding, all protected testimony and specify the level of protection being asserted. When it is

24

impractical to identify separately each portion of testimony that is entitled to protection and it

25

appears that substantial portions of the testimony may qualify for protection, the Designating Party

26

may invoke on the record (before the deposition, hearing, or other proceeding is concluded) a right

27

to have up to 21 days to identify the specific portions of the testimony as to which protection is

28
-6ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

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

3

of this Stipulated Protective Order. Alternatively, a Designating Party may specify, at the deposition

4

or up to 21 days afterwards if that period is properly invoked, that the entire transcript shall be

5

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

6

“HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY.”

7

Parties shall give the other Parties notice if they reasonably expect a deposition, hearing or

8

other proceeding to include Protected Material so that the other Parties can ensure that only

9

authorized individuals who have signed the “Acknowledgment and Agreement to Be Bound”

10

(Exhibit A) are present at those proceedings. The use of a document as an exhibit at a deposition

11

shall not in any way affect its designation as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –

12

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

13

ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE.”

14

Transcripts containing Protected Material shall have an obvious legend on the title page that

15

the transcript contains Protected Material, and the title page shall be followed by a list of all pages

16

(including line numbers as appropriate) that have been designated as Protected Material and the

17

level of protection being asserted by the Designating Party. The Designating Party shall inform the

18

court reporter of these requirements. Any transcript that is prepared before the expiration of a 21-

19

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

20

CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” in its entirety unless otherwise agreed.

21

After the expiration of that period, the transcript shall be treated only as actually designated.

22

(c) for information produced in some form other than documentary and for any other tangible items,

23

that the Producing Party affix in a prominent place on the exterior of the container or containers in

24

which the information or item is stored the legend “CONFIDENTIAL” or “HIGHLY

25

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

26

COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”. If only a portion

27
28
-7ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

practicable, shall identify the protected portion(s) and specify the level of protection being asserted.
5.3

3

Inadvertent Failures to Designate. If timely corrected, an inadvertent failure to

4

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

5

right to secure protection under this Stipulated Protective Order for such material. Upon timely

6

correction of a designation, the Receiving Party must make reasonable efforts to assure that the

7

material is treated in accordance with the provisions of this Stipulated Protective Order.

8

///

9

6.

10

CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

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

11

confidentiality at any time. Unless a prompt challenge to a Designating Party’s confidentiality

12

designation is necessary to avoid foreseeable, substantial unfairness, unnecessary economic burdens,

13

or a significant disruption or delay of the litigation, a Party does not waive its right to challenge a

14

confidentiality designation by electing not to mount a challenge promptly after the original

15

designation is disclosed.

16

6.2

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

17

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

18

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

19

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

20

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

21

begin the process by conferring directly (in voice to voice dialogue; other forms of communication

22

are not sufficient) within 14 days of the date of service of notice. In conferring, the Challenging

23

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

24

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

25

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

26

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

27
28
-8ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

unwilling to participate in the meet and confer process in a timely manner.
6.3

3

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

4

intervention, the Designating Party shall file and serve a motion to retain confidentiality under Civil

5

Local Rule 7 (and in compliance with Civil Local Rule 79-5, if applicable) within 21 days of the

6

initial notice of challenge or within 14 days of the Parties agreeing that the meet and confer process

7

will not resolve their dispute, whichever is earlier. Each such motion must be accompanied by a

8

competent declaration affirming that the movant has complied with the meet and confer

9

requirements imposed in the preceding paragraph. Failure by the Designating Party to make such a

10

motion including the required declaration within 21 days (or 14 days, if applicable) shall

11

automatically waive the confidentiality designation for each challenged designation. In addition, the

12

Challenging Party may file a motion challenging a confidentiality designation at any time if there is

13

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

14

portions thereof. Any motion brought pursuant to this provision must be accompanied by a

15

competent declaration affirming that the movant has complied with the meet and confer

16

requirements imposed by the preceding paragraph.
The burden of persuasion in any such challenge proceeding shall be on the Designating

17
18

Party. Frivolous challenges and those made for an improper purpose (e.g., to harass or impose

19

unnecessary expenses and burdens on other parties) may expose the Challenging Party to sanctions.

20

Unless the Designating Party has waived the confidentiality designation by failing to file a motion to

21

retain confidentiality as described above, all Parties shall continue to afford the material in question

22

the level of protection to which it is entitled under the Producing Party’s designation until the court

23

rules on the challenge.

24

7.

25

ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

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

26

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

27

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

28
-9ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

the categories of persons and under the conditions described in this Stipulated Protective Order.

2

When the litigation has been terminated, a Receiving Party must comply with the provisions of

3

section 15 below (FINAL DISPOSITION).

4

Protected Material must be stored and maintained by a Receiving Party at a location and in a

5

secure manner that ensures that access is limited to the persons authorized under this Stipulated

6

Protective Order. Electronic Protected Material digitally stored for retrieval by the Receiving Party

7

shall be stored in a manner that requires password protection for access thereto.

8
9
10
11

7.2

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

by the court or permitted in writing by the Designating Party, a Receiving Party may disclose any
information or item designated “CONFIDENTIAL” only to:
(a) (i) the Receiving Party’s Outside Counsel of Record in this action, as well as (ii)

12

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

13

information for this litigation and who have signed the “Acknowledgment and Agreement to Be

14

Bound” that is attached hereto as Exhibit A;

15

(b) the officers, directors, and employees (including House Counsel) of the Receiving

16

Party to whom disclosure is reasonably necessary for this litigation and who have signed the

17

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

18

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

19

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

20

to Be Bound” (Exhibit A);

21

(d) the court and its personnel;

22

(e) court reporters and their staff, professional jury or trial consultants, and

23

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

24

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

25

(f) during their depositions, witnesses in the action to whom disclosure is reasonably

26

necessary and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A),

27

unless otherwise agreed by the Designating Party or ordered by the court. Pages of transcribed

28
-10ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

deposition testimony or exhibits to depositions that reveal Protected Material must be separately

2

bound by the court reporter and may not be disclosed to anyone except as permitted under this

3

Stipulated Protective Order.
(g) the author or recipient of a document containing the information or a custodian or

4
5
6

other person who otherwise possessed or knew the information.
7.3

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

7

Information or Items. Unless otherwise ordered by the court or permitted in writing by the

8

Designating Party, a Receiving Party may disclose any information or item designated “HIGHLY

9

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” only to:

10

(a) (i) the Receiving Party’s Outside Counsel of Record in this action, as well as (ii)

11

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

12

information for this litigation and who have signed the “Acknowledgment and Agreement to Be

13

Bound” that is attached hereto as Exhibit A;

14

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

15

competitive decision-making, (2) to whom disclosure is reasonably necessary for this litigation, (3)

16

who has signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and (4) as to

17

whom the procedures set forth in paragraph 7.4(a)(1), below, have been followed;

18

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

19

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

20

A), and (3) as to whom the procedures set forth in paragraph 7.4(a)(2), below, have been followed;

21

(d) the court and its personnel;

22

(e) court reporters and their staff, professional jury or trial consultants, and

23

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

24

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

25
26

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

27
28
-11ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

7.4

Disclosure of “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY”

2

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

3

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

4

disclose any information or item designated “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL

5

EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” only to:

6

(a) (i) the Receiving Party’s Outside Counsel of Record in this action, as well as (ii)

7

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

8

information for this litigation and who have signed the “Acknowledgment and Agreement to Be

9

Bound” that is attached hereto as Exhibit A;

10

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

11

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

12

A), and (3) as to whom the procedures set forth in paragraph 7.5(a)(2), below, have been followed;

13

(c) the court and its personnel;

14

(d) court reporters and their staff, professional jury or trial consultants, and

15

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

16

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

17
18
19

(e) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.
7.5 Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL –

20

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

21

ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items to Designated

22

House Counsel or Experts.

23
(a)(1) Unless otherwise ordered by the court or agreed to in writing by the
24
Designating Party, a Party that seeks to disclose to Designated House Counsel any information or
25

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

26
pursuant to paragraph 7.3(b) first must make a written request to the Designating Party that (1) sets
27
forth the full name of the Designated House Counsel and the city and state of his or her residence,
28
-12ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

and (2) describes the Designated House Counsel’s current and reasonably foreseeable future primary

2

job duties and responsibilities in sufficient detail to determine if such Designated House Counsel is

3

involved, or may become involved, in any competitive decision-making.1
(a)(2) Unless otherwise ordered by the court or agreed to in writing by the

4
5

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

6

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

7

ONLY” or “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” or “HIGHLY

8

CONFIDENTIAL – SOURCE CODE”] pursuant to paragraph 7.3(c) or 7.4(b) first must make a

9

written request to the Designating Party that (1) identifies the general categories of “HIGHLY

10

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

11

COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” information that

12

the Receiving Party seeks permission to disclose to the Expert, (2) sets forth the full name of the

13

Expert and the city and state of his or her primary residence, (3) attaches a copy of the Expert’s

14

current resume, (4) identifies the Expert’s current employer(s), (5) identifies each person or entity

15

from whom the Expert has received compensation or funding for work in his or her areas of

16

expertise or to whom the Expert has provided professional services, including in connection with a

17

litigation, at any time during the preceding five years,2 and (6) identifies (by name and number of

18

the case, filing date, and location of court) any litigation in connection with which the Expert has

19

offered expert testimony, including through a declaration, report, or testimony at a deposition or

20

trial, during the preceding five years.

21

(b) A Party that makes a request and provides the information specified in the

22

preceding respective paragraphs may disclose the subject Protected Material to the identified

23
24
25
26
27
28

1

It may be appropriate in certain circumstances to require any Designated House Counsel who
receives “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information pursuant to this
Order to disclose any relevant changes in job duties or responsibilities prior to final disposition of
the litigation to allow the Designating Party to evaluate any later-arising competitive decisionmaking responsibilities.
2
If the Expert believes any of this information is subject to a confidentiality obligation to a thirdparty, then the Expert should provide whatever information the Expert believes can be disclosed
without violating any confidentiality agreements, and the Party seeking to disclose to the Expert
shall be available to meet and confer with the Designating Party regarding any such engagement.
-13ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

Designated House Counsel or Expert, as the case may be, unless, within 14 days of delivering the

2

request, the Party receives a written objection from the Designating Party. Any such objection must

3

set forth in detail the grounds on which it is based.
(c) A Party that receives a timely written objection must meet and confer with the

4
5

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

6

within seven days of the written objection. If no agreement is reached, the Party seeking to make the

7

disclosure to Designated House Counsel or the Expert, as the case may be, may file a motion as

8

provided in Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5, if applicable) seeking

9

permission from the court to do so. Any such motion must describe the circumstances with

10

specificity, set forth in detail the reasons why the disclosure to Designated House Counsel or the

11

Expert, as the case may be, is reasonably necessary, assess the risk of harm that the disclosure

12

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

13

any such motion must be accompanied by a competent declaration describing the Parties’ efforts to

14

resolve the matter by agreement (i.e., the extent and the content of the meet and confer discussions)

15

and setting forth the reasons advanced by the Designating Party for its refusal to approve the

16

disclosure.
In any such proceeding, the Party opposing disclosure to Designated House Counsel or the

17
18

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

19

the safeguards proposed) outweighs the Receiving Party’s need to disclose the Protected Material to

20

its Designated House Counsel or Expert.

21

8.

PROSECUTION BAR

22
Absent written consent from the Producing Party, any individual who reviews technical
23
24
25

materials designated as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or
“HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE” information shall not be involved in the prosecution of

26
patents or patent applications concerning the subject matter of the technical document that is not
27
publicly known or otherwise available, and the patent asserted in this action and any patent or
28
-14ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

application claiming priority to or otherwise related to the patent asserted in this action, before any

2

foreign or domestic agency, including the United States Patent and Trademark Office (“the Patent

3

Office”). For purposes of this paragraph, “prosecution” includes directly or indirectly drafting,

4

amending, advising, or otherwise affecting the scope or maintenance of patent claims.3 To avoid any

5

doubt, “prosecution” as used in this paragraph does not include representing the patent owner or a

6

challenger or any other party in a challenge to the validity of the patent-in-suit before a domestic or

7

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

8

partes review), so long as such representation does not involve the drafting or amendment of claims.

9

This Prosecution Bar shall begin when said “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

10

ONLY” or “HIGHLY CONFIDENTIAL – OUTSIDE COUNSEL EYES ONLY” or “HIGHLY

11

CONFIDENTIAL – SOURCE CODE” information is first reviewed by the affected individual and

12

shall end two (2) years after final termination of this action.4

13

9.

SOURCE CODE
(a)

14

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

15

Producing Party may designate source code as “HIGHLY CONFIDENTIAL - SOURCE CODE” if

16

it comprises or includes confidential, proprietary or trade secret source code.
(b)

17

Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE

18

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

19

OUTSIDE COUNSEL EYES ONLY” information including the Prosecution Bar set forth in

20

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

21

OUTSIDE COUNSEL EYES ONLY” information may be disclosed, as set forth in Paragraphs 7.4

22

and 7.5, with the exception of Designated House Counsel.

23
24
25
26
27
28

3
4

Prosecution includes, for example, original prosecution, reissue and reexamination proceedings.
Alternative: It may be appropriate for the Prosecution Bar to apply only to individuals who receive
access to another Party’s “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or
“HIGHLY CONFIDENTIAL –OUTSIDE COUNSEL EYES ONLY” or “HIGHLY
CONFIDENTIAL – SOURCE CODE” technical or source code information pursuant to this Order,
such as under circumstances where one or more Parties is not expected to produce “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – OUTSIDE
COUNSEL EYES ONLY” information that is technical in nature or “HIGHLY CONFIDENTIAL –
SOURCE CODE” information.
-15ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

(c)

1

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

2

in a format and with tools through which it could be reasonably reviewed and searched during

3

normal business hours or other mutually agreeable times at a mutually agreed-upon location that is

4

reasonably convenient for the Receiving Party and any Experts to whom the source code may be

5

disclosed. The source code shall be made available for inspection on a secured computer in a

6

secured room without Internet access or network access to other computers, and the Receiving Party

7

shall not copy, remove, or otherwise transfer any portion of the source code onto any recordable

8

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

9

Receiving Party’s representatives during any source code review, but only to ensure that there is no

10

unauthorized recording, copying, or transmission of the source code.5
(d)

11

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

12

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

13

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

14

reviewing the source code other than electronically as set forth in paragraph (c) in the first instance.

15

The Producing Party shall provide all such source code in paper form including bates numbers and

16

the label “HIGHLY CONFIDENTIAL - SOURCE CODE.” The Producing Party may challenge the

17

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

18

timeframes set forth in Paragraph 6 whereby the Producing Party is the “Challenging Party” and the

19

Receiving Party is the “Designating Party” for purposes of dispute resolution.
(e)

20

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

21

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

22

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

23

Receiving Party shall not create any electronic or other images of the paper copies and shall not

24

convert any of the information contained in the paper copies into any electronic format, except as

25

provided herein. The Receiving Party shall only make additional paper or electronic copies if such

26
27

5

The Receiving Party shall keep a log indicating the names of any individuals inspecting the source
code and date and time of each such individual’s initial inspection, and the names of any individuals
to whom paper copies of portions of source code are provided.

28
-16ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

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

3

preparation of its case. Any paper copies used during a deposition shall be retrieved by the

4

Producing Party at the end of each day and must not be given to or left with a court reporter or any

5

other unauthorized individual.

6
7
8

10.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER
LITIGATION

9

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

10
11

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

12

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

13

OUTSIDE COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” that

14

Party must:
(a) promptly notify in writing the Designating Party. Such notification shall include a

15
16

copy of the subpoena or court order;
(b) promptly notify in writing the party who caused the subpoena or order to issue in

17
18

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

19

Stipulated Protective Order. Such notification shall include a copy of this Stipulated Protective

20

Order; and
(c) cooperate with respect to all reasonable procedures sought to be pursued by the

21
22

Designating Party whose Protected Material may be affected.6

23

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

24

order shall not produce any information designated in this action as “CONFIDENTIAL” or

25

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

26
27
28

6

The purpose of imposing these duties is to alert the interested parties to the existence of this
Protective Order and to afford the Designating Party in this case an opportunity to try to protect its
confidentiality interests in the court from which the subpoena or order issued.
-17ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

OUTSIDE COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” before

2

a determination by the court from which the subpoena or order issued, unless the Party has obtained

3

the Designating Party’s permission. The Designating Party shall bear the burden and expense of

4

seeking protection in that court of its confidential material – and nothing in these provisions should

5

be construed as authorizing or encouraging a Receiving Party in this action to disobey a lawful

6

directive from another court.

7

///

8

11.

9
10

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED IN THIS
LITIGATION
(a)

The terms of this Stipulated Protective Order are applicable to information

11

produced by a Non-Party in this action and designated as “CONFIDENTIAL” or “HIGHLY

12

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

13

COUNSEL EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”. Such information

14

produced by Non-Parties in connection with this litigation is protected by the remedies and relief

15

provided by this Stipulated Protective Order. Nothing in these provisions should be construed as

16

prohibiting a Non-Party from seeking additional protections.

17

(b)

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

18

Non-Party’s confidential information in its possession, and the Party is subject to an agreement with

19

the Non-Party not to produce the Non-Party’s confidential information, then the Party shall:
1. promptly notify in writing the Requesting Party and the Non-Party that some

20
21

or all of the information requested is subject to a confidentiality agreement with a Non-Party;
2. promptly provide the Non-Party with a copy of the Stipulated Protective

22
23

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

24

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

25
26
(c)

If the Non-Party fails to object or seek a protective order from this court

27
within 14 days of receiving the notice and accompanying information, the Receiving Party may
28
-18ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

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

2

Party timely seeks a protective order, the Receiving Party shall not produce any information in its

3

possession or control that is subject to the confidentiality agreement with the Non-Party before a

4

determination by the court.7 Absent a court order to the contrary, the Non-Party shall bear the

5

burden and expense of seeking protection in this court of its Protected Material.

6

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL
If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed Protected

7
8

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

9

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

10

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

11

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

12

terms of this Stipulated Protective Order, and (d) request such person or persons to execute the

13

“Acknowledgment and Agreement to Be Bound” that is attached hereto as Exhibit A.

14

13.

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE PROTECTED

15

MATERIAL

16

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

17

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

18

Receiving Parties are those set forth in Federal Rule of Civil Procedure 26(b)(5)(B).8 If information

19

produced in discovery is subject to a claim of privilege or of protection as trial-preparation material,

20
21
22
23
24
25
26
27
28

7

The purpose of this provision is to alert the interested parties to the existence of confidentiality
rights of a Non-Party and to afford the Non-Party an opportunity to protect its confidentiality
interests in this court.
8
Alternative: The Parties may agree that the recipient of an inadvertent production may not
“sequester” or in any way use the document(s) pending resolution of a challenge to the claim of
privilege or other protection to the extent it would be otherwise allowed by Federal Rule of Civil
Procedure 26(b)(5)(B) as amended in 2006. This could include a restriction against “presenting” the
document(s) to the court to challenge the privilege claim as may otherwise be allowed under Rule
26(b)(5)(B) subject to ethical obligations.
An alternate provision could state: “If information is produced in discovery that is subject to a claim
of privilege or of protection as trial-preparation material, the party making the claim may notify any
party that received the information of the claim and the basis for it. After being notified, a party
must promptly return or destroy the specified information and any copies it has and may not
sequester, use or disclose the information until the claim is resolved. This includes a restriction
against presenting the information to the court for a determination of the claim.”
-19ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

the Party making the claim may notify any Party that received the information of the claim and the

2

basis for it. After being notified, a Party must promptly return, sequester, or destroy the specified

3

information and any copies it has; must not use or disclose the information until the claim is

4

resolved; must take reasonable steps to retrieve the information if the Party disclosed it before being

5

notified; and may promptly present the information to the court under seal for a determination of the

6

claim. This provision is not intended to modify whatever procedure may be established in an e-

7

discovery order that provides for production without prior privilege review. Pursuant to Federal

8

Rule of Evidence 502(d) and (e), insofar as the Parties reach an agreement on the effect of

9

disclosure of a communication or information covered by the attorney-client privilege or work

10

product protection, the Parties may incorporate their agreement in the stipulated protective order

11

submitted to the court.

12

14.

13
14
15

MISCELLANEOUS
14.1

Right to Further Relief. Nothing in this Stipulated Protective Order abridges the right

of any person to seek its modification by the court in the future.
14.2

Right to Assert Other Objections. By stipulating to the entry of this Stipulated

16

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

17

producing any information or item on any ground not addressed in this Stipulated Protective Order.

18

Similarly, no Party waives any right to object on any ground to use in evidence of any of the

19

material covered by this Protective Order.

20

14.3

[Intentionally Left Blank]

21

14.4

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

22

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

23

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

24

Protected Material must comply with Civil Local Rule 79-5. Protected Material may only be filed

25

under seal pursuant to a court order authorizing the sealing of the specific Protected Material at

26

issue. Pursuant to Civil Local Rule 79-5, a sealing order will issue only upon a request establishing

27

that the Protected Material at issue is privileged, protectable as a trade secret, or otherwise entitled

28
-20ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

to protection under the law. If a Receiving Party's request to file Protected Material under seal

2

pursuant to Civil Local Rule 79-5(e) is denied by the court, then the Receiving Party may file the

3

Protected Material in the public record pursuant to Civil Local Rule 79-5(e)(2) unless otherwise

4

instructed by the court.

5

15.

FINAL DISPOSITION

6

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

7

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

8

a nonrecoverable manner. As used in this subdivision, “all Protected Material” includes all copies,

9

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

10

Protected Material. Whether the Protected Material is returned or destroyed, the Receiving Party

11

must submit a written certification to the Producing Party (and, if not the same person or entity, to

12

the Designating Party) by the 60-day deadline that (1) identifies (by category, where appropriate) all

13

the Protected Material that was returned or destroyed and (2) affirms that the Receiving Party has

14

not retained any copies, abstracts, compilations, summaries or any other format reproducing or

15

capturing any of the Protected Material. Notwithstanding this provision, Counsel are entitled to

16

retain an archival copy of all pleadings, motion papers, trial, deposition, and hearing transcripts,

17

legal memoranda, correspondence, deposition and trial exhibits, expert reports, attorney work

18

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

19

Any such archival copies that contain or constitute Protected Material remain subject to this

20

Protective Order as set forth in Section 4 (DURATION).

21

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.
HOGE, FENTON, JONES AND APPEL, INC.

22
23
24
25
26
27

DATED: ________________________

___/Stephanie O. Sparks/________________
Stephanie O. Sparks
Shella Deen
Crystal N. Riggins
Justine M. Cannon
Attorneys for Plaintiff and Counter-Defendant
dpiX LLC

28
-21ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

PREBEG, FAUCETT & ABBOT PLLC

2
3

DATED: ________________________

4
5
6

____/Matthew J. M. Prebeg/_______________
Matthew J. M. Prebeg, Ph.D
Matthew S. Compton, Jr.
Stephen W. Abbott
Attorneys for Defendant and Counterclaimant
Yieldboost Tech, Inc., and Defendant Kyo Young
Chung

7
8
SUSMAN GODFREY L.L.P.

9
10

DATED: ________________________

11
12
13

____/Kalpana Srinivasan/__________________
Kalpana Srinivasan
Max L. Tribble, Jr.
Attorneys for Defendant and Counterclaimant
Yieldboost Tech, Inc., and Defendant Kyo Young
Chung

14
15

PURSUANT TO STIPULATION, IT IS SO ORDERED.

16
17

DATED: September 11, 2015

_____________________________________
Honorable Jon S. Tigar
United States District Court Judge

18
19
20
21
22
23
24
25
26
27
28
-22ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST

1

EXHIBIT A

2

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND
I, _____________________________ [print or type full name], of _________________

3
4

[print or type full address], declare under penalty of perjury that I have read in its entirety and

5

understand the Stipulated Protective Order that was issued by the United States District Court for

6

the Northern District of California on [date] in the case of dpiX LLC v. Yieldboost Tech, Inc., et al.,

7

Case No. 3:14-cv-05382-JST, in the United States District Court for the Northern District of

8

California, San Francisco Division. I agree to comply with and to be bound by all the terms of this

9

Stipulated Protective Order and I understand and acknowledge that failure to so comply could

10

expose me to sanctions and punishment in the nature of contempt. I solemnly promise that I will not

11

disclose in any manner any information or item that is subject to this Stipulated Protective Order to

12

any person or entity except in strict compliance with the provisions of this Stipulated Protective

13

Order.

14

I further agree to submit to the jurisdiction of the United States District Court for the

15

Northern District of California for the purpose of enforcing the terms of this Stipulated Protective

16

Order, even if such enforcement proceedings occur after termination of this action.

17

I hereby appoint __________________________ [print or type full name] of

18

_______________________________________ [print or type full address and telephone number]

19

as my California agent for service of process in connection with this action or any proceedings

20

related to enforcement of this Stipulated Protective Order.

21
22

Date: _________________________________

23

City and State where sworn and signed: _________________________________

24

Printed name: ______________________________
[printed name]

25
26

Signature: __________________________________
[signature]

27
28
-23ORDER APPROVING STIPULATED PROTECTIVE ORDER

3:14-cv-05382-JST