Phoenix Technologies Ltd. v. VMware, Inc.

Filing 52

ORDER by Judge Haywood S. Gilliam, Jr. Granting 51 Stipulation REQUEST FOR ENTRY OF PROTECTIVE ORDER. (ndrS, COURT STAFF) (Filed on 9/14/2015)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

PHOENIX TECHNOLOGIES LTD., a
Delaware corporation

Case No. 5:15-cv-01414-HSG

Plaintiff,
vs.
VMWARE, INC., a Delaware Corporation
Defendant.

STIPULATED PROTECTIVE ORDER

1.

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

confidential, proprietary, or private information for which special protection from public
disclosure and from use for any purpose other than prosecuting this litigation may be
warranted. Accordingly, the Parties hereby stipulate to and petition the court to enter the
following Stipulated Protective Order. The Parties acknowledge that this Order does not
confer blanket protections on all disclosures or responses to discovery and that the
protection it affords from public disclosure and use extends only to the limited information
or items that are entitled to confidential treatment under the applicable legal principles.
The Parties further acknowledge, as set forth in Section 14.3, below, that this Stipulated
Protective Order does not entitle them to file confidential information under seal; Civil
Local Rule 79-5 sets forth the procedures that must be followed and the standards that will
be applied when a Party seeks permission from the court to file material under seal.
2.

DEFINITIONS
2.1

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

information or items under this Order.
2.2

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

it is generated, stored, or maintained) or any tangible thing that qualifies for protection
under Federal Rule of Civil Procedure 26(c).
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

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this matter and who
have been specifically identified and disclosed to the Producing Party pursuant to Section
7.4 below and whose current and reasonably foreseeable future job duties and

1.

responsibilities do not include support for or employment with a competitor of the other
Party. Each Party will identify its competitors on Exhibit B hereto for purposes of applying
the foregoing definition.
2.5

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

items that it produces in disclosures or in responses to discovery as “CONFIDENTIAL,”
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY
CONFIDENTIAL – SOURCE CODE.”
2.6

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

the medium or manner in which it is generated, stored, or maintained (including, among
other things, testimony, transcripts, and tangible things) that are produced or generated in
disclosures or responses to discovery in this matter.
2.7

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

pertinent to the litigation who (1) has been retained by a Party or its counsel to serve as an
expert witness or as a consultant in this action; (2) is not a current employee of a Party or a
Party’s competitor; and (3) at the time of retention, is not anticipated to become an
employee of a Party or of a Party’s competitor. Each Party will identify its competitors on
Exhibit B hereto for purposes of applying the foregoing definition.
2.8

“HIGHLY

CONFIDENTIAL

–

ATTORNEYS’

EYES

ONLY”

Information or Items: extremely sensitive “Confidential Information or Items,” disclosure
of which to another Party or Non-Party would create a substantial risk of serious harm that
could not be avoided by less restrictive means.
2.9

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:

extremely sensitive “Confidential Information or Items” representing computer code,
including modifications thereto or derivatives thereof, and associated comments and
revision histories, formulas, engineering specifications, or schematics that define or

2.

otherwise describe in detail the algorithms or structure of software or hardware designs,
disclosure of which to another Party or Non-Party would create a substantial risk of serious
harm that could not be avoided by less restrictive means.
2.10

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

otherwise identified attorneys, including Lauren Segal. House Counsel does not include
Outside Counsel of Record or any other outside counsel.
2.11

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

other legal entity not named as a Party to this action.
2.12

Outside Counsel of Record:

attorneys who are not employees or

consultants of a Party to this action but are retained to represent or advise a Party to this
action and have appeared in this action on behalf of that Party or are affiliated with a law
firm that has appeared on behalf of that Party. The current counsel of record are as follows:


2.13

Morrison & Foerster LLP
Cooley LLP

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). Except as otherwise provided herein, this specifically excludes any
persons, associations of persons, firms, partnerships, corporations (including parent
corporations), or other entities, that may have an interest—whether financial or
non-financial—in the subject matter or outcome of these proceedings, but is not a named
Party to this action.
2.14

Producing Party:

a Party or Non-Party that produces Disclosure or

Discovery Material in this action.
2.15
services

Professional Vendors: persons or entities that provide litigation support

(e.g.,

photocopying,

videotaping,

3.

translating,

preparing

exhibits

or

demonstrations, and organizing, storing, or retrieving data in any form or medium),
e-discovery services (e.g., contract attorneys), and their employees and subcontractors.
2.16

Protected Material: any Disclosure or Discovery Material that is designated

as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,”
or “HIGHLY CONFIDENTIAL – SOURCE CODE.”
2.17

Receiving Party: a Party that receives Disclosure or Discovery Material

from a Producing Party.
3.

SCOPE
The protections conferred by this Stipulation and Order cover not only Protected

Material (as defined above), but also (1) any information copied or extracted from
Protected Material; (2) all copies, excerpts, summaries, or compilations of Protected
Material; and (3) any testimony, conversations, or presentations by Parties or their Counsel
that might reveal Protected Material.

However, the protections conferred by this

Stipulation and Order do not cover the following information: (a) any information that is in
the public domain at the time of disclosure to a Receiving Party or becomes part of the
public domain after its disclosure to a Receiving Party as a result of publication not
involving a violation of this Order, including becoming part of the public record through
trial or otherwise; (b) any information known to the Receiving Party prior to the disclosure
(for the sake of clarity, information previously known to the Receiving Party will remain
subject to any confidentiality restrictions otherwise relating to any preexisting
confidentiality restriction) or obtained by the Receiving Party after the disclosure from a
source who obtained the information lawfully and under no obligation of confidentiality to
the Designating Party; and (c) information that the Receiving Party can show by written
record was independently developed by it after the time of disclosure by personnel who did
not have access to the Producing Party’s Confidential Information. Any use of Protected

4.

Material at trial (including source code) shall be governed by a separate agreement or
order.
4.

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

imposed by this Order shall remain in effect until a Designating Party agrees otherwise in
writing or a court order otherwise directs. Final disposition shall be deemed to be the later
of (1) dismissal of all claims and defenses in this action, with or without prejudice; and (2)
final judgment herein after the completion and exhaustion of all appeals, rehearings,
remands, trials, or reviews of this action, including the time limits for filing any motions or
applications for extension of time pursuant to applicable law.
5.

DESIGNATING PROTECTED MATERIAL
5.1

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

Party or Non-Party that designates information or items for protection under this Order
must take care to limit any such designation to specific material that qualifies under the
appropriate standards. To the extent it is practical to do so, the Designating Party must
designate for protection only those parts of material, documents, items, or oral or written
communications that qualify – so that other portions of the material, documents, items, or
communications for which protection is not warranted are not swept unjustifiably within
the ambit of this Order.
Designations that are shown to be clearly unjustified or that have been made for an
improper purpose (e.g., to unnecessarily encumber or retard the case development process
or to impose unnecessary expenses and burdens on other Parties) expose the Designating
Party to sanctions.
If it comes to a Designating Party’s attention that information or items that it
designated for protection do not qualify for protection at all or do not qualify for the level

5.

of protection initially asserted, that Designating Party must promptly notify all other
Parties that it is withdrawing the mistaken designation.
5.2

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

Order (see, e.g., second paragraph of Section 5.2(a) below), or as otherwise stipulated or
ordered, Disclosure or Discovery Material that qualifies for protection under this Order
must be clearly so designated before the material is disclosed or produced.
Designation in conformity with this 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 affix the legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” to
each page that contains protected material, or, if not practicable, as otherwise agreed by the
Parties.
A Party or Non-Party that makes original documents or materials available for
inspection need not designate them for protection until after the inspecting Party has
indicated which material it would like copied and produced. During the inspection and
before the designation, all of the material made available for inspection shall be deemed
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” After the inspecting Party
has identified the documents it wants copied and produced, the Producing Party must
determine which documents, or portions thereof, qualify for protection under this Order.
Then, before producing the specified documents, the Producing Party must affix the
appropriate

legend

(“CONFIDENTIAL”

or

“HIGHLY

CONFIDENTIAL

–

ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”) to
each page that contains Protected Material, or, if not practicable, as otherwise agreed by the
Parties.

6.

(b)

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

Designating Party identifies on the record, before the close of the deposition, hearing, or
other proceeding, all protected testimony and specify the level of protection being asserted.
When it is impractical to identify separately each portion of testimony that is entitled to
protection and it appears that substantial portions of the testimony may qualify for
protection, the Designating Party may invoke on the record (before the deposition, hearing,
or other proceeding is concluded) a right to have up to thirty (30) days to identify the
specific portions of the testimony as to which protection is sought and to specify the level
of protection being asserted. Only those portions of the testimony that are appropriately
designated for protection within the thirty (30) days shall be covered by the provisions of
this Stipulated Protective Order. Alternatively, a Designating Party may specify, at the
deposition or up to thirty (30) days afterwards, that the entire transcript shall be treated as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE.” If counsel for a Designating Party does
not designate a deposition transcript under this Stipulated Protective Order during the
deposition, the deposition transcript shall nevertheless be treated as (i) “HIGHLY
CONFIDENTIAL – SOURCE CODE,” if any document marked, introduced, or discussed
during the deposition was so designated, or (ii) “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY.” Such treatment shall last for 30 days following the release
of the transcript, during which time the Producing Party may elect to designate all or part of
the deposition transcript under this Stipulated Protective Order and if no such designation
is made, the entire deposition transcript shall be released from any automatic designation.
In the event a deposition is released from automatic designation, any documents marked as
exhibits in the deposition that were previously designated as Protected Material will retain
such designation and continue to be treated in accordance with the terms of this Protective

7.

Order. The use of a document as an exhibit at a deposition shall not in any way affect its
designation.
Transcripts containing Protected Material shall have an obvious legend on the title
page that the transcript contains Protected Material, and the title page shall be followed by
a list of all pages (including line numbers as appropriate) that have been designated as
Protected Material and the level of protection being asserted by the Designating Party. The
Designating Party shall inform the court reporter of these requirements. Unless otherwise
agreed, any transcript that is prepared before the expiration of a 30-day period for
designation shall be treated during that period as if it had been designated as (i) “HIGHLY
CONFIDENTIAL – SOURCE CODE,” if any document marked, introduced, or discussed
during the deposition was so designated, or (ii) “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY.” After the expiration of the 30-day period, the transcript
shall be treated only as actually designated.
(c)

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

other tangible items, that the Producing Party affix in a prominent place on the exterior of
the container or containers in which the information or item is stored the legend
“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or
“HIGHLY CONFIDENTIAL – SOURCE CODE,” or, if not practicable, as otherwise
agreed by the Parties. If only a portion or portions of the information or item warrant
protection, the Producing Party, to the extent practicable, shall identify the protected
portion(s) and specify the level of protection being asserted.
5.3

Inadvertent Failures to Designate. Inadvertent and/or unintentional failure

to designate qualified information or items as “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” shall not be deemed a waiver in whole or in part of a claim for

8.

confidential treatment. Promptly upon learning of such inadvertent or unintentional failure
to designate, the Designating Party shall notify the Receiving Party of the proper
designation, at which time the Receiving Party shall treat all such information in
accordance with any revised designations.
6.

CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

Timing of Challenges.

confidentiality at any time.

Any Party may challenge a designation of

Unless a prompt challenge to a Designating Party’s

confidentiality designation is necessary to avoid foreseeable, substantial unfairness,
unnecessary economic burdens, or a significant disruption or delay of the litigation, a Party
does not waive its right to challenge a confidentiality designation by electing not to mount
a challenge promptly after the original designation is disclosed.
6.2

Meet and Confer.

The Challenging Party shall initiate the dispute

resolution process by providing written notice to the Designating Party of each designation
and the specific document or information it is challenging and describing the basis for each
challenge. To avoid ambiguity as to whether a challenge has been made, the written notice
must recite that the challenge to confidentiality is being made in accordance with this
specific paragraph of the Protective Order. The Parties shall attempt to resolve each
challenge in good faith and must begin the process by conferring directly within fourteen
(14) days of the date of service of notice. In conferring, the Challenging Party must explain
the basis for its belief that the confidentiality designation was not proper and must give the
Designating Party an opportunity to review the designated material, to reconsider the
circumstances, and, if no change in designation is offered, to explain the basis for the
chosen designation. A Challenging Party may proceed to the next stage of the challenge
process only if it has engaged in this meet and confer process first or establishes that the

9.

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

Judicial Intervention. If the Parties cannot resolve a challenge without

court intervention, the Designating Party shall file and serve a motion to retain
confidentiality under Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5, if
applicable) within 21 days of the initial notice of challenge or within 14 days of the Parties
agreeing that the meet and confer process will not resolve their dispute, whichever is
earlier.1 Each such motion must be accompanied by a competent declaration affirming that
the movant has complied with the meet and confer requirements imposed in the preceding
paragraph. Failure by the Designating Party to make such a motion including the required
declaration within 21 days (or 14 days, if applicable) shall automatically waive the
confidentiality designation for each challenged designation, unless there was good cause
for delay, in which case the Designating Party shall explain the bases for the delay in
addition to the above requirements. The burden of persuasion in any such challenge
proceeding shall be on the Designating Party.
Frivolous challenges and those made for an improper purpose (e.g., to harass or
impose unnecessary expenses and burdens on other Parties) may expose the Challenging
Party to sanctions.

Unless the Designating Party has waived the confidentiality

designation by failing to file a motion to retain confidentiality as described above, all
Parties shall continue to afford the material in question the level of protection to which it is
entitled under the Designating Party’s designation until the court rules on the challenge.

1

It may be appropriate in certain circumstances for the Parties to agree to shift the burden
to move on the Challenging Party after a certain number of challenges are made to avoid an
abuse of the process. The burden of persuasion would remain on the Designating Party.

10.

7.

ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

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

disclosed or produced by another Party or by a Non-Party in connection with this case only
for prosecuting, defending, or attempting to settle this litigation. Such Protected Material
may be disclosed only to the categories of persons and under the conditions described in
this Order. To the extent disclosure is needed to categories of persons other than those set
forth in this Order, the Parties shall meet and confer to discuss the conditions of such a
disclosure. When the litigation has been terminated, a Receiving Party must comply with
the provisions of Section 15 below (FINAL DISPOSITION).
Protected Material must be stored and maintained by a Receiving Party at a location
and in a secure manner2 that ensures that access is limited to the persons authorized under
this Order.
Nothing herein prevents a Producing Party from disclosing its own Protected
Material to any witness during his or her deposition, including witnesses who have refused
to sign the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and such
disclosure will not affect the confidentiality designation of the Protected Material.
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) the Receiving Party’s Outside Counsel of Record in this action, as well
as employees of said Outside Counsel of Record to whom it is reasonably necessary to
disclose the information for this litigation;

2

It may be appropriate under certain circumstances to require the Receiving Party to store
any electronic Protected Material in password-protected form.

11.

(b) the officers, directors and employees (as well as House Counsel) of the
Receiving Party to whom disclosure is reasonably necessary for this litigation and who
have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A);
(c) Experts (as defined in this Order) of the Receiving Party to whom
disclosure is reasonably necessary for this litigation and who have signed the
“Acknowledgment and Agreement to Be Bound” (Exhibit A);
(d) the court and its personnel;
(e) court reporters and their staff;
(f) Professional jury or trial consultants, mock jurors or focus group
participants, insurance representatives, and Professional Vendors to whom disclosure is
reasonably necessary for this litigation and who have signed the “Acknowledgment and
Agreement to Be Bound” (Exhibit A);
(g) during their depositions, or during preparation for their depositions,
witnesses in the action to whom disclosure is reasonably necessary. Witnesses who are
current employees of a Party shall sign the “Acknowledgment and Agreement to Be
Bound” (Exhibit A) prior to their depositions. A Party that intends to show
“CONFIDENTIAL” documents to a third-party witness must ask the witness to sign the
“Acknowledgment and Agreement to Be Bound,” unless previously signed by the
witness. If a Party objects to the disclosure of certain “CONFIDENTIAL” documents to a
third-party witness, on the ground that the witness is currently employed by a competitor of
the Party, the Party must notify the deposing Party at least seven (7) days before the date of
the witness’s deposition (or a reasonable time before the deposition if the objecting Party
receives less than fifteen (15) days’ notice of the deposition), of the categories of
“CONFIDENTIAL” documents or information it contends should not be shown to the
witness. If the Parties are unable to reach agreement on the scope of Protected Materials to

12.

be shown to the third-party witness, the Parties shall submit a joint submission to the Court
as provided in Paragraph 12 of the Court’s Standing Order and the Protected Materials in
dispute may not be shown to the third-party witness pending the resolution of the joint
submission. Pages of transcribed deposition testimony or exhibits to depositions that
reveal Protected Material must be separately bound by the court reporter and may not be
disclosed to anyone except as permitted under this Stipulated Protective Order; and
(h) the author or recipient of a document containing the information or a
custodian or other person who otherwise possessed or knew the information before the
initiation of this action.
7.3

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” 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 “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” only to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well
as employees of said Outside Counsel of Record to whom it is reasonably necessary to
disclose the information for this litigation;
(b) Designated House Counsel of the Receiving Party (1) to whom
disclosure is reasonably necessary for this litigation, (2) who has signed the
“Acknowledgment and Agreement to Be Bound” (Exhibit A), and (3) as to whom the

13.

procedures set forth in Paragraph 7.4 (a)(1), below, have been followed;3
(c) Experts (as defined in this Order) of the Receiving Party (1) to whom
disclosure is reasonably necessary for this litigation, (2) who have signed the
“Acknowledgment and Agreement to Be Bound” (Exhibit A), and (3) as to whom the
procedures set forth in paragraph 7.4(a)(2), below, have been followed;
(d) the court and its personnel;
(e) court reporters and their staff;
(f) Professional jury or trial consultants, mock jurors or focus group
participants, and Professional Vendors to whom disclosure is reasonably necessary for this
litigation and who have signed the “Acknowledgment and Agreement to Be Bound”
(Exhibit A);
(g) during their depositions, witnesses in the action, so long as such
witnesses authored or received the document before the initiation of this action, or are
current employees or consultants of the Producing Party, or were employed by or
consulting for the Producing Party at the time the document was created, unless otherwise
agreed by the Designating Party or ordered by the court. Witnesses who are current
employees of a Party shall sign the “Acknowledgment and Agreement to Be Bound”

3

In limited instances where a Party believes that a document should be seen by Outside
Counsel of Record only, the Producing Party must state so in writing and provide a copy of
the document to the Receiving Party’s Outside Counsel of Record. Within seven (7) days,
the Receiving Party’s Outside Counsel of Record must advise the Producing Party if it
agrees that the document may be produced with a “HIGHLY CONFIDENTIAL –
OUTSIDE ATTORNEYS’ EYES ONLY” designation. If the Parties agree to such a
designation, the document may not be disclosed pursuant to Section 7.3(b). If the
Receiving Party’s Outside Counsel of Record does not agree with the “HIGHLY
CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES ONLY” designation, then the
Producing Party can either withdraw that designation or raise the matter with the Court
pursuant to Section 6.3 of this Protective Order.

14.

(Exhibit A) prior to their depositions. A Party that intends to show “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” documents to a third-party witness
must ask the witness to sign the “Acknowledgment and Agreement to Be Bound,” unless
previously signed by the witness. If a Party objects to the disclosure of certain “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” documents to a witness, the Party
must notify the deposing Party at least seven (7) days before the date of the witness’s
deposition (or a reasonable time before the deposition if the objecting Party receives less
than fifteen (15) days’ notice of the deposition), of the particular categories of “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” documents or information it contends
should not be shown to the witness. If the Parties are unable to reach agreement on the
scope of Protected Materials to be shown to the witness, the Parties shall submit a joint
submission to the Court as provided in Paragraph 12 of the Court’s Standing Order and the
Protected Materials in dispute may not be shown to the witness pending the resolution of
the joint submission. Pages of transcribed deposition testimony or exhibits to depositions
that reveal Protected Material must be separately bound by the court reporter and may not
be disclosed to anyone except as permitted under this Stipulated Protective Order; and
(h) the author or recipient of a document containing the information or a
custodian or other person who otherwise possessed or knew the information before the
initiation of this action.
7.4

Procedures for Approving or Objecting to Disclosure of “HIGHLY

CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” Information or Items to Designated House Counsel or Experts.
(a) (1) Unless otherwise ordered by the court or agreed to in writing by the
Designating Party, a Party that seeks to disclose to Designated House Counsel (other than
those individuals expressly identified below) any information or item that has been

15.

designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” pursuant to
paragraph 7.3(b) first must make a written request to the Designating Party that (1) sets
forth the full name of the Designated House Counsel and the city and state of his or her
residence, (2) describes the Designated House Counsel’s current and reasonably
foreseeable future primary job duties and responsibilities in sufficient detail to determine
whether House Counsel is involved, or may become involved, in any competitive decision
making. Each Party is limited to no more than four (4) Designated House Counsel.
The Parties need not follow the procedure in Section 7.4(a)(1) above for the
following individuals identified as Designated House Counsel:


Designated House Counsel for Phoenix will be Lauren Segal.4



Designated House Counsel for VMware will be Brooks Beard.
(2) Unless otherwise ordered by the court or agreed to in writing by the

Designating Party, a Party that seeks to disclose to an Expert (as defined in this Order) any
information or item that has been designated “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE”
pursuant to paragraph 7.3(c) first must make a written request to the Designating Party that
(1) sets forth the full name of the Expert and the city and state of his or her primary
residence; (2) attaches a copy of the Expert’s current resume; (3) identifies the Expert’s
current employer(s); (4) identifies each person or entity from whom the Expert has
received compensation or funding for work in his or her areas of expertise or to whom the
Expert has provided professional services, including in connection with a litigation, at any

4

Where House Counsel or Outside Counsel of Record for Phoenix believes it is reasonably
necessary to disclose certain documents designated as “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” to Cindy Lopez, counsel will identify such documents in
writing, and the Parties will meet and confer.

16.

time during the preceding five years;5 and (5) identifies (by name and number of the case,
filing date, and location of court) any litigation in connection with which the Expert has
offered expert testimony, including through a declaration, report, or testimony at a
deposition or trial, during the preceding five years.
(b) A Party that makes a request and provides the information specified in
the preceding respective paragraphs may disclose the subject Protected Material to the
identified Designated House Counsel or Expert unless, within seven (7) days of delivering
the request, the Party receives a written objection from the Designating Party. Any such
objection must 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 Designating Party (through direct voice-to-voice dialogue) to try to resolve the
matter by agreement within seven (7) days of the written objection. If no agreement is
reached, the Party seeking to make the disclosure to Designated House Counsel or the
Expert may file a motion as provided in Civil Local Rule 7 (and in compliance with Civil
Local Rule 79-5, if applicable) seeking permission from the court to do so. Any such
motion must describe the circumstances with specificity, set forth in detail the reasons why
the disclosure to Designated House Counsel or the Expert is reasonably necessary, assess
the risk of harm that the disclosure would entail, and suggest any additional means that
could be used to reduce that risk. In addition, any such motion must be accompanied by a
competent declaration describing the Parties’ efforts to resolve the matter by agreement

5

If the Expert believes any of this information is subject to a confidentiality obligation to a
third party, 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.

17.

(i.e., the extent and the content of the meet and confer discussions) and setting forth the
reasons advanced by the Designating Party for its refusal to approve the disclosure.
In any such proceeding, the Party opposing disclosure to Designated House
Counsel or the Expert shall bear the burden of proving that the risk of harm that the
disclosure would entail (under the safeguards proposed) outweighs the Receiving Party’s
need to disclose the Protected Material to its Designated House Counsel or Expert.
8.

PROSECUTION BAR
Absent written consent from the Producing Party, any individual who reviews

“HIGHLY CONFIDENTIAL – SOURCE CODE” information shall not be involved in the
prosecution of patents or patent applications relating to the technology disclosed in
Protected Materials of a Party that the person reviewed or accessed. For purposes of this
paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or
otherwise affecting the scope or maintenance of patent claims during the original
prosecution of a patent or during any post-grant 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, any post-grant
proceedings). Nor does “prosecution” as used in this paragraph include participation by
such individual representing a patent-holder in a reissue protest, supplemental examination
proceeding, post-grant review, ex parte reexamination, or inter partes review, so long as
the proceeding is not initiated by the patent-holder itself for any of its own patents, and so
long as the individual has no involvement in and does not advise regarding drafting,
editing, approving or amending claim language. This Prosecution Bar shall begin when
access to “HIGHLY CONFIDENTIAL – SOURCE CODE” information is first received
by the affected individual and shall end twelve (12) months after final termination of this
action.

18.

9.

SOURCE CODE
(a)

To the extent production of source code becomes necessary in this

case, a Producing Party may designate source code as “HIGHLY CONFIDENTIAL –
SOURCE CODE” if it comprises or includes confidential, proprietary or trade secret
source code.
(b)

Protected Material designated as “HIGHLY CONFIDENTIAL –

SOURCE CODE” shall be subject to all of the protections afforded to “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information, and may be disclosed
only to the individuals to whom “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” information may be disclosed, as set forth in Paragraphs 7.3 and 7.4.
(c)

Any source code produced in discovery shall be made available for

inspection, in a format allowing it to be reasonably reviewed and searched, during normal
business hours (9:00 a.m. to 5:00 p.m. local time, Monday-Friday, excluding holidays) or
at other mutually agreeable times, at an office of the Producing Party’s counsel, or another
mutually agreed upon location. The code shall be made available upon seven (7) business
days’ notice of a first inspection and upon three (3) business days’ notice of subsequent
inspections (and other days and/or times upon reasonable request). The source code shall
be made available for inspection on a secured computer in a secured room without Internet
access or network access to other computers, and the Receiving Party shall not copy,
remove, or otherwise transfer any portion of the source code in any way, including copying
by handwriting or onto any recordable media or recordable device, except as explicitly
allowed.
The secured computer shall have the necessary technology and software to
allow for proper viewing, analysis, comparing and searching of the Code. If requested by
the Receiving Party, the Producing Party shall load any reasonable software analysis tools

19.

provided by the Receiving Party. The Receiving Party and its experts may need to utilize
certain automated forensic tools as part of the source code review procedure. Such tools
may be used to compare source code. The Parties will work together to agree on acceptable
forensic tools and procedures. The Receiving Party is responsible for complying with any
licensing terms for such software analysis and forensic tools, including paying for any
third-party costs or fees associated with providing those tools. If the Receiving Party is
technically unable to view any of the Code, the Receiving Party will notify the Producing
Party of the portions of Code that cannot be reviewed, and the Parties shall make a good
faith effort to meet and confer within one (1) business day of such notice in an attempt to
resolve the issue. The Receiving Party and its experts may need to load its own source
code onto the Producing Party’s secured computer as part of the source code review
procedure. If requested by the Receiving Party, the Producing Party shall load any source
code provided by the Receiving Party onto the secured computer and will treat such source
code as “HIGHLY CONFIDENTIAL – SOURCE CODE.” The Producing Party may
visually monitor the activities of the Receiving Party’s representatives during any source
code review, but only to ensure that there is no unauthorized recording, copying, or
transmission of the source code. Access to the secured computers with the source code
shall be limited to at most five (5) Experts of the Receiving Party who have clearance to
review such source code under Section 7 above. Any Experts who access source code of a
Producing Party shall be precluded from consulting with the Receiving Party for two years
thereafter concerning the ongoing or future development of any BIOS technology related
to the Receiving Party’s products.
(d)

The Receiving Party may request paper copies of limited portions of

source code, including source code comparison files showing any differences in the
Producing Party’s and Receiving Party’s source code as generated by a forensic tool, that

20.

are reasonably necessary for the preparation of court filings, pleadings, expert reports, or
other papers, or for deposition or trial, but shall not request paper copies for the purposes of
reviewing the source code other than electronically as set forth in paragraph (c) in the first
instance. The Producing Party shall provide all such source code in paper form including
bates numbers and the label “HIGHLY CONFIDENTIAL – SOURCE CODE.” The
Producing Party may challenge the amount of source code requested in hard copy form
pursuant to the dispute resolution procedure and timeframes set forth in Paragraph 6,
whereby the Producing Party is the “Challenging Party” and the Receiving Party is the
“Designating Party” for purposes of dispute resolution.
(e)

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

inspected any portion of the Producing Party’s source code in electronic or paper form.
The Receiving Party shall maintain all paper copies of any printed portions of the source
code in a secured, locked area. The Receiving Party shall not create any copy, including
handwritten, electronic, or other images of the paper copies and shall not convert any of the
information contained in the paper copies into any electronic format. The Receiving Party
shall only make additional paper copies if such additional copies are (1) necessary to
prepare court filings, pleadings, or other papers (including a testifying Expert’s expert
report), (2) necessary for deposition, or (3) otherwise necessary for the preparation of its
case. Any paper copies used during a deposition shall be retrieved by the Producing Party
at the end of each day and must not be given to or left with a court reporter or any other
unauthorized individual.
(f)

Notwithstanding the foregoing, an Expert reviewing the source code may

make hand-written notes identifying the portions of the source code for which the
Receiving Party may request paper copies under subsection (d) above. To the greatest
extent practicable, such notes will consist only of references to file names, line numbers,

21.

function names, or other information that does not consist of the actual contents of the
source code.
10.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN
OTHER LITIGATION
If a Party is served with a subpoena or a court order issued in other litigation that

compels disclosure of any information or items designated in this action as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE,” that Party must:
(a) promptly notify in writing the Designating Party. Such notification
shall include a copy of the subpoena or court order;
(b) promptly notify in writing the Party who caused the subpoena or order
to issue in the other litigation that some or all of the material covered by the subpoena or
order is subject to this Protective Order. Such notification shall include a copy of this
Stipulated Protective Order; and
(c) cooperate with respect to all reasonable procedures sought to be pursued
by the Designating Party whose Protected Material may be affected.
If the Designating Party timely seeks a protective order, the Receiving Party served
with the subpoena or court order shall not produce any information designated in this
action as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” before a determination by
the court from which the subpoena or order issued, unless the Receiving Party has obtained
the Designating Party’s permission. The Designating Party shall bear the burden and
expense of seeking protection in that court of its confidential material – and nothing in
these provisions should be construed as authorizing or encouraging a Receiving Party in
this action to disobey a lawful directive from another court.

22.

11.

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED
IN THIS LITIGATION
(a) The terms of this Order are applicable to information produced by a

Non-Party in this action and designated as “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE.” Such information produced by Non-Parties in connection with this
litigation is protected by the remedies and relief provided by this Order. Nothing in these
provisions should be construed as prohibiting a Non-Party from seeking additional
protections.
(b) In the event that a Party is required, by a valid discovery request, to
produce a Non-Party’s confidential information in its possession, and the Party is subject to
an agreement with 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 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 Order in this litigation, the relevant discovery request(s), and a
reasonably specific description of the information requested; and
3.

make the information requested available for inspection by

the Non-Party.
(c) Unless otherwise prescribed by the Non-Party, the Producing Party may
produce the Non-Party’s confidential information responsive to the discovery request if the
Non-Party fails to object or seek a protective order from this Court within fourteen (14)
days of receiving the notice and accompanying information. If the Non-Party timely seeks

23.

a protective order, the Receiving Party shall not produce any information in its possession
or control that is subject to the confidentiality agreement with the Non-Party before a
determination by the court. Absent a court order to the contrary, the Non-Party shall bear
the burden and expense of seeking protection in this court of its Protected Material.
12.

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

Protected Material to any person or in any circumstance not authorized under this
Stipulated Protective Order, the Receiving Party must immediately (a) notify in writing the
Designating Party of the unauthorized disclosures, (b) use its best efforts to retrieve all
unauthorized copies of the Protected Material, (c) inform the person or persons to whom
unauthorized disclosures were made of all the terms of this Order, and (d) secure the
agreement of the recipients not to further disseminate the Protected Materials in any form.
13.

INADVERTENT

PRODUCTION

OF

PRIVILEGED

OR

OTHERWISE

PROTECTED MATERIAL
In accordance with Federal Rule of Evidence 502(d), the attorney-client privilege
or work-product protection is not waived as a result of the disclosure of information in
connection with this litigation. Inadvertent and/or unintentional production of documents
or information subject to attorney-client privilege, work-product immunity, or any other
applicable privilege shall not constitute a waiver of, nor a prejudice to, any claim that such
or related material is privileged or protected by the work-product immunity or any other
applicable privilege, provided that the Producing Party notifies the Receiving Party in
writing promptly upon discovering that it has inadvertently produced such information.
Upon receiving such notice, the Receiving Party will take reasonable steps to immediately
return such information or documents, including all copies thereof, to the Producing Party.
Alternatively, the Receiving Party shall immediately confirm in writing that it has taken

24.

reasonable steps to permanently delete all electronic copies of such documents from
electronic records and to destroy all paper copies. If the Receiving Party has disclosed the
information to others before being notified of the claim of privilege or protection, the
Receiving Party must take reasonable steps to retrieve and return or destroy the disclosed
information. No use shall be made of such documents or information during deposition or
at trial, nor shall such documents or information be shown to anyone after the request that
they be returned. If a claim is disputed, the Receiving Party shall not use or disclose a
document or information for which a claim of privilege or immunity is made pursuant to
this paragraph for any purpose until the matter is resolved by agreement of the Parties or by
a decision of this court.
Nothing in this Stipulation shall require disclosure of material that a Party contends
is protected from disclosure by attorney-client privilege or the attorney work-product
immunity or any other applicable form of immunity. This shall not preclude any Party
from moving the court for an order directing the disclosure of such material.
14.

MISCELLANEOUS
14.1

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

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

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

Protective 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 Stipulated
Protective Order. Similarly, no Party waives any right to object on any ground to use in
evidence of any of the material covered by this Protective Order.
14.3

Filing Protected Material. Any Protected Material that is filed with the

Court shall be filed under seal and shall remain under seal until further order of the Court.
The filing Party must comply with Civil Local Rule 79-5 and any other applicable rules.

25.

Before disclosing Protected Material in an open courtroom at trial or other court
hearings in this case, a Party must provide notice to the Producing Party so that the
Producing Party has a reasonable opportunity to take appropriate action to prevent or limit
disclosure of the Protected Material in the open courtroom. The Producing Party bears the
burden of showing that the Court should prevent or limit disclosure of the Protected
Material in the open courtroom; otherwise, the Protected Material may be used in an open
courtroom at trial or other court hearings in this case without regard to the other provisions
in this Order. The Parties agree that the use of Protected Material at trial or other court
hearings in this case shall not constitute a waiver of or operate in prejudice to any claim of
confidentiality in the Protected Material. Where Protected Material may be revealed or
referred to in a question that will be put to a witness at trial upon oral examination or
Protected Material will be used as exhibits during the examination, the Producing Party
may request that the Court require that all persons in attendance who are not entitled access
to such Protected Material under this Order leave the courtroom until such line of inquiry is
complete.
15.

FINAL DISPOSITION
Within sixty (60) days after the final disposition of this action, as defined in

Paragraph 4, each Receiving Party must return all Protected Material to the Producing
Party or destroy such material. As used in this subdivision, “all Protected Material”
includes all copies, abstracts, compilations, summaries, reports, and any other format
reproducing or capturing any of the Protected Material. Whether the Protected Material is
returned or destroyed, the Receiving Party must submit a written certification to the
Producing Party (and, if not the same person or entity, to the Designating Party) by the
60-day deadline that (1) identifies (by category, where appropriate) all the Protected
Material that was returned or destroyed and (2) affirms that the Receiving Party has not

26.

retain any copi abstracts compilatio summar
ned
ies,
s,
ons,
ries, or any other forma reproducin
at
ng
or ca
apturing any of the Prote
ected Materi
ial. Notwith
hstanding th provision Counsel ar
his
n,
re
entitl to retain an archival copy of all pleadings, motion papers, trial, de
led
l
l
eposition, an
nd
e,
hearin transcript legal mem
ng
ts,
moranda, cor
rrespondence deposition and trial ex
n
xhibits, expe
ert
repor attorney work produc (including email), and consultant and expert w
rts,
ct
g
d
work produc
ct,
even if such mate
erials contain Protected Material, ex
n
xcept any co of source code, whic
opy
e
ch
d
yed. Any such archiv copies th contain or constitut
s
val
hat
te
shall be returned or destroy
ected Materi remain subject to th Protectiv Order as set forth in Section 4
ial
s
his
ve
Prote
(DUR
RATION). Nothing in th Protectiv Order sha require th Counsel f the Partie
N
his
ve
all
hat
for
es
search through th email archives to find every i
heir
a
instance wh
here an ema to or from
ail
m
Coun
nsel may att
tach Protect Material
ted
l.

Howeve unless it is an arch
er,
t
hival copy a
as

perm
mitted above, Protected Material sto
,
ored on a sh
hared drive, attorneys’ desktops, o
or
printe in hard co must be destroyed pursuant to t Section.
ed
opy,
e
p
this
IT IS SO STIPULATED THROUG COUNSEL OF RECOR
S
D,
GH
L
RD.

ED:
____________
_______ ____
___________
____________
___________
___
DATE ________
Attorney for Plaintif
ys
ff

DATE ________
ED:
____________
_______ ____
___________
____________
___________
___
Attorney for Defend
ys
dant
PURS
SUANT TO STIPULATIO IT IS SO ORDERED.
S
ON,

ED:
DATE 9/14/2015

___
____________
___________
____________
___
The Hon Haywood S Gilliam
n.
S.
United S
States District Judge
t

27.

EXHIBIT A
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

PHOENIX TECHNOLOGIES LTD., a
Delaware corporation

Case No. 5:15-cv-01414-HSG

Plaintiff,
vs.
VMWARE, INC., a Delaware Corporation
Defendant.

AGREEMENT AND ACKNOWLEDGEMENT TO BE BOUND
BY STIPULATED PROTECTIVE ORDER

I, __________________________________________________, declare that:
1. My present occupation (including job title) is
______________________________________________________________.
2. I am currently employed by
______________________________________________________________.
3. My business address is
______________________________________________________________.

1.

4. My present business relationship with Party _______________________ is
__________________________________________________________________.
5. I have received a copy of the Stipulated Protective Order in this action, and have
carefully read and understand its provisions.
6. I will comply with all provisions of the Stipulated Protective Order. I will not
disclose in any manner any information or item that is subject to this Stipulated Protective
Order to any person or entity, except in strict compliance with the provisions of this Order.
7. If applicable, I agree to take reasonable steps to return or destroy and certify
destruction of all materials designated under the Protective Order which come into my
possession, and documents or things which I have prepared relating thereto, to counsel for
the Party for whom I was employed or retained. I will do this immediately upon receiving
a request from the counsel for the Party for whom I was employed or retained or, in any
event, by no later than thirty days after I have been notified that litigation between the
Parties has ended.
8. I accept full responsibility for taking measures to ensure that staff members
working under my supervision comply with the terms of this Protective Order.
9. I hereby submit to the jurisdiction of the United States District Court for the
Northern District of California for the purpose of enforcement of this Protective Order.

I declare under penalty of perjury that the foregoing is true and correct.

NAME (print): ____________________________
SIGNATURE: ____________________________
DATE: _________________________________

2.

EXHIBIT B
Phoenix Competitors
American Megatrends Inc.
Insyde Software Corp.,
Nanjing Byosoft Co., Ltd.
Kunshan Byosoft Co., Ltd.

VMware Competitors
Microsoft
Citrix
Red Hat
Cisco
Amazon
Oracle
Nutanix
IBM
HP
BMC
VMTurbo
Nuage Networks
Google
Zerto
Veeam

1.