Avocent Huntsville LLC. v. ZPE Systems, Inc.

Filing 62

ORDER by Judge Kandis A. Westmore regarding parties' 59 1/5/18 Joint Discovery Letter Brief. (kawlc1, COURT STAFF) (Filed on 2/5/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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AVOCENT HUNTSVILLE, LLC,
Plaintiff,

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ORDER REGARDING 1/5/18 JOINT
LETTER RE: SCOPE OF PROTECTIVE
ORDER AND ENTRY OF
PROTECTIVE ORDER

v.
ZPE SYSTEMS, INC.,

Re: Dkt. No. 59

Defendant.

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United States District Court
Northern District of California

Case No. 3:17-cv-04319-WHO (KAW)

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On January 5, 2018, the parties filed a joint letter concerning the scope of the protective

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order. (Joint Letter, Dkt. No. 59.) ZPE did not believe that any changes to the interim protective

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order were necessary, while Avocent requested certain changes. Id. at 1. The parties agreed to all

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but two proposed modifications. Id.

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Upon review of the joint letter, the Court finds this matter suitable for resolution without

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oral argument pursuant to Civil Local Rule 7-1(b), and orders the parties to enter into a stipulated

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protective order consistent with this order.

DISCUSSION

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Specifically, the parties disagree with the provisions relating to non-party disclosures and
the scope of the prosecution bar. (Joint Letter at 1-2.)

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A.

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Avocent contends that, while the “interim protective order provides protection of

Provisions Relating to Non-Party Disclosures

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confidential materials produced by non-parties, non-parties today almost universally seek to

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preclude access to those materials by party employees, including in-house counsel.” (Joint Letter

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at 1.) ZPE disagrees with this statement and notes that Avocent has not provided any citations in

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support of its assertion. Id. Notwithstanding, ZPE argues that if the Court agrees with Avocent’s

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position that in-house counsel should not have access to third party confidential information, the

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preclusion should apply equally to party information. Id. As ZPE states, the model protective order

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does not distinguish between party and non-party information, and ZPE believes that this

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delineation may be difficult or impossible in practice. Id. at 1-2. The Court agrees.

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Accordingly, the Court orders that the parties modify the stipulated protective order to

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preclude in-house counsel from accessing both party and third-party highly confidential

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information.
B.

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Avocent seeks to eliminate the prosecution bar, while ZPE insists that the prosecution bar

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in paragraph 8 of the interim protective order be included. (Joint Letter at 2.) Avocent argues that

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United States District Court
Northern District of California

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the prosecution bar is unnecessary given that the two patents-in-suit were issued years ago, no

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related patent applications are pending, and Avocent’s trial counsel is not prosecuting any patent

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applications. Id. Should the undersigned disagree, Avocent argues that its trial counsel should not

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be precluded from full participation in any Inter Partes Review (“IPR”) proceeding before the

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U.S. Patent and Trademark Office based on “the mere possibility that its confidential information

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could be misused in an injurious manner.” (Joint Letter at 2-3.)

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Scope of the Prosecution Bar

ZPE objects on the grounds that “Avocent seeks to modify this Court’s model protective

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order in a manner that would permit its litigation counsel to not only participate in IPR

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proceedings but to amend claims during such proceedings, in order to tailor claims to ZPE’s

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product.” (Joint Letter at 3.) In fact, as ZPE provides, “the model protective order contemplated

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the exact activity Avocent now proposes, and the model order precludes litigation counsel from

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‘directly or indirectly drafting, amending, advising, or otherwise affecting the scope or

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maintenance of patent claims’ including in IPR proceedings. (Joint Letter at 3 (citing Model

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Protective Order at ¶ 8.)) Indeed, “the model protective order [sets] forth presumptively

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reasonable conditions regarding the treatment of highly confidential information.” Barnes &

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Noble, Inc. v. LSI Corp., 2012 WL 1029939, at *3 (N.D. Cal. Mar. 26, 2012). Courts in this

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district generally do not permit litigation counsel to amend the model order’s prosectution bar

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provisions. See, e.g., Shared Memory Graphics, LLC v. Apple, Inc., 2010 WL 4704420, at *3
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(N.D. Cal. Nov. 12, 2010). Despite Avocent’s protestations to the contrary, the undersigned finds

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no reason to depart from the model order.

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Accordingly, the parties shall stipulate to the language contained in paragraph 8 of the
Patent Local Rule 2-2 Interim Model Protective Order.

CONCLUSION

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In light of the foregoing, the parties are ordered to enter into a stipulated protective order
consistent with this order within 7 days.
IT IS SO ORDERED.
Dated: February 5, 2018
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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United States District Court
Northern District of California

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