Dominion Assets LLC v. Masimo Corporation et al

Filing 63

DISCOVERY ORDER re: DOCKET NO. 62. Signed by Judge Maria-Elena James on 12/16/2013. (cdnS, COURT STAFF) (Filed on 12/16/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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DOMINION ASSETS LLC,

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Case No. 12-cv-02773-CW (MEJ)

Plaintiff,
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DISCOVERY ORDER

v.

Re: Dkt. No. 62

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MASIMO CORPORATION, et al.,

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Defendants.

United States District Court
Northern District of California

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The Court is in receipt of the parties’ joint discovery dispute letter, filed December 13,

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2013. Dkt. No. 62. In the letter, Plaintiff Dominion Assets, LLC requests that the Court overrule

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Defendant Masimo Corporation’s objections to providing access to its source code1 to Plaintiff’s

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technical expert and proposed source code reviewers. On December 9, 2013, Masimo requested

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that Dominion’s experts (1) not be employed in a competing venture in the areas of Pulse

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Oximetry or the measuring of blood constituents for an unlimited period of time, and (2) not do

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any further research in those areas. Id. at 3. Masimo argues that its Rainbow SET® blood-

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constituent technology has not been replicated, and that at least one of Dominion’s experts, Dr.

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Causevic, has a prolific history of working on behalf of medical device companies adverse to

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Masimo. Jt. Ltr. at 6. Masimo states that it does not seek to restrict his work as an expert, but

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only designing, developing, or consulting regarding competing products. Id. Masimo contends

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that once Dr. Causevic and the others review the source code, they will then know how Rainbow

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SET® functions and it would be impossible for them to segregate that knowledge, if any of them

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Masimo’s Rainbow SET® is trade secret technology for the noninvasive measurement of blood
constituents, including total hemoglobin, oxygen content, carboxyhemoglobin, and
methemoglobin. Jt. Ltr. at 4.

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were then to consult or do research in this field in the future. Id.
In response, Dominion argues that its consultants are not engaging in development and

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design roles with any firm involved in the sale of products providing the non-invasive

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measurement of blood constituents. Id. at 3. Dominion further argues that substantial protections

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have been put in place to prevent copying Masimo’s code – the consultants have signed the

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protective order agreeing that all information to which they are given access is to be used only in

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connection with their work on this case. Id. Dominion further argues that Masimo’s demand for

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greater restriction is unreasonable and in excess of what is necessary to protect its trade secret, and

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that Masimo’s proposed language seems a thinly veiled attempt to prohibit Dr. Causevic from
working on any other case against Masimo, regardless of whether that case involves review of the

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United States District Court
Northern District of California

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same code as available here. Id. If the Court were inclined to grant Masimo’s request, Dominion

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submits that Masimo’s request should be limited to the following: (1) eliminating the proposed

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restriction on “researching” and limiting the scope of the restriction to participation in the “design

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or development” of pulse oximetry and measuring blood constituents products; and (2) limiting

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the term of the agreement to two years. Id.

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Upon review of the parties’ arguments, the Court finds that Mr. Causevic’s ongoing work

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and relationships with competitors in the field creates a risk of unintentional disclosure of

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Masimo’s highly confidential information. Further, Dominion has not shown that Mr. Causevic

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has unique knowledge that could not be found in another expert. Thus, there is a tangible risk that

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Mr. Causevic will not be able to separate the highly confidential information he gleans from

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reviewing Masimo’s source code, and this finding is not outweighed by a showing that he has

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expertise that other experts do not. Symantec Corp. v. Acronis Corp., 2012 WL 3582974, at *3

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(N.D. Cal. Aug. 20, 2012). However, the Court also recognizes that Masimo has been aware of

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Dr. Causevic’s role in this case at least since August 2013 and Dominion has spent thousands of

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dollars on Dr. Causevic’s services based on the understanding that he would be provided access to

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the code. Jt. Ltr. at 2-3. Accordingly, the Court GRANTS Masimo’s request for a protective

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order, but limited as follows: (1) eliminating the proposed restriction on “researching” and

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limiting the scope of the restriction to participation in the “design or development” of pulse
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oximetry and measuring blood constituents products; and (2) limiting the term of the agreement to

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six years.

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IT IS SO ORDERED.

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Dated: December 16, 2013
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______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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United States District Court
Northern District of California

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