DCG Systems, Inc v. Checkpoint Technologies, LLC

Filing 29

STIPULATED PROTECTIVE ORDER re 26 Stipulation filed by DCG Systems, Inc, Checkpoint Technologies, LLC. Signed by Judge Paul S. Grewal on October 31, 2011. (psglc1, COURT STAFF) (Filed on 11/1/2011)

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MARK E. MILLER (S.B. #130200) – [e-mail]
MICHAEL SAPOZNIKOW (S.B. #242640) – [e-mail]
ALEXANDER B. PARKER (S.B. #264705) – [e-mail]
O’MELVENY & MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, California 94111-3823
Telephone:
[phone]
Facsimile:
[phone]

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Attorneys for Plaintiff
DCG SYSTEMS, INC.
JOHN V. PICONE III (S.B. #187226) – [e-mail]
GARY H. RITCHEY (S.B. #136209) – [e-mail]
JENNIFER S. COLEMAN (S.B. #213210) – [e-mail]
HOPKINS & CARLEY A LAW CORPORATION
The Letitia Building
70 South First Street
San Jose, CA 95113
Mailing address:
P.O. Box 1469
San Jose, CA 95109-1469
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Defendant
CHECKPOINT TECHNOLOGIES, LLC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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DCG SYSTEMS, INC.,
Plaintiff,

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SAN JOSE DIVISION
Case No. 5:11-cv-03792-PSG
STIPULATED [PROPOSED]
PROTECTIVE ORDER

v.
JUDGE: HON. PAUL S. GREWAL
CHECKPOINT TECHNOLOGIES, LLC,
Defendant.

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STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

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1.

PURPOSES AND LIMITATIONS

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

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confidential, proprietary, or private information for which special protection may be warranted.

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Accordingly, the parties hereby stipulate to and petition the court to enter the following Stipulated

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Protective Order. The parties acknowledge that this Order does not confer blanket protections on

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

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

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under the applicable legal principles. The parties further acknowledge, as set forth in Section

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14.3 (Filing Protected Material), below, that this Stipulated Protective Order does not entitle them

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to file confidential information under seal; Civil Local Rule 79-5 sets forth the procedures that

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must be followed and the standards that will be applied when a party seeks permission from the

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court to file material under seal.

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2.

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DEFINITIONS
2.1

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

documents, information, or other items under this Order.
2.2

“CONFIDENTIAL” Information or Items: documents, information (regardless of

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how it is generated, stored or maintained), or tangible things that qualify for protection under

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Federal Rule of Civil Procedure 26(c).

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2.3

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

well as their support staff).
2.4

Designated Code: Material that has been designated HIGHLY CONFIDENTIAL

– SOURCE CODE as defined in section 2.9, below.
2.5

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

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or items that it produces in disclosures or in response to discovery as “CONFIDENTIAL,”

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

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– SOURCE CODE”.

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2.6

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

of the medium or manner in which they were generated, stored, or maintained (including, among
STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

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other things, testimony, transcripts, and tangible things), that are produced or generated in

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disclosures or in response to discovery in this matter.

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2.7

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

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the litigation who (1) has been retained by a Party or its Counsel to serve as an expert witness or

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as a consultant in this action, (2) is not a past or current employee of a Party or of a Party’s

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

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or of a Party’s competitor.

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2.8

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information or

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

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

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less restrictive means, including without limitation technical documentation such as schematics,

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block diagrams, technical manuals, service manuals, and other highly sensitive technical

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information, that do not fall within the ambit of “HIGHLY CONFIDENTIAL – SOURCE

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CODE” as defined below, and further including without limitation sales, revenue, profit and loss,

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and customer identity information. “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

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ONLY” information or items” shall further include any materials, the dissemination of which a

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party reasonably believes may be restricted under ITAR, defined below.

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2.9

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:

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information that falls within the definition of “HIGHLY CONFIDENTIAL – ATTORNEYS’

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EYES ONLY” information and that is formatted as computer code (e.g., C++ code), hardware

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design language (HDL) or register transcription language (RTL) (e.g., Verilog), netlists (e.g.,

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EDIF), integrated circuit layout data (e.g., GDSII), or printed circuit board layout data (e.g.,

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Gerber files) that define or otherwise establish the algorithms or structure of software or hardware

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designs may be marked “HIGHLY CONFIDENTIAL – SOURCE CODE.” Materials marked

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“HIGHLY CONFIDENTIAL – SOURCE CODE” shall not include descriptions or summaries of

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the Designated Code, design specifications, schematics, flow charts, or block diagrams, nor shall

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it include materials that appear in user manuals, technical manuals, service manuals,

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presentations, or similar documents.
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STIPULATED [PROPOSED] PROTECTIVE
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2.10

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

Counsel does not include Outside Counsel of Record or any other outside counsel.

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2.11

ITAR: the United States regulations and laws that control the export and

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dissemination of defense-related articles and services. These regulations and laws include the

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International Traffic in Arm Regulations (at Title 22, Chapter 1, Subchapter M of the Code of

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Federal Regulations) and the Arms Export Control Act.

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2.12

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

entity not named as a Party to this action.

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2.13

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

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

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on behalf of that party or are affiliated with a law firm which has appeared on behalf of that party.

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

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

2.15

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

Material in this action.

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2.16

Professional Vendors: persons or entities that provide litigation support services

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(e.g., photocopying, videotaping, translating, preparing exhibits or demonstrations, and

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

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subcontractors.

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2.17

Protected Material: any Disclosure or Discovery Material that is designated

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

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“HIGHLY CONFIDENTIAL – SOURCE CODE.”

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2.18

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

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Producing Party.

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3.

SCOPE

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

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(as defined above), but also (1) any information copied or extracted from Protected Material; (2)

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all copies, excerpts, summaries, or compilations of Protected Material; and (3) any testimony,
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STIPULATED [PROPOSED] PROTECTIVE
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conversations, or presentations by Parties or their Counsel that might reveal Protected Material.

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However, the protections conferred by this Stipulation and Order do not cover the following

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

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

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a result of publication not involving a violation of this Order, including becoming part of the

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public record through trial or otherwise; and (b) any information known to the Receiving Party

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prior to the disclosure or obtained by the Receiving Party after the disclosure from a source who

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obtained the information lawfully and under no obligation of confidentiality to the Designating

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

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4.

DURATION

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

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this Order shall remain in effect until a Designating Party agrees otherwise in writing or a court

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order otherwise directs. Final disposition shall be deemed to be the later of (1) dismissal of all

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claims and defenses in this action, with or without prejudice; and (2) final judgment herein after

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the completion and exhaustion of all appeals, rehearings, remands, trials, or reviews of this action,

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including the time limits for filing any motions or applications for extension of time pursuant to

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applicable law.

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5.

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DESIGNATING PROTECTED MATERIAL
5.1

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

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or Non-Party that designates information or items for protection under this Order must take care

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to limit any such designation to specific material that qualifies under the appropriate standards.

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

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

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

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

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Mass, indiscriminate, or routinized designations are prohibited. Designations that are
shown to be clearly unjustified or that have been made for an improper purpose (e.g., to

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unnecessarily encumber or retard the case development process or to impose unnecessary

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expenses and burdens on other parties) expose the Designating Party to sanctions.

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

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

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initially asserted, that Designating Party must promptly notify all other parties that it is

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withdrawing the mistaken designation.

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5.2

Manner and Timing of Designations: Except as otherwise provided in this Order,

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or as otherwise stipulated or ordered, Disclosure or Discovery Material that qualifies for

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protection under this Order must be clearly so designated before the material is disclosed or

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produced.
Designation in conformity with this Order requires:

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(a)

for information in documentary form (e.g., paper or electronic documents,

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but excluding transcripts of depositions or other pretrial or trial proceedings): that the Producing

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Party affix the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’

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EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” to each page that contains

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

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

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

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being asserted.

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

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need not designate them for protection until after the inspecting Party has indicated which

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

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

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ATTORNEYS’ EYES ONLY.” After the inspecting Party has identified the documents it wants

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

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qualify for protection under this Order. Then, before producing the specified documents, the

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

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE
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STIPULATED [PROPOSED] PROTECTIVE
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CODE”) to each page that contains Protected Material. If only a portion or portions of the

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material on a page qualifies for protection, the Producing Party also must clearly identify the

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protected portion(s) (e.g., by making appropriate markings in the margins) and must specify, for

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each portion, the level of protection being asserted.

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(b)

for testimony given in deposition or in other pretrial or trial proceedings:

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

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other proceeding, all protected testimony and specify the level of protection being asserted.

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

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and it appears that substantial portions of the testimony may qualify for protection, the

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Designating Party may invoke on the record (before the deposition, hearing, or other proceeding

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is concluded) a right to have up to 21 days to identify the specific portions of the testimony as to

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which protection is sought and to specify the level of protection being asserted. Only those

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portions of the testimony that are appropriately designated for protection within the 21 days shall

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be covered by the provisions of this Stipulated Protective Order. Alternatively, a Designating

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Party may specify, at the deposition or up to 21 days afterwards if that period is properly invoked,

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that the entire transcript shall be treated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –

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

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

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

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

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

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

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

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

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

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

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

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inform the court reporter of these requirements. Any transcript that is prepared before the
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STIPULATED [PROPOSED] PROTECTIVE
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expiration of a 21-day period for designation shall be treated during that period as if it had been

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designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in its entirety unless

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otherwise agreed. After the expiration of that period, the transcript shall be treated only as

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actually designated.

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(c)

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

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other tangible items: that the Producing Party affix in a prominent place on the exterior of the

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container or containers in which the information or item is stored the legend “CONFIDENTIAL,”

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

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– SOURCE CODE.” If only a portion or portions of the information or item warrant protection,

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the Producing Party, to the extent practicable, shall identify the protected portion(s) and specify

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the level of protection being asserted.

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5.3

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

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

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right to secure protection under this Order for such material. Upon timely correction of a

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designation, the Receiving Party must make reasonable efforts to assure that the material is

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treated in accordance with the provisions of this Order.

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6.

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CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

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

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

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

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

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

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original designation is disclosed.

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6.2

Meet and Confer: The Challenging Party shall initiate the dispute resolution

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

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for each challenge. To avoid ambiguity as to whether a challenge has been made, the written

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notice must recite that the challenge to confidentiality is being made in accordance with this

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specific paragraph of the Protective Order. The parties shall attempt to resolve each challenge in
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STIPULATED [PROPOSED] PROTECTIVE
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good faith and must begin the process by conferring directly (in voice to voice dialogue; other

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forms of communication are not sufficient) within fourteen (14) days of the date of service of

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notice. In conferring, the Challenging Party must explain the basis for its belief that the

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confidentiality designation was not proper and must give the Designating Party an opportunity to

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review the designated material, to reconsider the circumstances, and, if no change in designation

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is offered, to explain the basis for the chosen designation. A Challenging Party may proceed to

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the next stage of the challenge process only if it has engaged in this meet and confer process first

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or establishes that the Designating Party is unwilling to participate in the meet and confer process

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in a timely manner.

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6.3

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

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

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

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

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process will not resolve their dispute, whichever is earlier. Each such motion must be

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accompanied by a competent declaration affirming that the movant has complied with the meet

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and confer requirements imposed in the preceding paragraph. Failure by the Designating Party to

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make such a motion including the required declaration within 21 days (or 14 days, if applicable)

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shall automatically waive the confidentiality designation for each challenged designation. In

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addition, the Challenging Party may file a motion challenging a confidentiality designation at any

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time if there is good cause for doing so, including a challenge to the designation of a deposition

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transcript or any portions thereof. Any motion brought pursuant to this provision must be

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accompanied by a competent declaration affirming that the movant has complied with the meet

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and confer requirements imposed by the preceding paragraph.

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The burden of persuasion in any such challenge proceeding shall be on the Designating

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

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

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sanctions. Unless the Designating Party has waived the confidentiality designation by failing to

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file a motion to retain confidentiality as described above, all parties shall continue to afford the
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material in question the level of protection to which it is entitled under the Producing Party’s

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designation until the court rules on the challenge.

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7.

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ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

Basic Principles: Protected Material that is designated protected by another Party

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or by a Non-Party in connection with this case may be disclosed only to the categories of persons

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and under the conditions described in this Order. When the litigation has been terminated, a

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Receiving Party must comply with the provisions of section 15 below (Final Disposition).

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

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in a secure manner that ensures that access is limited to the persons authorized under this Order.

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7.2

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

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

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

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY” only to U.S. citizens and legal permanent

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residents of the United States that fall within one or more of the following categories:

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(a)

the Receiving Party’s Outside Counsel of Record in this action, as well as

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

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information for this litigation;

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(b)

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

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necessary for this litigation, (2) who have signed the “Acknowledgment and Agreement to Be

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Bound” (Exhibit A), and (3) as to whom the procedures set forth in paragraph 7.4(a) below, have

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been followed;

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(c)

the Court and its personnel;

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(d)

court reporters and their staff, professional jury or trial consultants, and

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

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

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(e)

the author or recipient of a document containing the information or a

custodian or other person who otherwise possessed or knew the information; and

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(f)

during their depositions, witnesses in the action to whom disclosure is

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reasonably necessary and who have signed the “Acknowledgment and Agreement to Be Bound”

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(Exhibit A), unless otherwise agreed by the Designating Party or ordered by the Court, where at

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least one of the following conditions applies:

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(i)

the witness is an employee of the Designating Party when the

disclosure is made;

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(ii)

the witness’s name appears on the Protected Material as a person

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who has previously seen or received the material, or it is otherwise established that the

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witness has previously seen or received the Protected material or knows the information

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contained within it; or

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(iii)

at least three business days before the deposition, the Party wishing

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to show the witness the Protected Material notifies the Designating Party in writing of its

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intent to do so, with a specific listing of the Protected Material to be shown, and the

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Designating Party fails to provide, within one business day of receipt of the notice, written

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objection to this use of the Protected Material. If a timely written objection is provided,

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the Protected Material identified in the written objection shall not be shown to the witness

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unless and until the party wishing to show that material to the witness moves for and

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obtains appropriate relief from the Court. Witnesses shown Protected Material under this

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section must sign the “Acknowledgment and Agreement to Be Bound” (Exhibit A) before

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being shown the Protected Material. A copy of the witness’s signed Acknowledgement

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must be provided to the Designating Party before the Protected Material is provided to the

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witness.

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To establish whether a witness falls within category 7.2(f)(ii), limited portions of

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Designated Material may be disclosed to a witness as a foundation for questions regarding his or

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her previous knowledge of or access to the Designated Material. The Designated Material shall

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be marked and identified in the same manner as any other deposition exhibit, but no more of the

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Designated Material may be disclosed to the witness than is necessary to establish the witness’s

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previous knowledge of or access to the Designated Material. If it is determined that the witness
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does not fall into category 7.2(f)(ii) then the proposed exhibit will be withdrawn and will not be

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bound with any transcript of the deposition.

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If a receiving party wishes to disclose a document or information designated HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY to an individual that is not a U.S. citizen or a

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legal permanent resident of the United States, the receiving party and the designating party shall

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meet and confer to discuss whether the designating party reasonably believes the document or

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information may be restricted under ITAR. No disclosure to a foreign national shall be made

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absent the consent of the designating party or a court order.

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7.3

Disclosure of “CONFIDENTIAL” Information or Items: Unless otherwise

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

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disclose any information or item designated “CONFIDENTIAL” only to (a) any person who may

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access “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” material pursuant to

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section 7.2 above, or (b) any person who is not a U.S. Citizen or legal permanent resident but who

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otherwise falls within one of the categories in section 7.2 above, or (c) the officers, directors, and

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employees (including House Counsel) of the Receiving Party to whom disclosure is reasonably

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

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Bound” (Exhibit A);

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7.4

Procedures for Approving or Objecting to Disclosure of “HIGHLY

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

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SOURCE CODE” Information or Items to Experts:

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(a)

Unless otherwise ordered by the Court or agreed to in writing by the

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

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document, information, or other item that has been designated “HIGHLY CONFIDENTIAL –

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ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” first must

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make a written request to the Designating Party that (1) identifies the general categories of

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

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SOURCE CODE” Protected Material that the Receiving Party seeks permission to disclose to the

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Expert, (2) sets forth the full name of the Expert and the city and state of his or her primary
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residence, (3) attaches a copy of the Expert’s current resume, (4) identifies the Expert’s current

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employer(s), (5) identifies each person or entity from whom the Expert has received

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compensation or funding for work in his or her areas of expertise or to whom the expert has

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provided professional services, including in connection with any litigation, at any time during the

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preceding five years,1 and (6) identifies (by name and number of the case, filing date, and location

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of court) any litigation in connection with which the Expert has offered expert testimony,

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including through a declaration, report, or testimony at a deposition or trial, during the preceding

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five years.

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(b)

Following a waiting period of fourteen (14) days after providing the

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request to the Designating Party, a Party that makes a request and provides the information

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specified in the preceding respective paragraphs may disclose the subject Protected Material to

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the identified Expert unless, within those 14 days following the delivery the request, the Party

13

receives a written objection from the Designating Party. Any such objection must set forth in

14

detail the grounds on which it is based.

15

(c)

A Party that receives a timely written objection must meet and confer with

16

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

17

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

18

seeking to make the disclosure to the Expert may file a motion as provided in Civil Local Rule 7

19

(and in compliance with Civil Local Rule 79 5, if applicable) seeking permission from the court

20

to do so. Any such motion must describe the circumstances with specificity, set forth in detail the

21

reasons why disclosure to the Expert is reasonably necessary, assess the risk of harm that the

22

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

23

In addition, any such motion must be accompanied by a competent declaration describing the

24

parties’ efforts to resolve the matter by agreement (i.e., the extent and the content of the meet and

25
26
1

27
28

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.
- 12 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

confer discussions) and setting forth the reasons advanced by the Designating Party for its refusal

2

to approve the disclosure.

3

In any such proceeding, the Party opposing disclosure to the Expert shall bear the burden

4

of proving that the risk of harm that the disclosure would entail (under the safeguards proposed)

5

outweighs the Receiving Party’s need to disclose the Protected Material to its Expert.

6

8.

7

PROSECUTION BAR
Absent written consent from the Producing Party, any individual who receives access to

8

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

9

SOURCE CODE” information shall not be involved in the prosecution of patent applications

10

relating to technologies used to analyze and test integrated circuits and other electronic

11

components on behalf of any party to this litigation, before any foreign or domestic agency,

12

including the United States Patent and Trademark Office (“the Patent Office”). For purposes of

13

this paragraph, “prosecution” includes directly or indirectly drafting, amending, advising, or

14

otherwise affecting the scope or maintenance of patent claims in new or pending applications. To

15

avoid any doubt, “prosecution” as used in this paragraph does not include representing a party

16

with respect to proceedings relating to issued patents (including, but not limited to, reissue and

17

reexamination proceedings). This Prosecution Bar shall begin when access to “HIGHLY

18

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

19

CODE” information is first received by the affected individual and shall end two (2) years after

20

final termination of this action through entry of a final non-appealable judgment or order for

21

which appeal has been exhausted, or the complete settlement of all claims against all parties in

22

this action.

23

9.

24

SOURCE CODE
(a)

To the extent production of materials formatted in the manner defined in

25

section 2.9, above, becomes necessary in this case, a Producing Party may designate those

26

materials as “HIGHLY CONFIDENTIAL – SOURCE CODE” to they extent they comprise or

27

include confidential, proprietary, or trade secret information or other highly-confidential technical

28

information, as defined in section 2.8, above. This Designated Code shall be subject to the same
- 13 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

restrictions as materials designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

2

ONLY.” The following additional restrictions shall apply to Designated Code:

3

(b)

Electronic copies of such Designated Code may be installed on a

4

standalone, non-networked computer at a secure location at the offices of the Receiving Party’s

5

Outside Counsel of Record and at the offices of any previously approved Experts. All or portions

6

of such Designated Code may be printed into a hard copy, provided that such hard copies are

7

marked “HIGHLY CONFIDENTIAL – SOURCE CODE” and that access to such hard copies is

8

restricted as set forth in this section.

9
10
11

(c)

Outside Counsel of Record shall be limited to no more than three electronic

copies of any item of Designated Code, including any copies shared with Experts.
(d)

Code must be maintained and stored by the Receiving Party at an office of

12

the Receiving Party’s Outside Counsel of Record or an of office of an Expert in a manner that

13

prevents unauthorized access, including without limitation, the following minimum safeguards:

14

(i)

The Designated Code shall be placed on encrypted, password-

15

protected external media such as optical discs, flash drives, or hard drives. Encryption

16

shall be by BitLocker, TrueCrypt, or other encryption means that are equally effective.

17

The Designated Code may only be viewed on a non-networked computer maintained in a

18

locked room accessible only by Outside Counsel of Record or authorized Experts, and on

19

an access restricted floor. The external media must be kept in a locked safe or storage

20

cabinet when not connected to or inserted in the non-networked computer for viewing.

21

No Designated Code may be left on the non-networked computer when the external media

22

is not connected to or inserted in the non-networked computer.

23

(ii)

If the Designated Code is to be maintained and stored at an office of

24

an Expert, counsel must disclose to the supplying party the location where the Designated

25

Code will be maintained, and the security precautions undertaken to maintain

26

confidentiality of the Designated Code both while the Designated Code is being reviewed

27

and while the Designated Code is not being reviewed.

28
- 14 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

(iii)

Each page of Designated Code, or portion thereof, that has been

2

printed or copied onto paper shall be recorded on a print log. All printing and copying

3

shall be onto paper conspicuously marked “HIGHLY CONFIDENTIAL - SOURCE

4

DESIGNATED CODE” on each page. All print logs shall be made available to the

5

supplier of the Designated Code for inspection upon request.

6

(iv)

No portion of the Designated Code shall be e-mailed or transmitted

7

via any electronic transmission method except when included in a pleading (served or

8

filed) or attached to a deposition transcript. All transfers of Designated Code shall be by

9

way of physical transfer of encrypted external media. Designated Code, other than that

10

attached to a pleading (served or filed) or a deposition exhibit, shall not be placed on an

11

FTP site or stored in an internet accessible location for any reason for any period of time.

12

(e)

If counsel desires to store and access Designated Code at a secure facility

13

other than the offices of Outside Counsel of Record or the office of an Expert, counsel shall

14

provide notice in writing to outside counsel of record for the supplying party the precise location

15

of the proposed secure facility and the custodian of the Designated Code in that facility.

16

(f)

At the conclusion of the litigation any entity receiving Designated Code

17

will certify that: (a) all external media, print-outs, and copies containing Designated Code have

18

been destroyed or erased in a manner that prevents any forensic recovery of the Designated Code,

19

with the exception of exhibits that were attached to filed or served pleadings or attached to

20

deposition transcripts or admitted into evidence; and (b) the print logs have been archived along

21

with counsel's other records from this litigation. Other than as set forth in this subparagraph,

22

counsel may not maintain or retain a file copy of the Designated Code.

23

10.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER

24

LITIGATION

25

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

26

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

27

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

28

– SOURCE CODE” that Party must:
- 15 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1
2

(a)

promptly notify in writing the Designating Party. Such notification shall

include a copy of the subpoena or court order;

3

(b)

promptly notify in writing the party who caused the subpoena or order to

4

issue in the other litigation that some or all of the material covered by the subpoena or order is

5

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

6

Protective Order; and

7
8

(c)

cooperate with respect to all reasonable procedures sought to be pursued by

the Designating Party whose Protected Material may be affected.

9

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

10

subpoena or court order shall not produce any information designated in this action as

11

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

12

“HIGHLY CONFIDENTIAL – SOURCE CODE” before a determination by the court from

13

which the subpoena or order issued, unless the Party has obtained the Designating Party’s

14

permission. The Designating Party shall bear the burden and expense of seeking protection in

15

that court of its confidential material – and nothing in these provisions should be construed as

16

authorizing or encouraging a Receiving Party in this action to disobey a lawful directive from

17

another court.

18

11.

19
20

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-

21

Party in this action and designated as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –

22

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

23

information produced by Non-Parties in connection with this litigation is protected by the

24

remedies and relief provided by this Order. Nothing in these provisions should be construed as

25

prohibiting a Non-Party from seeking additional protections.

26
27

(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

28
- 16 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

agreement with the Non-Party not to produce the Non-Party’s confidential information, then the

2

Party shall:

3

(i)

promptly notify in writing the Requesting Party and the Non-Party

4

that some or all of the information requested is subject to a confidentiality agreement with

5

a Non-Party;

6

(ii)

promptly provide the Non-Party with a copy of the Stipulated

7

Protective Order in this litigation, the relevant discovery request(s), and a reasonably

8

specific description of the information requested; and

9

(iii)

10

Non-Party.

11

(c)

make the information requested available for inspection by the

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

12

within 14 days of receiving the notice and accompanying information, the Receiving Party may

13

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

14

Non-Party timely seeks a protective order, the Receiving Party shall not produce any information

15

in its possession or control that is subject to the confidentiality agreement with the Non-Party

16

before a determination by the Court. Absent a court order to the contrary, the Non-Party shall

17

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

18

12.

19

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

20

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

21

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

22

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

23

Protected Material, (c) inform the person or persons to whom unauthorized disclosures were

24

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

25

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

26
27
28
- 17 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

13.

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE PROTECTED

2

MATERIAL

3

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

4

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

5

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

6

provision is not intended to modify whatever privilege review procedure may be established in an

7

e-discovery order. Pursuant to Federal Rule of Evidence 502(d) and (e), insofar as the parties

8

reach an agreement on the effect of disclosure of a communication or information covered by the

9

attorney-client privilege or work product protection, the parties may incorporate their agreement

10

in the stipulated protective order submitted to the court.

11

14.

12
13
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

15

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

16

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

17

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

18

covered by this Protective Order.

19

14.3

Filing Protected Material: Without written permission from the Designating Party

20

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

21

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

22

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

23

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

24

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

25

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

26

otherwise entitled to protection under the law. If a Receiving Party's request to file Protected

27

Material under seal pursuant to Civil Local Rule 79 5(d) is denied by the court, then the

28
- 18 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

Receiving Party may file the Protected Material in the public record pursuant to Civil Local Rule

2

79 5(e) unless otherwise instructed by the court.

3

15.

4

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

5

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

6

material. As used in this subdivision, “all Protected Material” includes all copies, abstracts,

7

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

8

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

9

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

10

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

11

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

12

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

13

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

14

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

15

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

16

product, and consultant and Expert work product, even if such materials contain Protected

17

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

18

this Protective Order as set forth in section 4, above (Duration).

19
20
21
22

Dated: October 25, 2011

MARK E. MILLER
MICHAEL SAPOZNIKOW
ALEXANDER B. PARKER
O'MELVENY & MYERS LLP

23
24
25

By: /s/ Mark E. Miller
Mark E. Miller
Attorneys for Plaintiff
DCG SYSTEMS, INC.

26
27
28
- 19 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1
Dated: October 25, 2011
2

HOPKINS & CARLEY
A Law Corporation

3
By:/s/ John V. Picone, III
John V. Picone, III
Gary H. Ritchey
HOPKINS & CARLEY, a Law Corporation
70 South First Street
San Jose, CA 95113
Telephone: [phone]
Facsimile: [phone]

4
5
6
7
8

Attorneys for Defendant
CHECKPOINT TECHNOLOGIES, LLC

9
10
11
12
13
14
15

IT IS SO ORDERED

16

Dated: ___________________, 2011
October 31

17

________________________________
The Honorable Paul S. Grewal
United States Magistrate Judge

18
19
20
21
22
23
24
25
26
27
28
- 20 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

FILER’S ATTESTATION

2

Pursuant to General Order No. 45, Section X(B) regarding signatures, I attest under

3

penalty of perjury that concurrence in the filing of this document has been obtained from Mark E.

4

Miller and John V. Picone, III.

5
6
7

Dated: October 25, 2011
By: /s/ Michael Sapoznikow
Michael Sapoznikow
Counsel for Plaintiff
DCG SYSTEMS, INC.

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- 21 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG

1

EXHIBIT A

2

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

3

I, _____________________________ [print or type full name], of _________________

4

_______________________________________________________ [print or type full address],

5

declare under penalty of perjury that I have read in its entirety and understand the Stipulated

6

Protective Order that was issued by the United States District Court for the Northern District of

7

California on ___________________ [date] in the case of DCG Systems, Inc. v. Checkpoint

8

Technologies, LLC, Case No. 11-CV-03792-PSG. I agree to comply with and to be bound by all

9

the terms of this Stipulated Protective Order, and I understand and acknowledge that failure to so

10

comply could expose me to sanctions and punishment in the nature of contempt. I solemnly

11

promise that I will not disclose in any manner any information or item that is subject to this

12

Stipulated Protective Order to any person or entity except in strict compliance with the provisions

13

of this 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

19

address and telephone number] as my California agent for service of process in connection with

20

this action or any proceedings related to enforcement of this Stipulated Protective Order.

21
22
23

Date: _______________________________

City and State where sworn and signed: ____________________________________________

24
25
26
27

Printed name: __________________________________________
[printed name]
Signature:

__________________________________________
[signature]

28
- 22 -

STIPULATED [PROPOSED] PROTECTIVE
ORDER -- CASE NO. 5:11-CV-03792-PSG