Power Integrations, Inc. v. Park

Filing 65

ORDER by Magistrate Judge Virginia K DeMarchi re 62 Protective Order Dispute. Associated Cases: 5:16-cv-02366-BLF, 5:16-cv-02367-BLF (vkdlc2S, COURT STAFF) (Filed on 10/11/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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POWER INTEGRATIONS, INC.,

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Plaintiff,

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v.

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CHAN-WOONG PARK,

United States District Court
Northern District of California

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Defendant.

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Case No. 16-cv-02366-BLF (VKD)
Case No. 16-cv-02367-BLF (VKD)
ORDER RE PROTECTIVE ORDER
DISPUTE
Re: Dkt. No. 62

Plaintiff Power Integrations, Inc. (“PI”) and defendant Chan-Woong Park disagree

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regarding the terms of the protective order that should be entered in two related actions: Power

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Integrations, Inc. v. Park, Case. No. 16-cv-02366-BLF and Power Integrations, Inc. v. Park, Case

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No. 16-cv-02367-BLF. The parties filed a joint discovery letter describing their points of

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disagreement and attaching their respective proposed protective orders.
The Court finds this dispute suitable for resolution without a hearing.

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I.

BACKGROUND
In these related cases, PI alleges that Mr. Park’s employment agreement with PI required

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him to assign to the company all inventions he developed during and after his employment. PI

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claims that during and after his employment, Mr. Park used PI’s proprietary information to file

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and obtain patents for himself in the United States and in South Korea and then used those patents

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and technology to interfere with PI’s relationships with its customers. See Dkt. Nos. 61, 62.1
Citing Mr. Park’s past alleged misuse of PI’s proprietary information, PI advocates for a

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two-tier protective order based on this District’s Model Protective Order for Litigation Involving

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Unless otherwise specified, all citations to the docket refer to Case No. 16-cv-02366-BLF.

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Patents, Highly Sensitive Confidential Information and/or Trade Secrets, with additional proposed

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restrictions. Mr. Park responds that, while PI’s actions against him concern alleged misuse of

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proprietary information, the discovery in these cases is unlikely to encompass sensitive

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confidential information, and for that reason, a protective order based on this District’s Model

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Protective Order for Standard Litigation is sufficient. Each party has filed its respective, proposed

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form of protective with the Court.
The Court addresses each point of disagreement below. The Court will enter a separate

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protective order that reflects its resolution of each of the disputed points.

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II.

PROTECTIVE ORDER PROVISIONS
Restrictions on Mr. Park’s Access to PI’s Confidential Information

A.

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United States District Court
Northern District of California

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Both the Model Protective Order for Standard Litigation (“Standard Order”) and the Model

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Protective Order for Litigation Involving Patents, Highly Sensitive Confidential Information

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and/or Trade Secrets (“Patent Order”) contain provisions that protect “confidential” information

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from public disclosure or use. The key difference between the Standard Order and the Patent

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Order is that the latter also includes a provision that protects “highly confidential–attorneys’ eyes

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only” information from disclosure to the receiving party itself, and restricts access to such

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information to the receiving party’s outside counsel (as well as other specified entities). PI argues

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that such a provision is necessary and desirable because it expects to produce “proprietary

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information” in these cases that it does not wish Mr. Park to see. Mr. Park is skeptical that PI will

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produce any information that qualifies for such protection, and argues further that he will need to

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have access to the information PI does produce in order to prepare his defenses.

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The parties are currently engaged in fact discovery with expert discovery to follow. It is

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not possible for the Court to know what the full scope of fact and expert discovery may be. As it

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appears there is at least a possibility that both parties may seek and produce information that meets

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the criteria for “highly confidential–attorneys’ eyes only” information, the protective order should

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include provisions that address such information. Accordingly, the Patent Order, with its two-tier

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confidentiality protections, will serve as the basis for the protective order in these cases.

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The parties are advised that the “highly confidential–attorneys’ eyes only” designation is
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reserved for “extremely sensitive” confidential information, the 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.” See Model Patent Order, sec. 2.7. Blanket designations and overly

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restrictive designations are improper and must be avoided. A party’s failure to comply with the

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Court’s orders, Civil Local Rules, and other applicable legal requirements regarding the

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designation of material as “confidential” or “highly confidential–attorneys’ eyes only” may

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subject that party to sanctions. See Humphreys v. Regents of the University of California, Case

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No. C-04-03808 SI (EDL), 2006 WL 3020902 (N.D. Cal. Oct. 23, 2006); Model Patent Order, sec.

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5.1.

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In addition, if Mr. Park believes that PI’s designation of particular information or particular

United States District Court
Northern District of California

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categories of information as “highly confidential–attorneys’ eyes only” prevents him from

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adequately preparing his defenses, that concern may be brought to the Court’s attention by means

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of the discovery dispute resolution procedure set forth in the undersigned’s Standing Order for

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Civil Cases.

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B.

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PI’s proposed protective order includes a “prosecution bar” that prohibits anyone who

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receives “confidential” or “highly confidential–attorneys’ eyes only” information from being

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involved in “the prosecution of patents or patent applications relating to the field of power

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conversion and management” until two years after final termination of the actions. See Model

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Patent Order, sec. 8. PI says this bar is necessary protection against Mr. Park’s activities. Mr.

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Park contends that such a broad prosecution bar is unnecessary, given the nature of the

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information likely to be produced in this case, and that it will interfere with his ability to retain

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qualified expert witnesses.

Prosecution Bar

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The prosecution bar proposed by PI is exceptionally broad. While such a bar might be

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appropriate in some cases, it is not justified here, particularly given the protection the “highly

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confidential–attorneys’ eyes only” designation affords PI against access by Mr. Park to its

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sensitive technical information. Mr. Park’s concerns with respect to the impact of a prosecution

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bar on his ability to retain expert witnesses are also well-taken.
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The protective order will not include a prosecution bar. However, nothing in this order or

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in the protective order entered separately precludes a party from objecting on a case-by-case basis

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to a proposed expert witness whose prosecution-related activities pose an undue risk of misuse of

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a party’s confidential technical information.
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The Patent Order includes a model provision that references existing laws and regulations

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governing the export of technical data outside the United States. It imposes on a producing party

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the obligation to identify technical information subject to such export controls. PI says the

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protective order should include such a provision; Mr. Park contends that it is highly unlikely that

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export controls would apply to any material produced in these cases and the provision is therefore

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United States District Court
Northern District of California

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unnecessary.

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Export Control

As with the issue of confidentiality designations, it is not possible for the Court to know

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whether any material produced in discovery will be subject to export controls. It is at least

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possible that qualifying technical information will be produced, and one of the parties who may

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receive such production is outside of the United States. Accordingly, the Court agrees with PI that

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the protective order should include a provision placing the burden of identifying qualifying

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technical information on the producing party.

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D.

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PI asks for a modification to section 7.4 of the Patent Order that would require each party

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to advise the other in writing if it wishes to disclose information designated “confidential” under

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the protective order to an expert witness. Section 7.4 presently requires such advisement only

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with respect to the proposed disclosure of “highly confidential–attorneys’ eyes only” information

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to an expert witness. Mr. Park does not specifically address this proposed modification. The

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Court will adopt PI’s proposed modification.

Expert Witness Disclosure Procedure

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E.

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The Patent Order includes a provision that defines an “Expert” as:

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Expert Witness Criteria

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
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action, (2) is not a past or current employee of a Party or of 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.

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See Model Patent Order, sec. 2.6. Mr. Park objects that the second and third clauses of this
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provision unfairly limit his ability to retain experts, as many of them will be either past or current
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employees of PI or a competitor of PI. He proposes that these limiting clauses should encompass
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only an expert’s current or anticipated employment by a party’s competitor, so that the provision

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reads as follows:
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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’s competitor, and (3)
at the time of retention, is not anticipated to become an employee of
a Party’s competitor.

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United States District Court
Northern District of California

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PI does not specifically address Mr. Park’s proposed modification.
The Court accepts Mr. Park’s representation (which PI does not dispute) that many

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potential experts will be current, past, or future employees of PI or its competitors, and that the

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broader restriction in the model provision may make it difficult for one or both parties to retain

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experts in the relevant field. To accommodate the competing interests addressed by this provision

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the Court will adopt a definition of “Expert” that includes a restriction encompassing current and

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anticipated employees of a party and a party’s competitors (as in the model provision), but that

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does not include a restriction encompassing past employees of a party or a party’s competitors.

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However, nothing in this order or in the protective order precludes a party from objecting on a

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case-by-case basis to a proposed expert witness whose past employment with a party or a party’s

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competitor poses an undue risk of misuse of a party’s confidential technical information.

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F.

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Both parties propose revisions to the Standard Order or the Patent Order that address the

Use of Protected Material in Other Proceedings

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use of protected material in other proceedings. PI advocates for an additional sentence that states

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that protected material may not be used in “other judicial, administrative, or patent proceedings in

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the United States or South Korea.” Mr. Park does not object to this language but suggests that it

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should be modified to make clear that the parties may agree that protected material may be used in

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other proceedings if they wish. In addition, he suggests that the Court should permit protected
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material produced in Case No. 16-cv-02366-BLF to be used in the related case, Case No. 16-cv-

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02367-BLF, and vice versa. PI does not specifically address Mr. Park’s suggestions.

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The Standard Order and the Patent Order already contain prohibitions on the use of

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protected material for purposes other than prosecution, defense or attempted settlement of the case

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at issue. However, as the parties appear to agree that some further elaboration of this point is

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warranted or at least not objectionable, and as PI has not objected to Mr. Park’s suggested

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qualifications, the Court will adopt Mr. Park’s proposed revisions summarized above. The Court

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will not adopt Mr. Park’s additional suggestion that the permitted use of protected material extend

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to “any litigation arising out of or resulting from this litigation and the above related case.”
G.

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United States District Court
Northern District of California

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PI proposes revisions to section 6.3 of the Patent Order that would require the party

Judicial Intervention

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challenging a confidentiality designation to seek judicial intervention. Mr. Park objects to this

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revision.

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The proposed revision is moot, as the Court requires disputes regarding discovery matters,

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including disputes concerning confidentiality designations, to be brought to the Court’s attention

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pursuant to the discovery dispute resolution procedures in the undersigned Standing Order for

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Civil Cases. Those procedures require a joint submission by the parties.

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H.

Other Provisions
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Designated House Counsel

The Patent Order includes model provisions that permit designated in-house counsel

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employed by a party to have access to the other party’s protected material. PI says these

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provisions are unnecessary because Mr. Park is an individual and does not have “house counsel.”

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PI does not say whether it has “house counsel.” Mr. Park does not specifically address this

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proposed modification. The Court will adopt PI’s proposed modification.

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2.

Inadvertent Production

PI seeks revisions to section 12 of the Patent Order regarding inadvertent production of

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privileged documents or information, citing Mr. Park’s “litigious nature and history of challenging

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PI on numerous fronts.” Mr. Park objects to the proposed revisions. The Court is not persuaded
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that any revision to the model provision is warranted. The Court will not adopt PI’s proposed

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modification.

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3.

Liquidated Damages and Attorneys’ Fees

PI says that the protective order should include a liquidated damages provision and a

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provision for the recovery of attorneys’ fees in the event a party violates the terms of the

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protective order. This proposal overreaches. The Court will not adopt PI’s proposed provisions.

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IT IS SO ORDERED.
Dated: October 11, 2018

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VIRGINIA K. DEMARCHI
United States Magistrate Judge

United States District Court
Northern District of California

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