X One, Inc. v. Uber Technologies, Inc.

Filing 54

STIPULATED PROTECTIVE ORDER FOR LITIGATION INVOLVING PATENTS, HIGHLY SENSITIVE CONFIDENTIAL INFORMATION AND/OR TRADE SECRETS, re Dkt. No. 53 . Signed by Magistrate Judge Susan van Keulen on 3/17/2017. (ofr, COURT STAFF) (Filed on 3/17/2017)

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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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X ONE, INC.
Plaintiff,

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STIPULATED PROTECTIVE ORDER
FOR LITIGATION INVOLVING
PATENTS, HIGHLY SENSITIVE
CONFIDENTIAL INFORMATION
AND/OR TRADE SECRETS

v.

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Case No. 5:16-CV-6050-LHK (SVK)

UBER TECHNOLOGIES, INC.
Defendant.

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1.

PURPOSES AND LIMITATIONS
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 from public disclosure

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and from use for any purpose other than prosecuting this litigation may be warranted. Accordingly,

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the parties hereby stipulate to and petition the court to enter the following Stipulated Protective

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

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or responses to discovery and that the protection it affords from public disclosure and use extends

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only to the limited information or items that are entitled to confidential treatment under the

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applicable legal principles. The parties further acknowledge, as set forth in Section 14.4, below, that

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this Stipulated Protective Order does not entitle them to file confidential information under seal;

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Civil Local Rule 79-5 sets forth the procedures that must be followed and the standards that will be

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applied when a party seeks permission from the court to file material under seal.
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2.

DEFINITIONS
2.1

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

information or items under this Order.
2.2

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

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generated, stored or maintained) or tangible things that qualify for protection under Federal Rule of

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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 House Counsel: House Counsel who seek access to “HIGHLY

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information in this matter.
2.5

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

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produces in disclosures or in responses to discovery as “CONFIDENTIAL” or “HIGHLY

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

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CODE”.

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2.6

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

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or manner in which it is generated, stored, or maintained (including, among other things, testimony,

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transcripts, and tangible things), that are produced or generated in disclosures or responses to

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discovery in this matter.

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2.7

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

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

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

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

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competitor.

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2.8

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” Information or Items:

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

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

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restrictive means.

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2.9

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items: extremely
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sensitive “Confidential Information or Items” representing computer code and associated comments

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and revision histories, formulas, engineering specifications, or schematics that define or otherwise

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describe in detail the algorithms or structure of software or hardware designs, disclosure of which to

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

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by

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less restrictive means.

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2.10

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

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

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

entity not named as a Party to this action.

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2.12

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

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

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

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2.13

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,

2.14

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

Material in this action.

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2.15

Professional Vendors: persons or entities that provide litigation support services (e.g.,

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photocopying, videotaping, translating, preparing exhibits or demonstrations, and organizing,

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

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2.16

Protected Material: any Disclosure or Discovery Material that is designated as

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

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“HIGHLY CONFIDENTIAL – SOURCE CODE.”

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2.17

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

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Producing Party.

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3.

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

defined above), but also (1) any information copied or extracted from Protected Material; (2) all
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copies, excerpts, summaries, or compilations of Protected Material; and (3) any testimony,

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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 Receiving

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

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publication not involving a violation of this Order, including

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becoming part of the public record through trial or otherwise; and (b) any information known to the

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

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source who obtained the information lawfully and under no obligation of confidentiality to the

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

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or order.

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4.

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

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

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

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

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

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

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

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

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

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material, documents, items, or oral or written communications that qualify – so that other portions of

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the material, documents, items, or communications for which protection is not warranted are not

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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 unnecessarily
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encumber or retard the case development process or to impose unnecessary expenses and burdens on

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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 for

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

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

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mistaken designation.

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5.2

Manner and Timing of Designations. Except as otherwise provided in this Order (see,

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e.g., second paragraph of section 5.2(a) below), or as otherwise stipulated or ordered, Disclosure or

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Discovery

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Material that qualifies for protection under this Order must be clearly so designated before
the material is disclosed or produced.
Designation in conformity with this Order requires:
(a) for information in documentary form (e.g., paper or electronic documents, but

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excluding transcripts of depositions or other pretrial or trial proceedings), that the Producing Party

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affix the legend “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

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

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

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

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

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

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made available for inspection shall be deemed “HIGHLY CONFIDENTIAL – ATTORNEYS’

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EYES ONLY.” After the inspecting Party has identified the documents it wants copied and

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produced, the Producing Party must determine which documents, or portions thereof, qualify for

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protection under this Order. Then, before producing the specified documents, the Producing Party

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must affix the appropriate legend (“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL –

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ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE) to each page
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that contains Protected Material. If only a portion or portions of the material on a page qualifies for

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protection, 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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(b) for testimony given in deposition or in other pretrial or trial proceedings, that the

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

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proceeding, all protected testimony and specify the level of protection being asserted. When it is

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

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appears that substantial portions of the testimony may qualify for protection, the Designating Party

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may invoke on the record (before the deposition, hearing, or other proceeding is concluded) a right

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to have up to 21 days to identify the specific portions of the testimony as to which protection is

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sought and to specify the level of protection being asserted. Only those portions of the testimony that

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are appropriately designated for protection within the 21 days shall be covered by the provisions of

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this Stipulated Protective Order. Alternatively, a Designating Party may specify, at the deposition or

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up to 21 days afterwards if that period is properly invoked, that the entire transcript shall be treated

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

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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” or “HIGHLY CONFIDENTIAL –

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ATTORNEYS’ EYES ONLY.”

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

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

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

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of protection being asserted by the Designating Party. The Designating Party shall inform the court

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reporter of these requirements. Any transcript that is prepared before the expiration of a 21-day

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period for designation shall be treated during that period as if it had been designated “HIGHLY
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CONFIDENTIAL – ATTORNEYS’ EYES ONLY” in its entirety unless otherwise agreed. After the

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expiration of that period, the transcript shall be treated only as actually designated.

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(c) for information produced in some form other than documentary and for any other

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tangible items, that the Producing Party affix in a prominent place on the exterior of the container or

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

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

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

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

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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 treated in

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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 burdens,

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

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

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designation is disclosed.

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6.2

Meet and Confer. The Challenging Party shall initiate the dispute resolution process

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

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challenge. To avoid ambiguity as to whether a challenge has been made, the written notice must

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recite that the challenge to confidentiality is being made in accordance with this specific paragraph

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of the Protective Order. The parties shall attempt to resolve each challenge in good faith and must

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begin the process by conferring directly (in voice to voice dialogue; other forms of communication

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are not sufficient) within 14 days of the date of service of notice. In conferring, the Challenging
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Party must explain the basis for its belief that the confidentiality designation was not proper and

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must give the Designating Party an opportunity to review the designated material, to reconsider the

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circumstances, and, if no change in designation is offered, to explain the basis for the chosen

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designation. A Challenging Party may proceed to the next stage of the challenge process only if it

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has engaged in this meet and confer process first or establishes that the Designating Party is

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unwilling to participate in the meet and confer process 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 Challenging Party shall file and serve a motion challenging a confidentiality

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designation under Civil Local Rule 7 (and in compliance with Civil Local Rule 79-5, if applicable)

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within 21 days of the initial notice of challenge or within 14 days of the parties agreeing that the

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meet and confer process will not resolve their dispute, whichever is earlier. Each such motion must

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be 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 Challenging 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 challenge.

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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 sanctions.

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All parties shall continue to afford the material in question the level of protection to which it is

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entitled under the Producing Party’s 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. A Receiving Party may use Protected Material that is disclosed or

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produced by another Party or by a Non-Party in connection with this case only for prosecuting,

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defending, or attempting to settle this litigation. Such Protected Material may be disclosed only to

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the categories of persons and under the conditions described in this Order. When the litigation has

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been terminated, a Receiving Party must comply with the provisions of section 15 below (FINAL

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DISPOSITION).

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Protected Material must be stored and maintained by a Receiving Party at a location and in a
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secure manner1 that ensures that access is limited to the persons authorized under this Order.

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7.2

Disclosure of “CONFIDENTIAL” Information or Items. Unless otherwise ordered by

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

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information or item designated “CONFIDENTIAL” only to:

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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 and who have signed the “Acknowledgment and Agreement to Be

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Bound” that is attached hereto as Exhibit A;

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(b) the officers, directors, and employees (including House Counsel) of the Receiving

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Party to whom disclosure is reasonably necessary for this litigation and who have signed the

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

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(c) Experts (as defined in this Order) of the Receiving Party to whom disclosure is

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

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to Be Bound” (Exhibit A);

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(d) the court and its personnel;

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(e) 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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(f) during their depositions, witnesses in the action to whom disclosure is reasonably

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necessary and who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A),

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unless otherwise agreed by the Designating Party or ordered by the court. Pages of transcribed

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deposition testimony or exhibits to depositions that reveal Protected Material must be separately

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bound by the court reporter and may not be disclosed to anyone except as permitted under this

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Stipulated Protective Order.

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(g) the author or recipient of a document containing the information or a custodian or

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

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other person who otherwise possessed or knew the information.

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7.3

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

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“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items. Unless otherwise ordered

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

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information or item designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or

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“HIGHLY CONFIDENTIAL – SOURCE CODE” only to:

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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 and who have signed the “Acknowledgment and Agreement to Be

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Bound” that is attached hereto as Exhibit A;
(b) Designated House Counsel of the Receiving Party2 (1) who has no involvement in

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competitive decision-making, (2) to whom disclosure is reasonably necessary for this litigation, (3)

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who has signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and (4) as to

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whom the procedures set forth in paragraph 7.4(a)(1), below, have been followed;3(c) Experts of the

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Receiving Party (1) to whom disclosure is reasonably necessary for this litigation, (2) who have

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signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and (3) as to whom the

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procedures set forth in paragraph 7.4(a)(2), below, have been followed;

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(d) the court and its personnel;

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(e) 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); and

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(f) the author or recipient of a document containing the information or a custodian or
other person who otherwise possessed or knew the information.

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It may be appropriate under certain circumstances to limit the number of Designated House Counsel who may access “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information under this provision.

This Order contemplates that Designated House Counsel shall not have access to any information or items designated “HIGHLY
CONFIDENTIAL – SOURCE CODE.” It may also be appropriate under certain circumstances to limit how Designated House
Counsel may access “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information. For example, Designated House
Counsel may be limited to viewing “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information only if it is filed with
the court under seal, or in the presence of Outside Counsel of Record at their offices.

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7.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL –

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

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Items to Designated House Counsel or Experts.

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(a)(1) 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 Designated House Counsel any information or

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item that has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

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pursuant to paragraph 7.3(b) first must make a written request to the Designating Party that (1) sets

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forth the full name of the Designated House Counsel and the city and state of his or her residence,

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and (2) describes the Designated House Counsel’s current and reasonably foreseeable future primary

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job duties and responsibilities in sufficient detail to determine if House Counsel is involved, or may

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become involved, in any competitive decision-making.4

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(a)(2) 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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information or item that has been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

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ONLY” or “HIGHLY CONFIDENTIAL – SOURCE CODE” pursuant to paragraph 7.3(c) 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” information that the Receiving Party seeks permission to disclose to the Expert,

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(2) sets forth the full name of the Expert and the city and state of his or her primary residence, (3)

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attaches a copy of the Expert’s current resume, (4) identifies the Expert’s current employer(s), (5)

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identifies each person or entity from whom the Expert has received compensation or funding for

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work in his or her areas of expertise or to whom the expert has provided professional services,

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including in connection with a litigation, at any time during the preceding five years,5 and (6)

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It may be appropriate in certain circumstances to require any Designated House Counsel who receives “HIGHLY CONFIDENTIAL
– ATTORNEYS’ EYES ONLY” information pursuant to this Order to disclose any relevant changes in job duties or responsibilities
prior to final disposition of the litigation to allow the Designating Party to evaluate any later-arising competitive decision-making
responsibilities.

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If the Expert believes any of this information is subject to a confidentiality obligation to a third-party, then the Expert should provide
whatever information the Expert believes can be disclosed without violating any confidentiality agreements, and the Party seeking to
disclose to the Expert shall be available to meet and confer with the Designating Party regarding any such engagement.

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identifies (by name and number of the case, filing date, and location of court) any litigation in

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connection with which the Expert has offered expert testimony, including through a declaration,

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report, or testimony at a deposition or trial, during the preceding five years.6

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(b) A Party that makes a request and provides the information specified in the

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preceding respective paragraphs may disclose the subject Protected Material to the identified

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Designated House Counsel or Expert unless, within 14 days of delivering the request, the Party

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

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the grounds on which it is based.

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(c) A Party that receives a timely written objection must meet and confer with the

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

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

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disclosure to Designated House Counsel or the Expert may file a motion as provided in Civil Local

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Rule 7 (and in compliance with Civil Local Rule 79-5, if applicable) seeking permission from the

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

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the reasons why the disclosure to Designated House Counsel or the Expert is reasonably necessary,

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assess the risk of harm that the disclosure would entail, and suggest any additional means that could

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be used to reduce that risk. In addition, any such motion must be accompanied by a competent

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declaration describing the parties’ efforts to resolve the matter by agreement (i.e., the extent and the

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content of the meet and confer discussions) and setting forth the reasons advanced by the

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Designating Party for its refusal to approve the disclosure.

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In any such proceeding, the Party opposing disclosure to Designated House Counsel or the

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Expert shall bear the burden of proving that the risk of harm that the disclosure would entail (under

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the safeguards proposed) outweighs the Receiving Party’s need to disclose the Protected Material to

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its Designated House Counsel or Expert.

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It may be appropriate in certain circumstances to restrict the Expert from undertaking certain limited work prior to the termination of
the litigation that could foreseeably result in an improper use of the Designating Party’s “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY” information.

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8.

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

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receives access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY

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CONFIDENTIAL – SOURCE CODE” technical or source code information shall not be involved in

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the prosecution of patents or patent applications relating to mapping and tracking of wireless devices

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for location-based services, including without limitation the patents asserted in this action and any

7

patent or application claiming priority to or otherwise related to the patents asserted in this action,

8

before any foreign or domestic agency, including the United States Patent and Trademark Office

9

(“the Patent Office”).7 For purposes of this paragraph, “prosecution” includes directly or indirectly

10

drafting, amending, advising, or otherwise affecting the scope or maintenance of patent claims.8 To

11

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

12

challenging a patent before a domestic or foreign agency (including, but not limited to, a reissue

13

protest, ex parte reexamination, inter partes reexamination, or inter partes review). Notwithstanding

14

the foregoing, an attorney that is otherwise subject to this provision may participate in activities

15

defending a patent before a domestic or foreign agency (including, but not limited to, a reissue

16

protest, ex parte reexamination, inter partes reexamination, or inter partes review), if such counsel

17

expressly agrees that in connection with such proceedings, it will not rely on or use any HIGHLY

18

CONFIDENTIAL – ATTORNEYS’ EYES ONLY or HIGHLY CONFIDENTIAL – SOURCE

19

CODE technical or source code information and will not participate in any activities that will affect

20

the scope of the claims, including without limitation drafting, amending, or shaping the scope of any

21

amended or added claim. This Prosecution Bar shall begin when access to “HIGHLY

22

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

23

CODE” technical or source code information is first received by the affected individual and shall

24

end two (2) years after final termination of this action.

25
26
7

27
28

It may be appropriate under certain circumstances to require Outside and House Counsel who receive access to “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information to implement an “Ethical Wall.”
8

Prosecution includes, for example, original prosecution, reissue and reexamination proceedings.

13

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

9.

2

SOURCE CODE
(a)

To the extent production of source code becomes necessary in this case, a

3

Producing Party may designate source code as “HIGHLY CONFIDENTIAL - SOURCE CODE” if

4

it comprises or includes confidential, proprietary or trade secret source code.

5

(b)

Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE

6

CODE” shall be subject to all of the protections afforded to “HIGHLY CONFIDENTIAL –

7

ATTORNEYS’ EYES ONLY” information including the Prosecution Bar set forth in Paragraph 8,

8

and may be disclosed only to the individuals to whom “HIGHLY CONFIDENTIAL –

9

ATTORNEYS’ EYES ONLY” information may be disclosed, as set forth in Paragraphs 7.3 and 7.4,

10

with the exception of Designated House Counsel.9

11

(c)

Any source code produced in discovery shall be made available for inspection,

12

in a format allowing it to be reasonably reviewed and searched, during normal business hours or at

13

other mutually agreeable times, at an office of the Producing Party’s counsel or another mutually

14

agreed upon location. The source code shall be made available for inspection on a secured computer

15

in a secured room without Internet access or network access to other computers, and the Receiving

16

Party shall not copy, remove, or otherwise transfer any portion of the source code onto any

17

recordable media or recordable device. Cameras, cell phones, thumbdrives, memory sticks, laptops,

18

computers, PDAs, tablets, or any other storage media or medium may not be taken into the room

19

where the stand-alone computer is placed. The source code reviewer may take handwritten notes

20

during the review, but may not copy, handwritten or otherwise, portions of the code other than what

21

is minimally necessary to take notes. The Producing Party may visually monitor the activities of the

22

Receiving Party’s representatives during any source code review, but only to ensure that there is no

23

unauthorized recording, copying, or transmission of the source code.10

24
25
26
27
28

9

It may be appropriate under certain circumstances to allow House Counsel access to derivative materials including “HIGHLY
CONFIDENTIAL - SOURCE CODE” information, such as exhibits to motions or expert reports,

10
It may be appropriate under certain circumstances to require the Receiving Party to keep a paper log indicating the names of any
individuals inspecting the source code and dates and times of inspection, and the names of any individuals to whom paper copies of
portions of source code are provided.

14

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

(d)

The Receiving Party may request paper copies of limited portions of source

2

code that are reasonably necessary for the preparation of court filings, pleadings, expert reports, or

3

other papers, or for deposition or trial, but shall not request paper copies for the purposes of

4

reviewing the source code other than electronically as set forth in paragraph (c) in the first instance.

5

The Producing Party shall provide all such source code in paper form including bates numbers and

6

the label “HIGHLY CONFIDENTIAL - SOURCE CODE.” The Producing Party may challenge the

7

amount of source code requested in hard copy form pursuant to the dispute resolution procedure and

8

timeframes set forth in Paragraph 6 whereby the Producing Party is the “Challenging Party” and the

9

Receiving Party is the “Designating Party” for purposes of dispute resolution.

10

(e)

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

11

inspected any portion of the source code in electronic or paper form. The Receiving Party shall

12

maintain all paper copies of any printed portions of the source code in a secured, locked area. The

13

Receiving Party shall not create any electronic or other images of the paper copies and shall not

14

convert any of the information contained in the paper copies into any electronic format. The

15

Receiving Party shall only make additional paper copies if such additional copies are (1) necessary

16

to prepare court filings, pleadings, or other papers (including a testifying expert’s expert report), (2)

17

necessary for deposition, or (3) otherwise necessary for the preparation of its case. Any paper copies

18

used during a deposition shall be retrieved by the Producing Party at the end of each day and must

19

not be given to or left with a court reporter or any other unauthorized individual.11

20

10.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER
LITIGATION

21
22

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

23

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

24

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

25

SOURCE CODE” that Party must:

26
27
28

11
The nature of the source code at issue in a particular case may warrant additional protections or restrictions, For example, it may be
appropriate under certain circumstances to require the Receiving Party to provide notice to the Producing Party before including
“HIGHLY CONFIDENTIAL – SOURCE CODE” information in a court filing, pleading, or expert report.

15

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

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 issue in

4

the other litigation that some or all of the material covered by the subpoena or order is subject to this

5

Protective Order. Such notification shall include a copy of this Stipulated Protective Order; and

6
7

(c) cooperate with respect to all reasonable procedures sought to be pursued by the
Designating Party whose Protected Material may be affected.12

8
9

If the Designating Party timely seeks a protective order, the Party served with the
subpoena or court order shall not produce any information designated in this action as

10

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

11

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

12

the subpoena or order issued, unless the Party has obtained the Designating Party’s permission. The

13

Designating Party shall bear the burden and expense of seeking protection in that court of its

14

confidential material – and nothing in these provisions should be construed as authorizing or

15

encouraging a Receiving Party in this action to disobey a lawful directive from another court.

16

11.

17
18

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-

19

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

20

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

21

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

22

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

23

Non-Party from seeking additional protections.

24
25

(b)

In the event that a Party is required, by a valid discovery request, to produce a

Non-Party’s confidential information in its possession, and the Party is subject to an agreement with

26
27
28

12
The purpose of imposing these duties is to alert the interested parties to the existence of this Protective Order and to afford the
Designating Party in this case an opportunity to try to protect its confidentiality interests in the court from which the subpoena or order
issued.

16

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

the Non-Party not to produce the Non-Party’s confidential information, then the Party shall:

2
3

1. promptly notify in writing the Requesting Party and the Non-Party that some
or all of the information requested is subject to a confidentiality agreement with a Non-Party;

4

2. promptly provide the Non-Party with a copy of the Stipulated Protective

5

Order in this litigation, the relevant discovery request(s), and a reasonably specific description of the

6

information requested; and

7

3. make the information requested available for inspection by the Non-Party.

8
9

(c)

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

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

10

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

11

Party timely seeks a protective order, the Receiving Party shall not produce any information in its

12

possession or control that is subject to the confidentiality agreement with the Non-Party before a

13

determination by the court.13 Absent a court order to the contrary, the Non-Party shall bear the

14

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

15

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

16

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed

17

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

18

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

19

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

20

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

21

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

22

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

23

13.

24

INADVERTENT PRODUCTION OF PRIVILEGED OR OTHERWISE PROTECTED
MATERIAL
When a Producing Party gives notice to Receiving Parties that certain inadvertently

25
26
27
28

13

The purpose of this provision is to alert the interested parties to the existence of confidentiality rights of a Non-Party and to afford
the Non-Party an opportunity to protect its confidentiality interests in this court.

17

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

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

2

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

3

is not intended to modify whatever procedure may be established in an e-discovery order that

4

provides for production without prior privilege review. Pursuant to Federal Rule of Evidence 502(d)

5

and (e), insofar as the parties reach an agreement on the effect of disclosure of a communication or

6

information covered by the attorney-client privilege or work product protection, the parties may

7

incorporate their agreement in the stipulated protective order submitted to the court.

8

14.

9
10

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.

11

14.2

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

12

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

13

information or item on any ground not addressed in this Stipulated Protective Order. Similarly, no

14

Party waives any right to object on any ground to use in evidence of any of the material covered by

15

this Protective Order.

16

14.3

Filing Protected Material. Without written permission from the Designating Party or a

17

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

18

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

19

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

20

pursuant to a court order authorizing the sealing of the specific Protected Material at issue. Pursuant

21

to Civil Local Rule 79-5, a sealing order will issue only upon a request establishing that the

22

Protected Material at issue is privileged, protectable as a trade secret, or otherwise entitled to

23

protection under the law. If a Receiving Party's request to file Protected Material under seal pursuant

24

to Civil Local Rule 79-5(e) is denied by the court, then the Receiving Party may file the Protected

25

Material in the public record pursuant to Civil Local Rule 79-5(e)(2) unless otherwise instructed by

26

the court.

27

15.

28

FINAL DISPOSITION
Within 60 days after the final disposition of this action, as defined in paragraph 4,
18

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

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

2

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

3

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

4

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

5

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

6

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

7

Material that was returned or destroyed and (2) affirms that the Receiving Party has not retained any

8

copies, abstracts, compilations, summaries or any other format reproducing or capturing any of the

9

Protected Material. Notwithstanding this provision, Counsel are entitled to retain an archival copy of

10

all pleadings, motion papers, trial, deposition, and hearing transcripts, legal memoranda,

11

correspondence, deposition and trial exhibits, expert reports, attorney work product, and consultant

12

and expert work product, even if such materials contain Protected Material. Any such archival copies

13

that contain or constitute Protected Material remain subject to this Protective Order as set forth in

14

Section 4 (DURATION).

15

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.

16
17

DATED: ________________________ _____________________________________
Attorneys for Plaintiff

18
19
20

DATED: ________________________ _____________________________________
Attorneys for Defendant
PURSUANT TO STIPULATION, IT IS SO ORDERED.

21
22
23

DATED: ________________________ _____________________________________
March 17, 2017
Hon. Susan van Keulen
United States Magistrate Judge

24
25
26
27
28
19

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)

1

EXHIBIT A

2

ACKNOWLEDGMENT AND AGREEMENT TO BE BOUND

3

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

4

_________________ [print or type full address], declare under penalty of perjury that I have read in

5

its entirety and understand the Stipulated Protective Order that was issued by the United States

6

District Court for the Northern District of California on [date] in the case of ___________ [insert

7

formal name of the case and the number and initials assigned to it by the court]. I agree to

8

comply with and to be bound by all the terms of this Stipulated Protective Order and I understand

9

and acknowledge that failure to so comply could expose me to sanctions and punishment in the

10

nature of contempt. I solemnly promise that I will not disclose in any manner any information or

11

item that is subject to this Stipulated Protective Order to any person or entity except in strict

12

compliance with the provisions of this Order.

13

I further agree to submit to the jurisdiction of the United States District Court for the

14

Northern District of California for the purpose of enforcing the terms of this Stipulated Protective

15

Order, even if such enforcement proceedings occur after termination of this action.

16

I hereby appoint __________________________ [print or type full name] of

17

_______________________________________ [print or type full address and telephone number] as

18

my California agent for service of process in connection with this action or any proceedings related

19

to enforcement of this Stipulated Protective Order.

20
21

Date: _________________________________

22

City and State where sworn and signed: _________________________________

23
24
25
26

Printed name: ______________________________
[printed name]
Signature: __________________________________
[signature]

27
28
20

STIPULATED PROTECTIVE ORDER
Case No. 5:16-CV-6050-LHK (SVK)