Palantir Technologies Inc. v. Abramowitz et al

Filing 1

NOTICE OF REMOVAL OF CIVIL ACTION UNDER 28 U.S.C. 1441(A) from Santa Clara County Court. Their case number is 16cv299476. (Filing fee $400 receipt number 0971-13816085). Filed byMarc Abramowitz Charitable Trust No. 2, KT4 Partners LLC, Marc L. Abramowitz. (Attachments: #1 Civil Cover Sheet, #2 Exhibit 1, Filing Error see dkt #23 , #24 for corrected#3 Exhibit 2, part 1)(DiCanio, Jack) (Filed on 10/22/2019) Modified on 10/29/2019 (sfbS, COURT STAFF).

1 JACK P. DICANIO (SBN 138782)
[e-mail]
2 ALLEN RUBY (SBN 47109)
[e-mail]
3 NIELS J. MELIUS (SBN 294181)
[e-mail]
4 SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
525 University Avenue
5 Palo Alto, California 94301
Telephone: [phone]
6 Facsimile: [phone]
7 BARRY SIMON (pro hac vice application forthcoming)
[e-mail]
8 JONATHAN B. PITT (pro hac vice application forthcoming)
[e-mail]
9 STEPHEN L. WOHLGEMUTH (pro hac vice application forthcoming)
[e-mail]
10 WILLIAMS & CONNOLLY LLP
725 Twelfth Street, N.W.
11 Washington, D.C. 20005
Telephone: [phone]
12 Facsimile: [phone]
13 Attorneys for Defendants
14

UNITED STATES DISTRICT COURT

15

NORTHERN DISTRICT OF CALIFORNIA

16

SAN JOSE DIVISION

17
18

PALANTIR TECHNOLOGIES INC.,
Plaintiff,

19
20

v.

CASE NO.: 5:19-cv-6879
DEFENDANTS’ NOTICE OF REMOVAL OF
CIVIL ACTION UNDER 28 U.S.C. § 1441(A)
(FEDERAL QUESTION)
EXHIBIT 2, Part 1

21 MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
22 ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, and DOES 1
23
through 50, inclusive,
24
Defendants.
25
26
27
28
EXHIBIT 2 TO NOTICE OF REMOVAL

CASE NO. 5:19-CV-6879

1

E-FILED
9/1/2016 11:20:57 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

5

BOIES, SCHILLER & FLEXNER LLP
David Zifkin (SBN232845)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]
Additional counsel identified on signature page

6

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

2
3
4

7
8

SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

FOR THE COUNTY OF SANTA CLARA

10

UNLIMITED JURISDICTION

11
12
13
14
15
16
17
18
19
20

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)
PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

Case No.

16CV299476

COMPLAINT FOR:
(1) Breach of Contract
(2) Breach of the Implied Covenant of Good
Faith and Fair Dealing
(3) Violation of Cal. Civ. Code § 3426 et seq.
(4) Declaratory Relief
(5) Violation of California’s Unfair
Competition Law, Cal. Bus. & Prof. Code §
17200 et seq.
JURY TRIAL DEMAND
Complaint Filed: September 1, 2016
Trial Date: Not set

21
22
23
24
25
26
27
28
COMPLAINT

1

Plaintiff Palantir Technologies Inc. (“Palantir”) sues defendants Marc L. Abramowitz

2

(“Abramowitz”), both in his individual capacity and as trustee of the Marc Abramowitz

3

Charitable Trust No. 2 (the “Trust”), KT4 Partners LLC (“KT4”), and Does 1 through 50

4

(collectively with Abramowitz, KT4, and the Trust, “Defendants”) as follows:
NATURE OF THE ACTION

5
6

1.

This is an action to stop Defendants from misappropriating Palantir’s confidential

7

information and proprietary trade secrets for their own benefit and to prevent them from receiving

8

any additional confidential or proprietary information from Palantir pursuant to their Investors’

9

Rights Agreement.

10

2.

Abramowitz was a respected confidant and advisor to Palantir and its senior

11

executives until he betrayed the trust they bestowed upon him for his own personal gain. He was,

12

through KT4 and other entities, an early equity investor in Palantir who personally engaged in

13

regular discussions with executives about some of the company’s most sensitive business

14

strategies and trade secrets. Those discussions were highly confidential, as was made clear by

15

express written agreements among the parties at the time and a course of dealing based on the

16

most basic principles of fairness and honesty between a trusted shareholder and advisor and

17

management.

18

3.

Nonetheless, as part of brazen scheme to claim Palantir’s own highly confidential

19

information and trade secrets as his own, Abramowitz stole those secrets, engaged in methodical

20

deception of Palantir’s senior executives, and made false claims to the United States Patent and

21

Trademark Office. Abramowitz’s claim to be a patent innovator is directly contradicted by the

22

facts surrounding his professional career.

23

4.

To start, Abramowitz has no notable history as an inventor or patent innovator in

24

the data analysis area. He has made most of his career and fortune in real estate and buyout

25

investing. Yet, beginning in 2014, Abramowitz suddenly filed three patents, all of them based on

26

ideas and trade secrets he stole from Palantir. This was plainly illegal and highly unethical

27

conduct, and it was a betrayal of his trusted relationship with Palantir and its executives.

28
1
COMPLAINT

1

5.

But Abramowitz’s scheme did not end there. After stealing from Palantir, he hired

2

lawyers to demand from Palantir sensitive and confidential information about the company,

3

including the Company’s finances and business dealings, which Palantir considers to be, and

4

treats as, highly sensitive and confidential. Having uncovered Abramowitz’s breach of Palantir’s

5

trust (and of his contractual obligations to Palantir under multiple agreements), it is apparent that

6

Abramowitz is not seeking this information in good faith for a proper purpose. In fact, history

7

has shown that Abramowitz has and will misuse any information provided to him in breach of

8

confidence, causing Palantir irreparable harm in the process.

9

6.

Palantir now has been forced to protect itself, both through amendments to its

10

corporate documents and through this action, by which Palantir seeks redress for Abramowitz’s

11

breaches of contract, breaches of confidence, and misuse of Palantir’s confidential and

12

proprietary information and trade secrets. Further, to protect Palantir and its shareholders—

13

including employees, former employees and other investors—from continued breaches of

14

confidence in the future, Palantir seeks a declaratory judgment that Abramowitz has no right to

15

the information he has demanded under the Investors’ Rights Agreement.
PARTIES, JURISDICTION, AND VENUE

16
17
18
19

7.

The Court has jurisdiction over this action by virtue of Article VI § 10 of the

California Constitution and California Code of Civil Procedure § 410.10.
8.

Palantir is a Delaware corporation with its principal place of business at 100

20

Hamilton Avenue, Palo Alto, California, 94301. Palantir has suffered, and continues to suffer,

21

injury in this jurisdiction by reason of Defendants’ actions.

22

9.

Palantir is informed and believes and on that basis alleges that defendant Marc L.

23

Abramowitz is an individual residing in California at 1029 Ramona Street, Palo Alto, California,

24

94301. Palantir is informed and believes and on that basis alleges that Abramowitz is the trustee

25

of the Marc Abramowitz Charitable Trust No. 2. The wrongful actions of Abramowitz occurred

26

in, were targeted to, and caused damage in, California.

27
28
2
COMPLAINT

10.

1

Palantir is informed and believes and on that basis alleges that defendant KT4

2

Partners LLC is a Delaware limited liability company with its principal place of business at 1029

3

Ramona Street, Palo Alto, California, 94301. On information and belief, KT4 does business in

4

California and has committed acts that submit it to the jurisdiction of California’s courts. Upon

5

information and belief, Abramowitz is the sole member of KT4 and controls and directs the

6

activities of KT4. The wrongful actions of KT4 occurred in, were targeted to, and caused damage

7

in, California.
11.

8

Palantir is ignorant of the true names of Does 1 through 50 and such names are

9

fictitious. Such defendants are legally responsible for the events and happenings described herein

10

and for the damages proximately caused thereby. Once Palantir learns of the true names of Does

11

1 through 50, Palantir will amend the complaint to include the real name(s) of such party or

12

parties.

13

12.

This action is founded on injuries and damages suffered by Palantir in Santa Clara

14

County by virtue of the Defendants’ misappropriation of trade secrets, breach of contract, breach

15

of confidence and other illegal and wrongful acts as alleged in this Complaint. Venue is proper in

16

this Court because the parties reside in this County and the events that form the basis for this

17

Complaint largely took place in this County.

18

FACTUAL BACKGROUND

19

Palantir’s Business

20

13.

Palantir is a software and services company that specializes in data analytics. In

21

2004, Palantir was founded on a vision: to provide solutions not only to problems then faced by

22

business and government, but also solutions to problems that did not yet exist, but that would

23

surely come to be as part of our rapidly-evolving world. It sought to make this vision a reality by

24

the use of technology. And it embarked on an ambitious, time-consuming, and costly endeavor to

25

create a viable, successful business. As a result of hard work, Palantir has succeeded and is now a

26

leader in its industry. Today, Palantir’s products are deployed at the most critical government,

27
28
3
COMPLAINT

1

commercial, and non-profit institutions in the world to solve problems the company’s founders

2

had not even dreamed of back in 2004.
14.

3

In particular, at its founding Palantir set out to create products that would

4

transform the way organizations use perhaps their most important asset in today’s business world:

5

data. Palantir’s mission has been and remains to develop flexible tools and services to provide

6

human-driven analysis of real-world data, with a focus on creating the world’s best user

7

experience for working with data. To achieve this, Palantir builds platforms for integrating,

8

managing, and securing data, on top of which it layers applications for fully interactive, human-

9

driven, machine-assisted analysis.

This means that Palantir develops programs and provides

10

services that allow businesses and government to run their businesses in a way that corresponds

11

with the reality of their marketplace and consumers.
15.

12

Businesses and government use Palantir’s software to interpret and visualize large

13

quantities of information from various sources. For example, businesses use Palantir’s software

14

to analyze their internal and market data to better understand consumer trends, and government

15

agencies use Palantir’s software to analyze intelligence data to better understand emerging

16

threats.

17

16.

Palantir’s success is due in part to its early recognition that many organizations are

18

traditionally unable to leverage insights from their internal data because the data is held in

19

separate silos that are often disconnected and have different access, security controls, and privacy

20

requirements. When information is siloed—that is, when important information is stored in

21

containerized, unrelated units—businesses and government cannot fully realize the potential of

22

that data. Palantir provides software solutions that avoid this problem, allowing users to run their

23

businesses consistent with the actual environment in which they operate.

24

products are used to fuse and analyze customer data across platforms and sources and enable

25

secure collaboration among analysts, while protecting data privacy and security.

26
27

17.

Thus, Palantir’s

As is expected in this type of work, Palantir is also heavily involved in research

and development. Palantir spends millions of dollars each year to expand its business and seek

28
4
COMPLAINT

1

out new opportunities—and to stay ahead of the curve and atop the industry. This research and

2

development investment involves both creating new software, technologies and processes as well

3

as adapting existing products and technologies to new applications and uses.
Abramowitz’s Relationship with Palantir

4
5

18.

Initial funding for Palantir came from a variety of sources, including the

6

company’s founders who remain with Palantir today as shareholders of common shares of

7

Palantir stock. Abramowitz, through KT4 and other entities he controls, was an early investor in

8

Palantir, first investing in the company in 2005.

9

19.

Through the years, Abramowitz was involved with the business of Palantir.

10

Rather than acting as a passive investor, he became a regular fixture at Palantir. He established

11

relationships with the company’s founders, officers, and employees. As a result, he was viewed

12

as a trusted figure by the company, including its several founders and senior employees.

13

Abramowitz fostered these relationships of confidence and held himself out as a friend of Palantir

14

whose interests were completely aligned with the company. He made clear that he could be

15

trusted to keep confidences and act in the company’s best interests.

16

20.

Indeed, Abramowitz spent so much time at Palantir that in 2014 he asked for an

17

office. Between 2010 and 2015, Abramowitz visited Palantir offices over thirty times. When

18

Abramowitz had questions about Palantir’s business, including financial information, that were

19

relevant to his status as a shareholder and trusted advisor to the company, he was provided with

20

the information.

21

21.

In this context, Abramowitz often inquired about specific Palantir projects. On

22

several occasions, Palantir provided information to Abramowitz about concepts for new

23

technology and/or new use cases for existing technology that Palantir had spent significant time

24

and resources researching, developing and testing. Palantir always provided any information to

25

Abramowitz with the express and reasonable expectation that Abramowitz would maintain its

26

confidentiality and would never pass Palantir’s ideas off as his own or use the information to

27

Palantir’s detriment without Palantir’s knowledge or permission.

28
5
COMPLAINT

Abramowitz’s Agreements Not to Violate Confidentiality

1
2

22.

In addition to relying on the confidential nature of its communications with

3

Abramowitz, Palantir also protected its confidential information and trade secrets through written

4

agreements.

5

23.

In

an

August

14,

2012

Preferred

Stock

Transfer

Agreement,

6

Abramowitz agreed “to keep confidential and refrain from using or disclosing all agreements,

7

documents and other information regarding the Company or its securityholders provided or made

8

available to [Abramowitz]…in [his] capacity as a stockholder of the Company….” ( 2012 PSTA

9

at ¶ 7.) Abramowitz renewed that agreement in a June 17, 2015 Preferred Stock Transfer

10
11

Agreement. (2017 PSTA at 7.)
24.

In a June 17, 2015 Preferred Stock Transfer Agreement, KT4 similarly agreed “to

12

keep confidential and refrain from using or disclosing all agreements, documents and other

13

information regarding the Company or its securityholders provided or made available to

14

[Abramowitz]…in [his] capacity as a stockholder of the Company….” (2015 PSTA at ¶ 7.)

15

25.

In addition, during at least one of his visits to Palantir, on July 12, 2014,

16

Abramowitz executed an NDA (the “July 2014 NDA”) covering “Proprietary Information,”

17

which is defined in the NDA as “non-public business, technical or other information, materials

18

and/or ideas of Palantir [including] anything you learn or discover as a result of exposure to or

19

analysis of any Proprietary Information.” The NDA expressly forbids Abramowitz from using or

20

revealing any of Palantir’s Proprietary Information.

21
22

Abramowitz Misappropriation of Business Information and Trade Secrets
26.

By 2014, Abramowitz had embarked on an intentional and calculated scheme to

23

discover Palantir trade secrets and convert them to his own use and profit. In furtherance of his

24

scheme, during 2014 alone, Abramowitz was in contact with Palantir employees at least 34 times

25

and visited Palantir facilities at least 20 times. Pursuant to his scheme, Abramowitz violated the

26

trust Palantir put in him on at least three separate occasions.

27
28
6
COMPLAINT

1

27.

The first occasion of which Palantir is aware involves a Palantir idea concerning

2

clinical trials of drugs. Palantir had been working hard since 2011 on the best way to enter the

3

clinical trial space, including using Palantir’s technology and data analytics services to improve

4

the conduct of clinical trials of prescription drugs by pharmaceutical companies and academic

5

institutions.

6

28.

Palantir’s work in the field of clinical trials has been extensive, and the processes

7

and systems developed through that work were important company trade secrets. As part of its

8

research and development work, Palantir employees created white papers and presentations

9

describing the ideas and projects they were working on. Palantir also signed on customers to help

10
11

drive the project from the research side into the market.
29.

Abramowitz learned from Palantir about Palantir’s work in the area of clinical

12

trials and, in February 2014, sought to broker a deal between Palantir and a customer to take

13

something to market. Through his conversations with Palantir on the subject and the confidential

14

access Palantir granted him to documents describing Palantir’s research and development work,

15

Abramowitz learned the details of the work Palantir had been doing in the area for years.

16

Abramowitz misappropriated Palantir’s inventions in this space and has attempted to patent them

17

as his own.

18

30.

On October 29, 2014, without Palantir’s knowledge or consent, Abramowitz filed

19

Provisional Application No. 62/072,368 with the United States Patent and Trademark Office

20

(“USPTO”) seeking to patent the idea developed by Palantir and explained to Abramowitz in

21

confidence. The application falsely identifies Abramowitz as the inventor, includes no mention

22

of Palantir at all, and fails to list a single Palantir employee as an inventor.

23

31.

In the second occurrence where Palantir knows Abramowitz abused his position of

24

trust to further his scheme, Abramowitz participated in discussions about an idea for using

25

Palantir’s cyber security technology to improve the ability of insurance companies to provide

26

insurance to retailers and other institutions against the potential harm caused by data breaches and

27

other cybercrimes.

28
7
COMPLAINT

1

32.

In June 2014, a Palantir executive disclosed to Abramowitz during a conversation

2

that Palantir was working on opportunities in the insurance industry.

3

expressed interest in the concept and requested additional information, the Palantir executive

4

arranged for Abramowitz to speak with another Palantir executive, who sent Abramowitz some

5

information on the idea via email and invited Abramowitz to meet with him at Palantir’s offices

6

to discuss the idea.

7

executive described two related concepts that Palantir had developed relating to cyber security

8

insurance and the use of customer consortia to improve cyber security, as well as the Palantir

9

technology that could be used to implement them.

10

33.

When Abramowitz

During his June 2014 meeting with Abramowitz, the second Palantir

When Abramowitz next met with Palantir on the subject, he indicated he was

11

interested in setting up a Palantir subsidiary that he would run to perform the insurance-related

12

function Palantir had revealed to him, further confirming that his participation in the discussions

13

were solely for the benefit and interest of Palantir.

14

suggestion.

15

34.

Palantir did not pursue Abramowitz’s

Without Palantir’s knowledge, on October 21, 2014, Abramowitz filed Provisional

16

Application No. 62/066,716 at the USPTO attempting to patent the ideas he learned about in

17

confidence through his conversations with Palantir executives and claiming to be the invention’s

18

sole owner and inventor. To read Abramowitz’s application, one would never suspect Palantir

19

had anything to do with the idea at all, as Abramowitz fails to mention Palantir and does not

20

include a single Palantir employee as an inventor.

21

35.

However, presumably unbeknownst to Abramowitz, Palantir had already filed its

22

own patent application on the invention in February 2014, months before Abramowitz learned of

23

the idea from Palantir. That application resulted in United States Patent No. 9009827 (the “'827

24

Patent”), owned by Palantir and invented by Palantir employees.

25

Palantir’s valid patent and Abramowitz’s application are stunning. Even a cursory reading of the

26

abstract of the '827 Patent issued to Palantir and the application filed by Abramowitz reveals that

27

they are the same invention—one which Abramowitz misappropriated from Palantir.

28
8
COMPLAINT

The similarities between

1

36.

Abramowitz’s scheme is clearly revealed through his filing of two patent

2

applications within ten days of one another seeking to secure sole inventorship over ideas he

3

learned from Palantir in confidence.

4

misappropriate Palantir’s ideas in at least one more, third area. After discussions with Palantir

5

employees concerning Palantir’s work on adapting its data analysis technology for use in oil and

6

gas exploration, Abramowitz filed Provisional Application No. 62/094,888 with the USPTO,

7

seeking to patent as sole owner and inventor the ideas he learned from Palantir concerning

8

Palantir’s work in this area. As with his other applications described above, Abramowitz filed the

9

application without Palantir’s knowledge or consent and failed to credit Palantir or its employees

10
11

Abramowitz continued his concerted scheme to

in any way.
37.

Through his months-long scheme, Abramowitz intentionally abused his status as a

12

trusted investor at Palantir in an attempt to profit at Palantir’s expense by taking multiple ideas

13

from Palantir and attempting to patent them as his own. Although, on information and belief,

14

Abramowitz does not have the resources, technology, or experience to market the ideas

15

effectively, he could attempt to use the patent applications or any issued patents to hold Palantir

16

hostage in exchange for royalties. Abramowitz’s actions are causing Palantir irreparable harm,

17

and Palantir is therefore separately seeking to have Abramowitz’s patent applications denied by

18

the USPTO.

19

38.

The patent applications are not the only indication that Abramowitz has

20

misappropriated information and access to attempt to profit at Palantir’s expense. Palantir’s

21

company name is inspired by the “seeing stones” referenced in The Lord of the Rings. Without

22

Palantir’s knowledge, Abramowitz filed for a trademark on the mark “Shire,” which is also

23

referenced in The Lord of the Rings as the place where one of the main characters lives. It is

24

clear that Abramowitz has filed this trademark application in an attempt to further improperly

25

associate himself with what he views as the Palantir brand.

26
27

39.

Furthermore, Abramowitz has filed this trademark application with an intent to use

the mark in connection with “underwriting and administration of cyber liability insurance;

28
9
COMPLAINT

1

underwriting and administration of cyber security insurance; insurance brokerage in the field of

2

cyber liability and cyber security insurance.” He has claimed he intends to use the mark for the

3

aforementioned goods and services despite knowing that the aforementioned goods and services

4

are services offered by, or intended to be offered by, Palantir, from whom he misappropriated

5

confidential and proprietary ideas and information in these areas.

6
7

Abramowitz Demands Information Under the Investors’ Rights Agreement
40.

In furtherance of his scheme, on August 16, 2016, KT4, through counsel at

8

Williams & Connolly LLP, sent Palantir a letter (the “Demand Letter”) demanding information

9

pursuant to the Investors’ Rights Agreement (as amended most recently on September 1, 2016,

10

the “IRA”). Under the February 15, 2008 version of the IRA (the “February IRA”) invoked by

11

Abramowitz in his letter, and the July 8, 2015 version in effect at the time Abramowitz sent his

12

letter (the “July IRA”), the agreement granted certain rights to receive information from Palantir

13

to anyone who was a “Major Investor” in Palantir, defined in Section 2.1 of the IRA as any

14

investor that holds “at least 5,000,000 shares of” certain types of Palantir stock.

15

41.

In the Demand Letter, KT4 purports to be a Major Investor of Palantir and

16

demands that Palantir produce documents and provide information to its counsel pursuant to

17

Sections 2.1 and 2.2 of the February IRA. Neither IRA, however, provides any right for counsel

18

or anyone other than a Major Investor to receive the information.

19

Palantir Scrupulously Protects Its Confidential Information and Trade Secrets

20

42.

Palantir undertakes significant efforts to protect the confidentiality and security of

21

its trade secrets, property (including physical locations, intellectual property, and network

22

security), as well as sensitive and confidential business and financial information.

23

confidential information is not generally known to the public and provides actual and potential

24

economic value to Palantir from not being generally known to the public or to Palantir’s

25

competitors.

26
27

43.

This

Palantir employs both technical and physical safety measures to maintain the

security of its property and confidential information. Among other things, Palantir restricts

28
10
COMPLAINT

1

employees’ access to sensitive internal information such that individual employees can only

2

access such data after obtaining appropriate authorization and only to the extent necessary to

3

perform their jobs. Additionally, Palantir employs a multitude of technical security measures to

4

protect its systems and networks, including, among other methods: intrusion detection systems,

5

network monitoring tools, anti-malware software, network firewalls, and whole disk encryption

6

of employee computers, among other measures. Palantir’s network and security systems are also

7

continually monitored for potential security risks. To secure access to information and data no

8

matter where employees are, Palantir uses and requires complex password requirements and two-

9

factor authentication for access to its hardware and its network.

10

44.

In addition to data and network security, physical access to Palantir’s facilities is

11

also highly restricted. Palantir employees must use electronic badges to access Palantir facilities.

12

Access to certain sensitive areas of Palantir’s facilities is further restricted to a small subset of

13

Palantir employees with a specific need for access (including, for example, Palantir facilities

14

containing network servers and security equipment, among others). Visitors must be invited to

15

Palantir facilities, must sign in and wear a visitor badge and are escorted at all times. In addition,

16

certain areas of Palantir’s facilities are off limits to visitors, and Palantir deploys security guards

17

to protect its facilities.

18

45.

Palantir also implements numerous measures and policies to ensure that its

19

employees safeguard the confidentiality and security of its trade secrets and sensitive and

20

confidential business information.

21

employment background checks for all new employees and also requires legal training for new

22

hires, covering confidentiality, information and data security, and compliance.

As part of the hiring process, Palantir requires pre-

23

Palantir and Major Investors Amend the IRA to Protect Palantir, its Employees, and

24

Shareholders from Malicious Actors

25
26

46.

Having discovered Abramowitz’s actions described above betraying Palantir’s

trust and misappropriating its trade secrets—and fearing more such betrayals and breaches of

27
28
11
COMPLAINT

1

confidence that remain undiscovered—Palantir could no longer trust Abramowitz with its

2

confidential information, including the information demanded by KT4 in the Demand Letter.

3

47.

To protect Palantir—as well as its employees, former employees, investors, and

4

other shareholders—from the malicious acts of Defendants, on September 1, 2016, Palantir and a

5

group of its Major Investors holding a majority of the Registrable Securities held by Major

6

Investors invoked their rights under Section 3.7 of the July IRA to amend the agreement (the

7

“Amendment”). Even assuming KT4 was a Major Investor with rights under Sections 2.1 and 2.2

8

of the July IRA, which Palantir does not concede, KT4 has no such rights under the current IRA,

9

and the Amendment is expressly retroactive in its effect, as permitted by Section 3.7.

10

48.

Palantir did not take this action lightly, but after receiving the Demand Letter and

11

noting the nefarious activities of Defendants through their access as investors, Palantir determined

12

that it was necessary to act to protect itself and others from the harmful actions of Defendants.

13

Palantir regularly and frequently works with investors, upon request, to provide relevant

14

information corresponding to their status as a shareholder, subject to confidentiality obligations.

15

As it has done in responding to Abramowitz’s reasonable questions in the past, Palantir stands

16

ready to do the same with KT4 upon a showing that such requests are being made in good faith

17

and with no improper purpose.
Harm to Palantir

18
19
20
21

49.

As a result of Defendants’ actions, Palantir has been and will continue to be

injured in an amount to be established according to proof.
50.

As a result of Abramowitz’s unauthorized copying, theft, and misappropriation of

22

Palantir’s confidential and proprietary information and trade secrets as well as his co-opting of

23

Palantir’s work developing technology and ideas and subsequently passing them off as his own,

24

Palantir has been and will continue to be injured absent equitable relief.

25
26
27
28
12
COMPLAINT

1

FIRST CAUSE OF ACTION

2

(Breach of Contract – Against All Defendants)

3
4
5

51.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 50.
52.

Defendants’ contracts with Palantir, including, inter alia, the Transfer Agreements

6

and the July 2014 NDA (the “Confidentiality Contracts”), imposed a contractual obligation on

7

Defendants to maintain the confidentiality of information learned or accessed as a result of

8

Defendants’ investments in Palantir, Abramowitz’s visits to Palantir’s offices, and his discussions

9

with Palantir employees.

10
11
12
13
14

53.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

contract and all conditions precedent to its enforcement have been performed by Palantir.
54.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
55.

Under the Confidentiality Contracts, Defendants agreed to hold in strictest

15

confidence, and not to use, except for the benefit of the Company, any information they obtain or

16

access as investors or during visits or discussions.

17

56.

Defendants breached the Confidentiality Agreements when Abramowitz used the

18

information and ideas he learned from Palantir employees to file patent applications listing

19

himself as sole inventor of Palantir’s ideas that he learned in confidence, as well as a trademark

20

application on “Shire.”

21

57.

As a direct and proximate result of Defendants’ wrongful conduct, Palantir has

22

been harmed and is being forced to take expensive steps to reduce and mitigate that harm,

23

including opposing Abramowitz’s patent and trademark applications.

24
25

58.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.

26
27
28
13
COMPLAINT

1

SECOND CAUSE OF ACTION

2

(Breach of the Implied Covenant of Good Faith and Fair Dealing– Against All Defendants)

3
4

59.

Plaintiff repeats and realleges paragraphs 1 through 58 above as though fully set

forth herein.

5

60.

California law implies a covenant of good faith and fair dealing in all contracts.

6

61.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

7
8
9
10

contract and all conditions precedent to its enforcement have been performed by Palantir.
62.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
63.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

11

the Transfer Agreements and July 2014 NDA by, among other things, misappropriating and using

12

Plaintiff’s proprietary, confidential, and trade secret information and falsely claiming to have

13

invented Palantir’s inventions.

14
15
16
17

64.

Defendants have breached and violated its implied covenant of good faith and fair

dealing.
65.

As a result of that breach by Defendants, Plaintiff has suffered monetary damages

in an amount to be quantified at trial.

18

THIRD CAUSE OF ACTION

19

(Violation of Cal. Civ. Code § 3426 et seq. – Against Abramowitz)

20
21
22

66.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 65.
67.

Palantir’s confidential and proprietary information pertaining to its projects,

23

including those concerning use of data analysis in the cyber security insurance, clinical trial and

24

natural resources exploration contexts, constitute protectable trade secrets as set forth in

25

California Civil Code § 3426.1(d).

26
27

68.

Palantir’s confidential and proprietary information derives independent economic

value, actual or potential, from not being generally known to the public or to other persons who

28
14
COMPLAINT

1

can obtain economic value from their disclosure or use as set forth in California Civil Code

2

§ 3426.1(d)(1).

3

69.

Palantir’s confidential and proprietary information is the subject of efforts that are

4

reasonable under the circumstances to maintain their secrecy as set forth in California Civil Code

5

§ 3426.1(d)(2).

6
7
8
9

70.

Palantir did not consent to the use of any of its trade secrets by anyone other than

authorized employees using them for Palantir’s business purposes.
71.

Abramowitz willfully and intentionally misappropriated Palantir’s trade secrets

when, inter alia, he filed patent and trademark applications claiming inventorship and ownership

10

of Palantir’s ideas. Palantir is informed and believes that Abramowitz has used Palantir’s trade

11

secret, confidential and/or proprietary information to develop a competing business or in

12

furtherance of that goal.

13
14
15

72.

Palantir is entitled to an injunction of both actual and threatened misappropriation

as set forth in California Civil Code § 3426.2(a).
73.

Palantir also requests that the court take affirmative acts to protect Palantir’s trade

16

secrets, as set forth in California Civil Code § 3426.2(c), including ordering an inspection of

17

Abramowitz’s personal computer(s), USB drives, email accounts, cloud storage accounts and

18

other sources and equipment by a forensics expert to determine whether Palantir’s trade secrets

19

were wrongfully taken and/or disseminated to others, and to ensure that no trade secrets

20

belonging to Palantir remain saved on those systems; and issue a writ of possession, a preliminary

21

injunction, and a permanent injunction ordering the return of Palantir’s confidential information

22

and prohibiting Abramowitz from continuing his unlawful actions.

23
24
25

74.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.
75.

Abramowitz’s conduct as alleged herein was willful, malicious and wanton, and

26

undertaken for the purpose of injuring or causing injury to Palantir. Palantir seeks exemplary and

27

punitive damages against Abramowitz.

28
15
COMPLAINT

1

FOURTH CAUSE OF ACTION

2

(Declaratory Relief – Against All Defendants)
76.

3
4

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 75.
77.

5

There presently exists a real and actual controversy between Palantir and KT4

6

regarding whether KT4 is entitled under the IRA to the information sought through the Demand

7

Letter.

8
9
10
11
12
13

78.

KT4 maintains that it is entitled to information under Sections 2.1 and 2.2 of the

IRA, and Palantir maintains that KT4 is not a “Major Investor” under the IRA, and therefore has
no such right.
79.

Defendants have acted with unclean hands by, among other things,

misappropriated Palantir’s trade secrets.
80.

A declaratory judgment is necessary and appropriate at this time to resolve the

14

controversy between the parties. Palantir therefore specifically requests a judgment declaring that

15

KT4 has no right to any information pursuant to Sections 2.1 or 2.2 of the IRA.

16

FIFTH CAUSE OF ACTION

17

(Violation of California’s Unfair Competition Law,

18

Cal. Bus. & Prof. Code Section 17200 et seq. – Against All Defendants)

19
20
21

81.

Plaintiff Palantir repeats and realleges paragraphs 1 through 80 above as though

fully set forth herein.
82.

Defendants have engaged in (and continues to engage in) the unlawful, fraudulent,

22

and unfair business acts and practices described throughout this Complaint in violation of

23

California’s Unfair Competition Law (the “UCL”), California Business and Professions Code,

24

Section 17200, et seq.

25

83.

Defendants’ business acts and practices were unlawful under the UCL because

26

they resulted in the violations of state common law described herein, including breach of contract

27

and breach of the implied covenant of good faith and fair dealing.

28
16
COMPLAINT

1

84.

Defendants’ business acts and practices were fraudulent because a reasonable

2

person would likely be deceived by Defendant’s false statements and claims, including that they

3

invented and own Palantir’s inventions.

4

85.

Defendants’ business acts and practices are unfair because the harm suffered by

5

Palantir described herein outweighs any justification that Defendants may assert for engaging in

6

those acts and practices. Moreover, Palantir could not have avoided the harm it suffered as a

7

result of Defendants’ unfair acts and practices because Defendants made every effort to obscure

8

and conceal from Palantir the existence and extent of its harmful acts and practices.

9
10
11
12
13
14

86.

Defendants’ unlawful, unfair and fraudulent business acts and practices were

carried out and effectuated in California and injured Plaintiff in California.
87.

Plaintiff suffered harm as herein alleged as a direct and proximate result of

Defendants’ unlawful, unfair and fraudulent business acts and practices.
88.

Plaintiff is entitled to an injunction enjoining Defendants from such further

violations of the UCL. Any such injunction will benefit Plaintiff and the general public.

15
PRAYER FOR RELIEF

16
17

WHEREFORE, Palantir respectfully requests the following relief:

18

1.

19
20

Judgment in favor of Palantir and against all Defendants on all of Palantir’s claims

asserted in the Complaint;
2.

For a preliminary injunction and permanent injunction restraining Defendants,

21

their officers, agents, servants, employees, and all persons acting in concert or participation with

22

them from:

23

a.

perpetuating the wrongful acts and conduct as set forth above;

24

b.

directly or indirectly retaining, using or disclosing Palantir’s trade secret,

25
26
27

confidential and/or proprietary information, and derivatives thereof;
c.

destroying any property, emails, documents or materials that are relevant or

potentially relevant to this action;

28
17
COMPLAINT

16CV299476

9/1/2016

/s/ Rowena Walker

E-FILED
9/1/2016 11:20:57 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

16CV299476
Peter H. Kirwan
1 / Complex

1
2
3
4
5
6
7
8
9

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
David Zifkin (SBN 232845)
([e-mail])
Shira Liu (SBN 274158)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]

E-FILED
9/23/2016 5:04:54 PM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

10
11
12

Additional counsel identified on signature page
Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

13
SUPERIOR COURT OF THE STATE OF CALIFORNIA
14
15
16
17
18
19
20
21
22
23
24
25
26

FOR THE COUNTY OF SANTA CLARA
UNLIMITED JURISDICTION
PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)

Case No. 16CV299476
FIRST AMENDED COMPLAINT FOR:
(1) Breach of Contract
(2) Breach of the Implied Covenant of Good
Faith and Fair Dealing
(3) Violation of Cal. Civ. Code § 3426 et seq.
(4) Declaratory Relief
(5) Violation of California’s Unfair
Competition Law, Cal. Bus. & Prof. Code §
17200 et seq.
JURY TRIAL DEMAND
Complaint Filed: September 1, 2016
Trial Date: Not set

27
28
FIRST AMENDED COMPLAINT

1

Plaintiff Palantir Technologies Inc. (“Palantir”), for its First Amended Complaint against

2

defendants Marc L. Abramowitz (“Abramowitz”), both in his individual capacity and as trustee of

3

the Marc Abramowitz Charitable Trust No. 2 (the “Trust”), KT4 Partners LLC (“KT4”), and

4

Does 1 through 50 (collectively with Abramowitz, KT4, and the Trust, “Defendants”), alleges as

5

follows:
NATURE OF THE ACTION

6
7

1.

This is an action to stop Defendants from misappropriating Palantir’s confidential

8

information and proprietary trade secrets for their own benefit and to prevent them from receiving

9

any additional confidential or proprietary information from Palantir pursuant to an Investors’

10
11

Rights Agreement.
2.

Abramowitz was a respected confidant and advisor to Palantir and its senior

12

executives until he betrayed the trust they bestowed upon him for his own personal gain. He was,

13

through KT4 and other entities, an early equity investor in Palantir who personally engaged in

14

regular discussions with executives about some of the company’s most sensitive business

15

strategies and trade secrets. Those discussions were highly confidential, as was made clear by

16

express written agreements among the parties at the time and a course of dealing based on the

17

most basic principles of fairness and honesty between a trusted shareholder and advisor and

18

Palantir’s management and business personnel.

19

3.

Nonetheless, as part of brazen scheme to claim Palantir’s own highly confidential

20

information and trade secrets as his own, Abramowitz stole those secrets, engaged in methodical

21

deception of Palantir’s senior executives, and made false claims to the United States Patent and

22

Trademark Office (USPTO). Abramowitz’s claim to be a patent innovator is directly

23

contradicted by the facts surrounding his professional career and his interactions with Palantir.

24

4.

To start, Abramowitz has no notable history as an inventor or patent innovator in

25

the data analysis area. He has made most of his career and fortune in real estate and buyout

26

investing. Yet, beginning in 2014, Abramowitz suddenly filed five patent applications with the

27

USPTO, all of them based on trade secrets he stole from Palantir. This was plainly illegal and

28

highly unethical conduct, and it was a betrayal of his trusted relationship with Palantir and its
1
FIRST AMENDED COMPLAINT

1
2

executives.
5.

But Abramowitz’s scheme did not end there. After stealing from Palantir, he hired

3

lawyers to demand from Palantir sensitive and confidential information about the company,

4

including its finances and business dealings, which Palantir considers to be, and treats as, highly

5

sensitive and confidential. Having uncovered Abramowitz’s breach of Palantir’s trust (and of his

6

contractual obligations to Palantir under multiple agreements), it is apparent that Abramowitz is

7

not seeking this information in good faith or for a proper purpose. In fact, unlike Palantir’s other

8

investors, history has shown that Abramowitz has and will misuse any information provided to

9

him in breach of confidence, causing Palantir irreparable harm in the process.

10

6.

Palantir now has been forced to protect itself, both through amendments to its

11

corporate documents, through actions before the USPTO, and through this action, by which

12

Palantir seeks redress for Abramowitz’s breaches of contract, breaches of confidence, and misuse

13

of Palantir’s confidential and proprietary information and trade secrets. Further, to protect

14

Palantir and its shareholders—including employees, former employees and other investors—from

15

continued breaches of confidence in the future, Palantir seeks a declaratory judgment that

16

Abramowitz has no right to the information he has demanded under the Investors’ Rights

17

Agreement.
PARTIES, JURISDICTION, AND VENUE

18
19
20
21

7.

The Court has jurisdiction over this action by virtue of Article VI § 10 of the

California Constitution and California Code of Civil Procedure § 410.10.
8.

Palantir is a Delaware corporation with its principal place of business at 100

22

Hamilton Avenue, Palo Alto, California, 94301. Palantir has suffered, and continues to suffer,

23

injury in this jurisdiction by reason of Defendants’ actions.

24

9.

Palantir is informed and believes and on that basis alleges that defendant Marc L.

25

Abramowitz is an individual residing in San Francisco, California. Palantir is informed and

26

believes and on that basis alleges that Abramowitz is the trustee of the Marc Abramowitz

27

Charitable Trust No. 2. The wrongful actions of Abramowitz occurred in, were targeted to, and

28

caused damage in, California.
2
FIRST AMENDED COMPLAINT

10.

1

Palantir is informed and believes and on that basis alleges that defendant KT4

2

Partners LLC is a Delaware limited liability company with its principal place of business in San

3

Francisco, California. On information and belief, KT4 does business in California and has

4

committed acts that submit it to the jurisdiction of California’s courts. Upon information and

5

belief, Abramowitz is the sole member of KT4 and controls and directs the activities of KT4. The

6

wrongful actions of KT4 occurred in, were targeted to, and caused damage in, California.
11.

7

Palantir is ignorant of the true names of Does 1 through 50 and such names are

8

fictitious. Such defendants are legally responsible for the events and happenings described herein

9

and for the damages proximately caused thereby. Once Palantir learns of the true names of Does

10

1 through 50, Palantir will amend the complaint to include the real name(s) of such party or

11

parties.

12

12.

This action is founded on injuries and damages suffered by Palantir in Santa Clara

13

County by virtue of the Defendants’ misappropriation of trade secrets, breach of contract, breach

14

of confidence and other illegal and wrongful acts as alleged in this Complaint. Venue is proper in

15

this Court because Plaintiff resides in this County, the harm caused by Defendants occurred in

16

this County, and the events that form the basis for this Complaint largely took place in this

17

County.

18

FACTUAL BACKGROUND

19

Palantir’s Business and the Trade Secrets at Issue

20

13.

Palantir is a software and services company that specializes in data analytics. In

21

2004, Palantir was founded on a vision: to provide solutions not only to problems then faced by

22

business and government, but also solutions to problems that did not yet exist, but that would

23

surely come to be as part of our rapidly-evolving world. It sought to make this vision a reality by

24

the use of technology. And it embarked on an ambitious, time-consuming, and costly endeavor to

25

create a viable, successful business. As a result of hard work and investment, Palantir has

26

succeeded and is now a leader in its industry. Today, Palantir’s products are deployed at the most

27

critical government, commercial, and non-profit institutions in the world to solve problems the

28

company’s founders had not even dreamed of back in 2004.
3
FIRST AMENDED COMPLAINT

14.

1

In particular, at its founding Palantir set out to create products that would

2

transform the way organizations use, perhaps their most important asset in today’s business

3

world, data. Palantir’s mission has been and remains to develop flexible tools and services to

4

provide human-driven analysis of real-world data, with a focus on creating the world’s best user

5

experience for working with data. To achieve this, Palantir builds platforms for integrating,

6

managing, and securing data, on top of which it layers applications for fully interactive, human-

7

driven, machine-assisted analysis.

8

services that allow businesses, governments and other entities to run their operations in a way that

9

corresponds with the reality of their marketplace and consumers.
15.

10

This means that Palantir develops programs and provides

Businesses and governments use Palantir’s software to interpret and visualize large

11

quantities of information from various sources. For example, businesses use Palantir’s software

12

to analyze their internal and externally available data to better assess cyber risks, and government

13

agencies use Palantir’s software to analyze intelligence data to better understand emerging

14

threats.

15

16.

Palantir’s success is due in part to its early recognition that many organizations are

16

traditionally unable to identify problems and leverage insights from their internal data because the

17

data is held in separate silos that are often disconnected and have different access, security

18

controls, and privacy requirements.

19

information is stored in containerized, unrelated units—businesses and governments cannot fully

20

realize the potential of that data. Palantir provides software solutions that avoid this problem,

21

allowing users to run their businesses consistent with the actual environment in which they

22

operate. Thus, Palantir’s products are used to fuse and analyze customer data across platforms

23

and sources and enable secure collaboration among analysts, while protecting data privacy and

24

security.

25

17.

When information is siloed—that is, when important

As is expected in this type of work, Palantir is also heavily involved in research

26

and development. Palantir spends millions of dollars each year to expand its business and seek

27

out new opportunities—and to stay ahead of the curve and atop the industry. This research and

28

development investment involves both creating new software, technologies and processes and
4
FIRST AMENDED COMPLAINT

1
2

adapting existing products and technologies to new applications and uses.
18.

As described in more detail below, this litigation concerns, among other things,

3

Defendants’ misappropriation of Palantir’s proprietary trade secret and business information

4

concerning Palantir’s technologies and/or use cases for (i) interpreting and analyzing data in the

5

healthcare space for clinical drug trials and for health insurance risk assessments (the “Healthcare

6

Technology”); (ii) cyber insurance technology and related cybersecurity technology for use of

7

customer consortia to improve cybersecurity; (the “Cyber Insurance and Cybersecurity

8

Technology”); and (iii) interpreting and analyzing data in connection with natural resources

9

exploration and management (the “Natural Resources Exploration Technology”). It also concerns

10

Defendants’ misappropriation of Palantir’s trade secret business plans and customer lists related

11

to these technologies. Palantir employed reasonable efforts to maintain the secrecy of these trade

12

secrets, which have had substantial economic value because they were not generally known to the

13

public or others in the industry at the time of Defendants’ misappropriation.

14

Palantir Scrupulously Protects Its Confidential Information and Trade Secrets

15

19.

Palantir undertakes significant efforts to protect the confidentiality and security of

16

its trade secrets, property (including physical locations, intellectual property, and network

17

security), as well as sensitive and confidential business and financial information.

18

20.

Palantir employs both technical and physical safety measures to maintain the

19

security of its property and confidential information. Among other things, Palantir restricts

20

employees’ access to sensitive internal information such that individual employees can only

21

access such data after obtaining appropriate authorization and only to the extent necessary to

22

perform their jobs. Additionally, Palantir employs a multitude of technical security measures to

23

protect its systems and networks, including, among other methods: intrusion detection systems,

24

network monitoring tools, anti-malware software, network firewalls, and whole disk encryption

25

of employee computers. Palantir’s network and security systems are also continually monitored

26

for potential security risks. To secure access to information and data no matter where employees

27

are, Palantir uses and requires complex password requirements and two-factor authentication for

28

access to its hardware and its network.
5
FIRST AMENDED COMPLAINT

1

21.

In addition to data and network security, physical access to Palantir’s facilities is

2

also highly restricted. Palantir employees must use electronic badges to access Palantir facilities.

3

Access to certain sensitive areas of Palantir’s facilities is further restricted to a small subset of

4

Palantir employees with a specific need for access (including, for example, Palantir facilities

5

containing network servers and security equipment, among others). Visitors must be invited to

6

Palantir facilities, must sign in and wear a visitor badge and are escorted at all times. In addition,

7

certain areas of Palantir’s facilities are off limits to visitors, and Palantir deploys security guards

8

to protect its facilities.

9

22.

Palantir also implements numerous measures and policies to ensure that its

10

employees safeguard the confidentiality and security of its trade secrets and sensitive and

11

confidential business information.

12

employment background checks for all new employees and also requires legal training for new

13

hires, covering confidentiality, information and data security, and compliance.
Abramowitz’s Relationship with Palantir

14
15

As part of the hiring process, Palantir requires pre-

23.

Initial funding for Palantir came from a variety of sources, including the

16

company’s founders who remain with Palantir today as shareholders of common shares of

17

Palantir stock. Abramowitz, through KT4 and other entities he controls, was an early investor in

18

Palantir, first investing in the company in 2005.

19

24.

Through the years, Abramowitz was involved with the business of Palantir.

20

Rather than acting as a passive investor, he became a regular fixture at Palantir. Between 2010

21

and 2015, Abramowitz visited Palantir offices over thirty times. Indeed, Abramowitz spent so

22

much time at Palantir that in 2014 he requested an office at the company.

23

25.

Abramowitz established relationships with the company’s founders, officers, and

24

employees. As a result, he was viewed as a trusted investor and advisor by the company,

25

including several founders and senior employees. Abramowitz fostered these relationships of

26

confidence and held himself out as a friend of, advisor to, and investor in Palantir, whose interests

27

were completely aligned with the company. He made clear that he could be trusted to keep

28

confidences and act in the company’s best interests. When Abramowitz had questions about
6
FIRST AMENDED COMPLAINT

1

Palantir’s business, including financial information, that were relevant to his status as a

2

shareholder and trusted advisor to the company, he was provided with the information.
26.

3

In this context, Abramowitz often inquired about specific Palantir projects. On

4

several occasions, Palantir provided information to Abramowitz in his capacity as a shareholder

5

and advisor about concepts for new technology and use cases for technology that Palantir had

6

spent significant time and resources researching, developing and testing, including the Healthcare

7

Technology, Cyber Insurance and Cybersecurity Technology, and Natural Resources Exploration

8

Technology.

9

proprietary business plans and customer lists for these technologies. Palantir always provided

10

any such information to Abramowitz with the express and reasonable expectation that

11

Abramowitz would maintain its confidentiality, that he would never pass Palantir’s concepts and

12

trade secrets off as his own, and that he would never use the information to Palantir’s detriment or

13

without Palantir’s permission.
27.

14
15

At Abramowitz’s request, Palantir also provided him with information about

Consistent with the confidential nature of these communications, Palantir and

Abramowitz entered into confidentiality agreements.
28.

16

For example, in a Preferred Stock Transfer Agreement, dated August 14, 2012,

17

Abramowitz agreed “to keep confidential and refrain from using or disclosing all agreements,

18

documents and other information regarding the Company or its securityholders provided or made

19

available to [Abramowitz]…in [his] capacity as a stockholder of the Company….” Abramowitz

20

renewed that confidentiality agreement in a Preferred Stock Transfer Agreement, dated June 17,

21

2015.

22

29.

Similarly, in a Preferred Stock Transfer Agreement also dated June 17, 2015, KT4

23

agreed “to keep confidential and refrain from using or disclosing all agreements, documents and

24

other information regarding the Company or its securityholders provided or made available to

25

[Abramowitz]…in [his] capacity as a stockholder of the Company….”

26

30.

Abramowitz also executed an NDA, dated July 12, 2014 (the “July 2014 NDA”),

27

covering “Proprietary Information,” which is defined in the NDA as “non-public business,

28

technical or other information, materials and/or ideas of Palantir [including] anything you learn or
7
FIRST AMENDED COMPLAINT

1

discover as a result of exposure to or analysis of any Proprietary Information.” The NDA

2

expressly forbids Abramowitz from using or revealing any of Palantir’s Proprietary Information.

3
4

Abramowitz Misappropriation of Business Information and Trade Secrets
31.

By 2014, Abramowitz had embarked on an intentional and calculated scheme to

5

discover Palantir trade secrets and convert them for his own use and profit. Abramowitz violated

6

the trust Palantir put in him by, at a minimum, misappropriating the above-described trade secrets

7

related to the Healthcare Technology, the Cyber Insurance and Cybersecurity Technology, and

8

the Natural Resources Exploration Technology.

9

32.

The Healthcare Technology. Since 2010, Palantir worked extensively to identify

10

the most effective way to enter and advance the clinical trial space. As a result of this work,

11

Palantir developed proprietary and trade secret technology and data analytics services to improve

12

the design of clinical trials of prescription drugs by pharmaceutical companies and academic

13

institutions. For example, this proprietary technology and data analytics services can interpret

14

and analyze various data for purposes of patient recruitment in clinical trial. In conjunction with

15

developing this technology, Palantir developed proprietary business plans, customer lists and use

16

cases that are also trade secrets.

17

confidentiality of these trade secrets.

18

33.

Palantir has made reasonable efforts to maintain the

In the healthcare space, Palantir also worked extensively to develop proprietary

19

technology and data analytic services to perform insurance risk assessments, including, for

20

example, patient diagnoses not accounted for by health insurance companies and healthcare fraud

21

risks. In conjunction with developing this technology, Palantir developed proprietary business

22

plans, customer lists and use cases that are also trade secrets. Palantir has made reasonable

23

efforts to maintain the confidentiality of these trade secrets.

24

34.

As a trusted investor and advisor, Abramowitz learned proprietary trade secret

25

information concerning the Healthcare Technology through his communications with Palantir

26

about Palantir’s research and development work, technology, business plans, use cases, and

27

customer lists in this area.

28

35.

At all times, Abramowitz knew that this information was confidential and
8
FIRST AMENDED COMPLAINT

1

proprietary, and that he needed Palantir’s permission before disclosing any of it. As described

2

above, Abramowitz entered into confidentiality agreements with Palantir. Moreover, in his

3

communications with Palantir, Abramowitz made clear that he understood the information

4

Palantir provided to him was confidential.

5

36.

In February 2014, Abramowitz sought to broker a deal between Palantir and a

6

customer. Had the introduction resulted in a finalized deal, Abramowitz would have received a

7

fee for the introduction. Consistent with the confidential nature of their communications, the

8

draft agreement between Abramowitz and Palantir for this fee contains a confidentiality

9

provision. Even though this potential customer understood that it was also obligated to maintain

10

the confidentiality of any information received, Palantir advised Abramowitz that he could

11

provide this potential customer only with limited information.

12

37.

After it was clear that the introduction would not result in a finalized deal – and

13

despite knowing that Palantir invented the Healthcare Technology and that it was confidential

14

trade secret information – Abramowitz misappropriated Palantir’s inventions and trade secrets in

15

this space, has improperly disclosed them in an effort to profit from them, and has attempted to

16

patent them as his own.

17

38.

On October 29, 2014, without Palantir’s knowledge or consent, Abramowitz filed

18

Provisional Application No. 62/072,368 with the United States Patent and Trademark Office

19

(“USPTO”) seeking to patent systems, methods and concepts concerning the Healthcare

20

Technology that were developed by Palantir and explained to Abramowitz in confidence. The

21

application falsely identifies Abramowitz as the sole inventor of the Healthcare Technology,

22

includes no mention of Palantir at all, and fails to list a single Palantir employee as an inventor.

23

39.

On information and belief, in his effort to market the Healthcare Technology as his

24

own and to profit from it, Abramowitz has also improperly disclosed trade secret information

25

related to the Healthcare Technology to others.

26

40.

In addition to misappropriating Palantir’s trade secret Healthcare Technology,

27

Defendants breached their confidentiality agreements when they filed the patent application and

28

disclosed Palantir’s confidential information to others.
9
FIRST AMENDED COMPLAINT

1

41.

The Cyber Insurance and Cybersecurity Technology. Palantir engaged in

2

research and development to build technology to assist companies in the cyber insurance and

3

cybersecurity space. Beginning in 2013, Palantir began developing trade secret systems and

4

methods for companies to better defend themselves against cyberattacks to their networks by

5

sharing cyberattack data among various participants in Palantir’s system. Palantir developed

6

trade secret technology, business plans, use cases, and customer lists to implement these

7

cybersecurity systems and methods. Palantir often referred to this project as “CyberMesh” or

8

“Cyber Consortium.” Additionally, Palantir developed related systems, methods, technologies,

9

business plans, uses cases, and customer lists that were specific to improving cyber insurance.

10

For example, Palantir expanded upon its existing cyber security technologies to develop

11

technology to more accurately measure the risk of a cyberattack and thus enable insurers to

12

provide products to protect customers against the risk of cyberattacks.

13

reasonable efforts to maintain the confidentiality of these trade secrets.

14
15
16

42.

Palantir has made

Abramowitz requested information and participated in discussions about Palantir’s

Cyber Insurance and Cybersecurity Technology trade secrets.
43.

In June 2014, a Palantir executive disclosed to Abramowitz during a conversation

17

that Palantir was working on opportunities in the insurance industry, including opportunities

18

related to cyber insurance. When Abramowitz expressed interest in these concepts and requested

19

additional information, the Palantir executive arranged for Abramowitz to speak with another

20

Palantir executive, who sent Abramowitz trade secret information on these concepts via email and

21

invited Abramowitz to meet with him at Palantir’s offices to discuss them. During his June 2014

22

meeting with Abramowitz, this Palantir executive further described the two related concepts that

23

Palantir had developed relating to cyber insurance and the use of customer consortia to improve

24

cyber security.

25

44.

When Abramowitz next met with Palantir on the subject, he indicated he was

26

interested in setting up a Palantir subsidiary that he would run to perform the insurance-related

27

function Palantir had revealed to him. This once again reflects that Abramowitz’s participation in

28

the discussions in June 2014 were confidential communications made solely for the benefit and
10
FIRST AMENDED COMPLAINT

1

interest of Palantir. Palantir ultimately decided not pursue the subsidiary Abramowitz suggested.
45.

2

After Palantir decided not to pursue the subsidiary Abramowitz desired – and

3

despite knowing that Palantir invented the Cyber Insurance and Cybersecurity Technology and

4

that it was confidential trade secret information – Abramowitz misappropriated Palantir’s

5

inventions and trade secrets in this space, has improperly disclosed them in an effort to profit

6

from them, and has attempted to patent them as his own.
46.

7

Without Palantir’s knowledge, on October 21, 2014, Abramowitz filed Provisional

8

Application No. 62/066,716 at the USPTO attempting to patent systems, methods and concepts

9

related to Palantir’s Cyber Insurance and Cybersecurity Technology as his own, claiming to be

10

the invention’s sole owner and inventor. Once again, Abramowitz’s application fails to mention

11

Palantir and does not include a single Palantir employee as an inventor.
47.

12

Presumably unbeknownst to Abramowitz, Palantir had filed its own patent

13

application on certain inventions related to the Cyber Insurance and Cybersecurity Technologies,

14

on May 16, 2014, months before Abramowitz learned of the systems, methods, techniques and

15

concepts from Palantir; that application resulted in United States Patent No. 9,009,827, dated

16

April 14, 2015, which is owned by Palantir and was invented by Palantir employees. During the

17

pendency of that application, the information contained in it remained confidential trade secret

18

information. Moreover, that patent application and patent does not disclose other trade secret

19

information related to the Cyber Insurance and Cybersecurity Technology (e.g., business plans,

20

use cases), which was disclosed to Abramowitz in confidence.
48.

21

On information and belief, in his effort to market the Cyber Insurance and

22

Cybersecurity Technology as his own and to profit from it, Abramowitz has also improperly

23

disclosed trade secret information related to the Cyber Insurance and Cybersecurity Technology

24

to others.
49.

25

In addition to misappropriating Palantir’s trade secret Cyber Insurance and

26

Cybersecurity Technology, Defendants breached their confidentiality agreements when

27

Abramowitz filed the patent application and disclosed Palantir’s confidential information to

28

others.
11
FIRST AMENDED COMPLAINT

50.

1

The Natural Resources Exploration Technology. Palantir engaged in research

2

and development to create a more effective way for natural resources exploration companies to

3

mine data. Palantir was able to adapt its existing data analysis technologies to develop this new

4

proprietary and trade secret technology. In conjunction with developing this valuable technology,

5

Palantir also developed proprietary business plans, use cases and customer lists that are also trade

6

secret. Palantir has made reasonable efforts to maintain the confidentiality of these trade secrets.
51.

7

After discussions with Palantir employees concerning Palantir’s work on adapting

8

its data analysis technology for use in oil and gas exploration, Abramowitz again sought to patent

9

Palantir’s systems, methods and concepts by filing Provisional Application No. 62/094,888 with

10

the USPTO on December 19, 2014, and falsely claiming to be the sole owner and inventor. As

11

with his other applications described above, Abramowitz filed the application without Palantir’s

12

knowledge or consent and failed to credit Palantir or its employees in any way.
52.

13

On information and belief, in his effort to market the Natural Resources

14

Exploration Technology as his own and to profit from it, Abramowitz has also improperly

15

disclosed trade secret information related to the Natural Resources Exploration Technology to

16

others.

17

53.

In addition to misappropriating Palantir’s trade secret Natural Resources

18

Exploration Technology, Defendants breached their confidentiality agreements when they filed

19

the patent application and disclosed Palantir’s confidential information to others.

20

54.

After Palantir learned of one of Abramowitz’s improper patent applications, a

21

Palantir employee asked him about it. At that time, Abramowitz claimed that he filed the patent

22

application for Palantir’s benefit. That statement was plainly false, and was presumably designed

23

to induce Palantir to delay challenging Abramowitz’s patent application and filing suit for

24

misappropriation of trade secrets and breach of contract.

25

withdrawn any of his improper patent applications nor amended them to indicate that Palantir is

26

the inventor and owner of the systems, methods and concepts described therein.

27
28

55.

Indeed, Abramowitz has neither

Through his scheme, Abramowitz intentionally abused his status as an investor

and trusted advisor in an attempt to profit at Palantir’s expense by improperly using and
12
FIRST AMENDED COMPLAINT

1

disclosing multiple Palantir trade secrets and improperly attempting to patent them as his own.

2

On information and belief, despite Abramowitz’s lack of experience in these areas, he is

3

attempting to market them as his own. Additionally, he could, for example, attempt to use

4

Palantir’s trade secrets to hold Palantir hostage in exchange for royalties. Abramowitz’s actions

5

are causing Palantir irreparable harm, and Palantir is therefore separately seeking to have

6

Abramowitz’s patent applications denied by the USPTO.

7

56.

The foregoing facts are not the only indications that Abramowitz has sought to

8

profit from Palantir’s trade secrets. As Abramowitz knows, Palantir’s company name is inspired

9

by the “seeing stones” referenced in The Lord of the Rings. Without Palantir’s knowledge,

10

Abramowitz filed for a trademark on the mark “Shire,” which is also referenced in The Lord of

11

the Rings as the place where one of the main characters lives. It is clear that Abramowitz has

12

filed this trademark application in an attempt to further improperly associate himself with what he

13

views as the Palantir brand.

14

57.

Significantly, Abramowitz filed this trademark application with an intent to use the

15

mark in connection with “underwriting and administration of cyber liability insurance;

16

underwriting and administration of cyber security insurance; insurance brokerage in the field of

17

cyber liability and cyber security insurance.” This further reflects that Abramowitz is using, and

18

intends to continue to use, Palantir’s trade secrets in these areas.

19
20

Abramowitz Demands Information Under the Investors’ Rights Agreement
58.

In furtherance of his scheme, on August 16, 2016, KT4, through counsel at

21

Williams & Connolly LLP, sent Palantir letter (the Demand Letter”) demanding information

22

pursuant to the Investors’ Rights Agreement (as amended most recently on September 1, 2016,

23

the “IRA”). Under the February 15, 2008 version of the IRA (the “February IRA”) invoked by

24

Abramowitz in his letter, and the July 8, 2015 version in effect at the time Abramowitz sent his

25

letter (the “July IRA”), the agreement granted certain rights to receive information from Palantir

26

to anyone who was a “Major Investor” in Palantir, defined in Section 2.1 of the IRA as any

27

investor that holds “at least 5,000,000 shares of” certain types of Palantir stock.

28

59.

In the Demand Letter, KT4 purports to be a Major Investor of Palantir and
13
FIRST AMENDED COMPLAINT

1

demands that Palantir produce documents and provide information to its counsel pursuant to

2

Sections 2.1 and 2.2 of the February IRA. Neither IRA, however, provides any right for counsel

3

or anyone other than a Major Investor to receive the information.

4

60.

Even if KT4 were a Major Investor (which Palantir does not concede) and even if

5

the IRA had not been amended as described below, Abramowitz’s breaches of his confidentiality

6

agreements and misappropriation of trade secrets – namely, his unclean hands – preclude him

7

from obtaining confidential and proprietary information through the IRA.

8

Palantir and Major Investors Amend the IRA to Protect Palantir, its Employees, and

9

Shareholders from Malicious Actors

10

61.

Having discovered Abramowitz’s actions, his betrayal of Palantir’s trust, and his

11

misappropriation of its trade secrets—and fearing more such betrayals and breaches of confidence

12

that remain undiscovered—Palantir could no longer trust Abramowitz with its confidential

13

information, including the information demanded by KT4 in the Demand Letter.

14

62.

To further protect Palantir—as well as its employees, former employees, investors,

15

and other shareholders—from the malicious acts of Defendants, on September 1, 2016, Palantir

16

and a group of its Major Investors holding a majority of the Registrable Securities held by Major

17

Investors invoked their rights under Section 3.7 of the July IRA to amend the agreement (the

18

“Amendment”). Even assuming KT4 was a Major Investor with rights under Sections 2.1 and 2.2

19

of the July IRA and even assuming that Defendants’ unclean hands did not preclude them from

20

receiving any confidential information through the IRA, KT4 has no such rights under the current

21

IRA; the Amendment is expressly retroactive in its effect, as permitted by Section 3.7 of the IRA.

22

63.

Palantir did not take this action lightly, but after receiving the Demand Letter

23

following the nefarious activities of Defendants through their access as investors and

24

Abramowitz’s former status as an advisor, Palantir determined that it was necessary to act to

25

protect itself and others from the harmful actions of Defendants.

26

64.

Palantir regularly and frequently works with investors, upon request, to provide

27

relevant information corresponding to their status as a shareholder, subject to confidentiality

28

obligations. As it has done in responding to Abramowitz’s reasonable questions in the past,
14
FIRST AMENDED COMPLAINT

1

Palantir stands ready to do the same with KT4 upon a showing that such requests are being made

2

in good faith and with no improper purpose.
Harm to Palantir

3
4
5
6

65.

As a result of Defendants’ actions, Palantir has been and will continue to be

injured in an amount to be established according to proof.
66.

As a result of Abramowitz’s unauthorized copying, theft, and misappropriation of

7

Palantir’s confidential and proprietary information and trade secrets, as well as his co-opting of

8

Palantir’s work developing technology, systems, methods, and concepts and subsequently passing

9

them off as his own, Palantir has been and will continue to be injured absent equitable relief.

10

FIRST CAUSE OF ACTION

11

(Breach of Contract – Against All Defendants)

12
13
14

67.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 66.
68.

Defendants’ contracts with Palantir, including, inter alia, the Transfer Agreements

15

and the July 2014 NDA (the “Confidentiality Contracts”), imposed a contractual obligation on

16

Defendants to maintain the confidentiality of information learned or accessed as a result of

17

Defendants’ investments in Palantir, Abramowitz’s visits to Palantir’s offices, and his discussions

18

with Palantir employees.

19
20
21
22
23

69.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

contract and all conditions precedent to its enforcement have been performed by Palantir.
70.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
71.

Under the Confidentiality Contracts, Defendants agreed to hold in strictest

24

confidence, and not to use, except for the benefit of the company, any information they obtain or

25

access as investors or during visits or discussions.

26

72.

As described above, Defendants breached the Confidentiality Agreements when

27

Abramowitz used the information he learned from Palantir employees to file patent applications

28

listing himself as sole inventor of Palantir’s systems, methods and concepts that he learned in
15
FIRST AMENDED COMPLAINT

1

confidence, as well as a trademark application on “Shire” that they intend to use in the cyber

2

insurance space.

3

disclosed confidential information to others in an improper effort to profit from Palantir’s

4

confidential information and trade secrets.

5
6
7
8

73.

Defendants further breached their confidentiality obligations when they

As a direct and proximate result of Defendants’ wrongful conduct, Palantir has

been harmed and is being forced to take expensive steps to reduce and mitigate that harm.
74.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.

9

SECOND CAUSE OF ACTION

10

(Breach of the Implied Covenant of Good Faith and Fair Dealing– Against All Defendants)

11
12

75.

Plaintiff repeats and realleges paragraphs 1 through 74 above as though fully set

forth herein.

13

76.

California law implies a covenant of good faith and fair dealing in all contracts.

14

77.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

15
16
17
18

contract and all conditions precedent to its enforcement have been performed by Palantir.
78.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
79.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

19

the Transfer Agreements and July 2014 NDA by, among other things, misappropriating and using

20

Plaintiff’s proprietary, confidential, and trade secret information and falsely claiming to have

21

invented Palantir’s inventions.

22
23
24

80.

In addition, the IRA, as amended, is a valid contract and all conditions precedent

to its enforcement have been performed by Palantir.
81.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

25

the IRA by, among other things, using it to seek confidential information for improper purposes.

26

As a result, Palantir is being forced to take expensive steps to reduce and mitigate that harm.

27
28

82.

Defendants have breached and violated its implied covenant of good faith and fair

dealing.
16
FIRST AMENDED COMPLAINT

1
2

83.

As a result of that breach by Defendants, Plaintiff has suffered monetary damages

in an amount to be quantified at trial.

3

THIRD CAUSE OF ACTION

4

(Violation of California’s Unfair Competition Law,

5

Cal. Bus. & Prof. Code Section 17200 et seq. – Against All Defendants)

6
7
8
9

84.

Plaintiff Palantir repeats and realleges paragraphs 1 through 83 above as though

fully set forth herein.
85.

Defendants have engaged in (and continues to engage in) the unlawful, fraudulent,

and unfair business acts and practices described throughout this Complaint in violation of

10

California’s Unfair Competition Law (the “UCL”), California Business and Professions Code,

11

Section 17200, et seq.

12

86.

Defendants’ business acts and practices were unlawful under the UCL because

13

they resulted in the violations of state common law described herein, including breach of contract

14

and breach of the implied covenant of good faith and fair dealing.

15

87.

Defendants’ business acts and practices were fraudulent because a reasonable

16

person would likely be deceived by Defendant’s false statements and claims, including that they

17

invented and own Palantir’s inventions.

18

88.

Defendants’ business acts and practices are unfair because the harm suffered by

19

Palantir described herein outweighs any justification that Defendants may assert for engaging in

20

those acts and practices. Moreover, Palantir could not have avoided the harm it suffered as a

21

result of Defendants’ unfair acts and practices because Defendants made every effort to obscure

22

and conceal from Palantir the existence and extent of its harmful acts and practices.

23
24
25
26
27
28

89.

Defendants’ unlawful, unfair and fraudulent business acts and practices were

carried out and effectuated in California and injured Plaintiff in California.
90.

Plaintiff suffered harm as herein alleged as a direct and proximate result of

Defendants’ unlawful, unfair and fraudulent business acts and practices.
91.

Plaintiff is entitled to an injunction enjoining Defendants from such further

violations of the UCL. Any such injunction will benefit Plaintiff and the general public.
17
FIRST AMENDED COMPLAINT

1

FOURTH CAUSE OF ACTION

2

(Violation of Cal. Civ. Code § 3426 et seq. – Against All Defendants)

3
4
5

92.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 91.
93.

Palantir’s confidential and proprietary information pertaining to its projects,

6

including those concerning use of data analysis in the Healthcare Technology, Cyber Insurance

7

and Cybersecurity Technology, and Natural Resources Exploration Technology, constitute

8

protectable trade secrets as set forth in California Civil Code § 3426.1(d).

9

94.

Palantir’s confidential and proprietary information derives independent economic

10

value, actual or potential, from not being generally known to the public or to other persons who

11

can obtain economic value from their disclosure or use as set forth in California Civil Code

12

§ 3426.1(d)(1).

13

95.

Palantir’s confidential and proprietary information is the subject of efforts that are

14

reasonable under the circumstances to maintain their secrecy as set forth in California Civil Code

15

§ 3426.1(d)(2).

16

96.

Palantir did not consent to the use of any of its trade secrets by anyone other than

17

authorized employees using them for Palantir’s business purposes and customers bound by

18

confidentiality obligations.

19

97.

Defendants willfully and intentionally misappropriated Palantir’s trade secrets

20

when, inter alia, he used them to develop patent and trademark applications claiming

21

inventorship and ownership of Palantir’s systems, methods and concepts. Palantir is informed

22

and believes that Defendants have used, and continues to use, Palantir’s trade secret, confidential,

23

and proprietary information to develop a competing business or in furtherance of that goal,

24

including those described in his trademark and patent applications.

25
26
27
28

98.

Palantir is entitled to an injunction of both actual and threatened misappropriation

as set forth in California Civil Code § 3426.2(a).
99.

Palantir also requests that the court take affirmative acts to protect Palantir’s trade

secrets, as set forth in California Civil Code § 3426.2(c), including ordering an inspection of
18
FIRST AMENDED COMPLAINT

1

Defendants’ computer(s), USB drives, email accounts, cloud storage accounts and other sources

2

and equipment by a forensics expert to determine the extent to which Palantir’s trade secrets were

3

wrongfully taken and/or disseminated to others, and to ensure that no trade secrets belonging to

4

Palantir remain saved on those systems; and issue a writ of possession, a preliminary injunction,

5

and a permanent injunction ordering the return of Palantir’s confidential information and

6

prohibiting Defendants from continuing his unlawful actions.
100.

7
8

In addition to equitable relief, Palantir demands monetary damages, fees, and

costs, where allowed.
101.

9

Defendants’ conduct as alleged herein was willful, malicious and wanton, and

10

undertaken for the purpose of injuring or causing injury to Palantir. Palantir seeks exemplary and

11

punitive damages against Defendants.

12

FIFTH CAUSE OF ACTION

13

(Declaratory Relief – Against All Defendants)
102.

14
15

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 101.
103.

16

There presently exists a real and actual controversy between Palantir and KT4

17

regarding whether KT4 is entitled under the IRA to the information sought through the Demand

18

Letter.

19

104.

KT4 maintains that it is entitled to information under Sections 2.1 and 2.2 of the

20

IRA, and Palantir maintains that KT4 is neither a “Major Investor” under the IRA nor otherwise

21

entitled to such information under the IRA, as amended.

22

105.

Additionally, Defendants have acted with unclean hands by, among other things,

23

misappropriating Palantir’s trade secrets. For this independent reason, KT4 is not entitled to

24

information under Sections 2.1 and 2.2 of the IRA.

25

106.

A declaratory judgment is necessary and appropriate at this time to resolve the

26

controversy between the parties. Palantir therefore specifically requests a judgment declaring that

27

KT4 has no right to any information pursuant to Sections 2.1 or 2.2 of the IRA.

28
19
FIRST AMENDED COMPLAINT

PRAYER FOR RELIEF

1
2

WHEREFORE, Palantir respectfully requests the following relief:

3

1.

4
5

Judgment in favor of Palantir and against all Defendants on all of Palantir’s claims

asserted in the Complaint;
2.

For a preliminary injunction and permanent injunction restraining Defendants,

6

their officers, agents, servants, employees, and all persons acting in concert or participation with

7

them from:
a.

10
11

d.

16
17
18

destroying any property, emails, documents or materials that are relevant or

potentially relevant to this action;
e.

14
15

directly or indirectly retaining, using or disclosing Palantir’s trade secret,

confidential and/or proprietary information, and derivatives thereof;

12
13

continuing to pursue Defendants’ patent applications set forth above;

c.

9

perpetuating the wrongful acts and conduct as set forth above;

b.

8

moving or transferring outside the United States Palantir’s property,

emails, documents or materials that are relevant or potentially relevant to this action;
3.

For an Order requiring that Palantir’s confidential, proprietary and trade secret

information be returned to Palantir;
4.

For an Order requiring all Defendants to divulge the identity of the individuals,

19

groups and companies to whom they have disclosed Palantir’s confidential, proprietary and trade

20

secret information;

21
22
23
24
25
26
27
28

5.

For an Order requiring all Defendants to account for and pay to Palantir all ill-

gotten gains, profits, and savings obtained or derived from their improper conduct;
6.

For damages, unjust enrichment, and/or reasonable royalties in amounts to be

proven at trial;
7.

For an Order awarding Palantir punitive and/or exemplary damages in a sum to be

determined at trial, on the basis of Defendants’ willful, deliberate, and malicious tortious conduct;
8.

For restitution and disgorgement of all ill-gotten gains unjustly obtained and

retained by Defendants through the acts complained of herein;
20
FIRST AMENDED COMPLAINT

1
2
3
4
5
6
7
8
9

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
David Zifkin (SBN 232845)
([e-mail])
Shira Liu (SBN 274158)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]

E-FILED
9/23/2016 5:04:54 PM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

10
11

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

12
13

SUPERIOR COURT OF THE STATE OF CALIFORNIA

14

FOR THE COUNTY OF SANTA CLARA

15

UNLIMITED JURISDICTION

16
17
18
19
20
21
22
23
24
25
26

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)
)
)

Case No. 16CV299476
PROOF OF SERVICE

Complaint Filed: September 1, 2016
Trial Date: Not set

27
28
PROOF OF SERVICE

CASE NO. 16CV299476

1

PROOF OF SERVICE

2
3
4
5

I, the undersigned, declare as follows:
I am employed in the County of Los Angeles, State of California. At the time of service I
was over 18 years of age and not a party to this action. My business address is 401 Wilshire
Boulevard, Suite 850, Santa Monica, California 90401. On September 23, 2016 I served the
following document(s):

6

1. FIRST AMENDED COMPLAINT FOR: (1) Breach of Contract (2) Breach of the
Implied Covenant of Good Faith and Fair Dealing (3) Violation of Cal. Civ. Code §
3426 et seq. (4) Declaratory Relief (5) Violation of California’s Unfair Competition
Law, Cal. Bus. & Prof. Code § 17200 et seq.

7
8
9

I personally served the documents on the persons below, as follows:

10
11
12

MARC L. ABRAMOWITZ
3455 WASHINGTON STREET
SAN FRANCISCO, CA 94118

13
14
15
16

The documents were served by the following means:


17
18
19
20
21
22
23

KT4 PARTNERS LLC
C/O AGENT FOR SERVICE:
INCORP SERVICES, INC.
919 NORTH MARKET STREET,
SUITE 425
WILMINGTON, DE 19801



By personal service. I caused to be personally delivered the documents to the
persons at the addresses listed above. (1) For a party represented by an
attorney, delivery was made to the attorney or at the attorney's office by
leaving the documents in an envelope or package clearly labeled to identify the
attorney being served with a receptionist or an individual in charge of the
office. (2) For a party, delivery was made to the party or by leaving the
documents at the party's residence with some person not less than 18 years of
age between the hours of eight in the morning and six in the evening.
By United States mail. I enclosed the documents in a sealed envelope or
package addressed to the persons at the addresses listed above and:
 deposited the sealed envelope with the United States Postal Service,
with the postage fully prepaid.

24
25
26
27

placed the envelope for collection and mailing, following our
ordinary business practices. I am readily familiar with this business's
practice for collecting and processing correspondence for mailing. On
the same day that correspondence is placed for collection and mailing,
it is deposited in the ordinary course of business with the United States
Postal Service, in a sealed envelope with postage fully prepaid.

28
1
PROOF OF SERVICE

CASE NO. 16CV299476

E-FILED
9/30/2016 10:43:28 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

E-FILED
9/30/2016 10:43:28 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

Exhibit A

1

E-FILED
9/1/2016 11:20:57 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

5

BOIES, SCHILLER & FLEXNER LLP
David Zifkin (SBN232845)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]
Additional counsel identified on signature page

6

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

2
3
4

7
8

SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

FOR THE COUNTY OF SANTA CLARA

10

UNLIMITED JURISDICTION

11
12
13
14
15
16
17
18
19
20

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)
PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

Case No.

16CV299476

COMPLAINT FOR:
(1) Breach of Contract
(2) Breach of the Implied Covenant of Good
Faith and Fair Dealing
(3) Violation of Cal. Civ. Code § 3426 et seq.
(4) Declaratory Relief
(5) Violation of California’s Unfair
Competition Law, Cal. Bus. & Prof. Code §
17200 et seq.
JURY TRIAL DEMAND
Complaint Filed: September 1, 2016
Trial Date: Not set

21
22
23
24
25
26
27
28
COMPLAINT

1

Plaintiff Palantir Technologies Inc. (“Palantir”) sues defendants Marc L. Abramowitz

2

(“Abramowitz”), both in his individual capacity and as trustee of the Marc Abramowitz

3

Charitable Trust No. 2 (the “Trust”), KT4 Partners LLC (“KT4”), and Does 1 through 50

4

(collectively with Abramowitz, KT4, and the Trust, “Defendants”) as follows:
NATURE OF THE ACTION

5
6

1.

This is an action to stop Defendants from misappropriating Palantir’s confidential

7

information and proprietary trade secrets for their own benefit and to prevent them from receiving

8

any additional confidential or proprietary information from Palantir pursuant to their Investors’

9

Rights Agreement.

10

2.

Abramowitz was a respected confidant and advisor to Palantir and its senior

11

executives until he betrayed the trust they bestowed upon him for his own personal gain. He was,

12

through KT4 and other entities, an early equity investor in Palantir who personally engaged in

13

regular discussions with executives about some of the company’s most sensitive business

14

strategies and trade secrets. Those discussions were highly confidential, as was made clear by

15

express written agreements among the parties at the time and a course of dealing based on the

16

most basic principles of fairness and honesty between a trusted shareholder and advisor and

17

management.

18

3.

Nonetheless, as part of brazen scheme to claim Palantir’s own highly confidential

19

information and trade secrets as his own, Abramowitz stole those secrets, engaged in methodical

20

deception of Palantir’s senior executives, and made false claims to the United States Patent and

21

Trademark Office. Abramowitz’s claim to be a patent innovator is directly contradicted by the

22

facts surrounding his professional career.

23

4.

To start, Abramowitz has no notable history as an inventor or patent innovator in

24

the data analysis area. He has made most of his career and fortune in real estate and buyout

25

investing. Yet, beginning in 2014, Abramowitz suddenly filed three patents, all of them based on

26

ideas and trade secrets he stole from Palantir. This was plainly illegal and highly unethical

27

conduct, and it was a betrayal of his trusted relationship with Palantir and its executives.

28
1
COMPLAINT

1

5.

But Abramowitz’s scheme did not end there. After stealing from Palantir, he hired

2

lawyers to demand from Palantir sensitive and confidential information about the company,

3

including the Company’s finances and business dealings, which Palantir considers to be, and

4

treats as, highly sensitive and confidential. Having uncovered Abramowitz’s breach of Palantir’s

5

trust (and of his contractual obligations to Palantir under multiple agreements), it is apparent that

6

Abramowitz is not seeking this information in good faith for a proper purpose. In fact, history

7

has shown that Abramowitz has and will misuse any information provided to him in breach of

8

confidence, causing Palantir irreparable harm in the process.

9

6.

Palantir now has been forced to protect itself, both through amendments to its

10

corporate documents and through this action, by which Palantir seeks redress for Abramowitz’s

11

breaches of contract, breaches of confidence, and misuse of Palantir’s confidential and

12

proprietary information and trade secrets. Further, to protect Palantir and its shareholders—

13

including employees, former employees and other investors—from continued breaches of

14

confidence in the future, Palantir seeks a declaratory judgment that Abramowitz has no right to

15

the information he has demanded under the Investors’ Rights Agreement.
PARTIES, JURISDICTION, AND VENUE

16
17
18
19

7.

The Court has jurisdiction over this action by virtue of Article VI § 10 of the

California Constitution and California Code of Civil Procedure § 410.10.
8.

Palantir is a Delaware corporation with its principal place of business at 100

20

Hamilton Avenue, Palo Alto, California, 94301. Palantir has suffered, and continues to suffer,

21

injury in this jurisdiction by reason of Defendants’ actions.

22

9.

Palantir is informed and believes and on that basis alleges that defendant Marc L.

23

Abramowitz is an individual residing in California at 1029 Ramona Street, Palo Alto, California,

24

94301. Palantir is informed and believes and on that basis alleges that Abramowitz is the trustee

25

of the Marc Abramowitz Charitable Trust No. 2. The wrongful actions of Abramowitz occurred

26

in, were targeted to, and caused damage in, California.

27
28
2
COMPLAINT

10.

1

Palantir is informed and believes and on that basis alleges that defendant KT4

2

Partners LLC is a Delaware limited liability company with its principal place of business at 1029

3

Ramona Street, Palo Alto, California, 94301. On information and belief, KT4 does business in

4

California and has committed acts that submit it to the jurisdiction of California’s courts. Upon

5

information and belief, Abramowitz is the sole member of KT4 and controls and directs the

6

activities of KT4. The wrongful actions of KT4 occurred in, were targeted to, and caused damage

7

in, California.
11.

8

Palantir is ignorant of the true names of Does 1 through 50 and such names are

9

fictitious. Such defendants are legally responsible for the events and happenings described herein

10

and for the damages proximately caused thereby. Once Palantir learns of the true names of Does

11

1 through 50, Palantir will amend the complaint to include the real name(s) of such party or

12

parties.

13

12.

This action is founded on injuries and damages suffered by Palantir in Santa Clara

14

County by virtue of the Defendants’ misappropriation of trade secrets, breach of contract, breach

15

of confidence and other illegal and wrongful acts as alleged in this Complaint. Venue is proper in

16

this Court because the parties reside in this County and the events that form the basis for this

17

Complaint largely took place in this County.

18

FACTUAL BACKGROUND

19

Palantir’s Business

20

13.

Palantir is a software and services company that specializes in data analytics. In

21

2004, Palantir was founded on a vision: to provide solutions not only to problems then faced by

22

business and government, but also solutions to problems that did not yet exist, but that would

23

surely come to be as part of our rapidly-evolving world. It sought to make this vision a reality by

24

the use of technology. And it embarked on an ambitious, time-consuming, and costly endeavor to

25

create a viable, successful business. As a result of hard work, Palantir has succeeded and is now a

26

leader in its industry. Today, Palantir’s products are deployed at the most critical government,

27
28
3
COMPLAINT

1

commercial, and non-profit institutions in the world to solve problems the company’s founders

2

had not even dreamed of back in 2004.
14.

3

In particular, at its founding Palantir set out to create products that would

4

transform the way organizations use perhaps their most important asset in today’s business world:

5

data. Palantir’s mission has been and remains to develop flexible tools and services to provide

6

human-driven analysis of real-world data, with a focus on creating the world’s best user

7

experience for working with data. To achieve this, Palantir builds platforms for integrating,

8

managing, and securing data, on top of which it layers applications for fully interactive, human-

9

driven, machine-assisted analysis.

This means that Palantir develops programs and provides

10

services that allow businesses and government to run their businesses in a way that corresponds

11

with the reality of their marketplace and consumers.
15.

12

Businesses and government use Palantir’s software to interpret and visualize large

13

quantities of information from various sources. For example, businesses use Palantir’s software

14

to analyze their internal and market data to better understand consumer trends, and government

15

agencies use Palantir’s software to analyze intelligence data to better understand emerging

16

threats.

17

16.

Palantir’s success is due in part to its early recognition that many organizations are

18

traditionally unable to leverage insights from their internal data because the data is held in

19

separate silos that are often disconnected and have different access, security controls, and privacy

20

requirements. When information is siloed—that is, when important information is stored in

21

containerized, unrelated units—businesses and government cannot fully realize the potential of

22

that data. Palantir provides software solutions that avoid this problem, allowing users to run their

23

businesses consistent with the actual environment in which they operate.

24

products are used to fuse and analyze customer data across platforms and sources and enable

25

secure collaboration among analysts, while protecting data privacy and security.

26
27

17.

Thus, Palantir’s

As is expected in this type of work, Palantir is also heavily involved in research

and development. Palantir spends millions of dollars each year to expand its business and seek

28
4
COMPLAINT

1

out new opportunities—and to stay ahead of the curve and atop the industry. This research and

2

development investment involves both creating new software, technologies and processes as well

3

as adapting existing products and technologies to new applications and uses.
Abramowitz’s Relationship with Palantir

4
5

18.

Initial funding for Palantir came from a variety of sources, including the

6

company’s founders who remain with Palantir today as shareholders of common shares of

7

Palantir stock. Abramowitz, through KT4 and other entities he controls, was an early investor in

8

Palantir, first investing in the company in 2005.

9

19.

Through the years, Abramowitz was involved with the business of Palantir.

10

Rather than acting as a passive investor, he became a regular fixture at Palantir. He established

11

relationships with the company’s founders, officers, and employees. As a result, he was viewed

12

as a trusted figure by the company, including its several founders and senior employees.

13

Abramowitz fostered these relationships of confidence and held himself out as a friend of Palantir

14

whose interests were completely aligned with the company. He made clear that he could be

15

trusted to keep confidences and act in the company’s best interests.

16

20.

Indeed, Abramowitz spent so much time at Palantir that in 2014 he asked for an

17

office. Between 2010 and 2015, Abramowitz visited Palantir offices over thirty times. When

18

Abramowitz had questions about Palantir’s business, including financial information, that were

19

relevant to his status as a shareholder and trusted advisor to the company, he was provided with

20

the information.

21

21.

In this context, Abramowitz often inquired about specific Palantir projects. On

22

several occasions, Palantir provided information to Abramowitz about concepts for new

23

technology and/or new use cases for existing technology that Palantir had spent significant time

24

and resources researching, developing and testing. Palantir always provided any information to

25

Abramowitz with the express and reasonable expectation that Abramowitz would maintain its

26

confidentiality and would never pass Palantir’s ideas off as his own or use the information to

27

Palantir’s detriment without Palantir’s knowledge or permission.

28
5
COMPLAINT

Abramowitz’s Agreements Not to Violate Confidentiality

1
2

22.

In addition to relying on the confidential nature of its communications with

3

Abramowitz, Palantir also protected its confidential information and trade secrets through written

4

agreements.

5

23.

In

an

August

14,

2012

Preferred

Stock

Transfer

Agreement,

6

Abramowitz agreed “to keep confidential and refrain from using or disclosing all agreements,

7

documents and other information regarding the Company or its securityholders provided or made

8

available to [Abramowitz]…in [his] capacity as a stockholder of the Company….” ( 2012 PSTA

9

at ¶ 7.) Abramowitz renewed that agreement in a June 17, 2015 Preferred Stock Transfer

10
11

Agreement. (2017 PSTA at 7.)
24.

In a June 17, 2015 Preferred Stock Transfer Agreement, KT4 similarly agreed “to

12

keep confidential and refrain from using or disclosing all agreements, documents and other

13

information regarding the Company or its securityholders provided or made available to

14

[Abramowitz]…in [his] capacity as a stockholder of the Company….” (2015 PSTA at ¶ 7.)

15

25.

In addition, during at least one of his visits to Palantir, on July 12, 2014,

16

Abramowitz executed an NDA (the “July 2014 NDA”) covering “Proprietary Information,”

17

which is defined in the NDA as “non-public business, technical or other information, materials

18

and/or ideas of Palantir [including] anything you learn or discover as a result of exposure to or

19

analysis of any Proprietary Information.” The NDA expressly forbids Abramowitz from using or

20

revealing any of Palantir’s Proprietary Information.

21
22

Abramowitz Misappropriation of Business Information and Trade Secrets
26.

By 2014, Abramowitz had embarked on an intentional and calculated scheme to

23

discover Palantir trade secrets and convert them to his own use and profit. In furtherance of his

24

scheme, during 2014 alone, Abramowitz was in contact with Palantir employees at least 34 times

25

and visited Palantir facilities at least 20 times. Pursuant to his scheme, Abramowitz violated the

26

trust Palantir put in him on at least three separate occasions.

27
28
6
COMPLAINT

1

27.

The first occasion of which Palantir is aware involves a Palantir idea concerning

2

clinical trials of drugs. Palantir had been working hard since 2011 on the best way to enter the

3

clinical trial space, including using Palantir’s technology and data analytics services to improve

4

the conduct of clinical trials of prescription drugs by pharmaceutical companies and academic

5

institutions.

6

28.

Palantir’s work in the field of clinical trials has been extensive, and the processes

7

and systems developed through that work were important company trade secrets. As part of its

8

research and development work, Palantir employees created white papers and presentations

9

describing the ideas and projects they were working on. Palantir also signed on customers to help

10
11

drive the project from the research side into the market.
29.

Abramowitz learned from Palantir about Palantir’s work in the area of clinical

12

trials and, in February 2014, sought to broker a deal between Palantir and a customer to take

13

something to market. Through his conversations with Palantir on the subject and the confidential

14

access Palantir granted him to documents describing Palantir’s research and development work,

15

Abramowitz learned the details of the work Palantir had been doing in the area for years.

16

Abramowitz misappropriated Palantir’s inventions in this space and has attempted to patent them

17

as his own.

18

30.

On October 29, 2014, without Palantir’s knowledge or consent, Abramowitz filed

19

Provisional Application No. 62/072,368 with the United States Patent and Trademark Office

20

(“USPTO”) seeking to patent the idea developed by Palantir and explained to Abramowitz in

21

confidence. The application falsely identifies Abramowitz as the inventor, includes no mention

22

of Palantir at all, and fails to list a single Palantir employee as an inventor.

23

31.

In the second occurrence where Palantir knows Abramowitz abused his position of

24

trust to further his scheme, Abramowitz participated in discussions about an idea for using

25

Palantir’s cyber security technology to improve the ability of insurance companies to provide

26

insurance to retailers and other institutions against the potential harm caused by data breaches and

27

other cybercrimes.

28
7
COMPLAINT

1

32.

In June 2014, a Palantir executive disclosed to Abramowitz during a conversation

2

that Palantir was working on opportunities in the insurance industry.

3

expressed interest in the concept and requested additional information, the Palantir executive

4

arranged for Abramowitz to speak with another Palantir executive, who sent Abramowitz some

5

information on the idea via email and invited Abramowitz to meet with him at Palantir’s offices

6

to discuss the idea.

7

executive described two related concepts that Palantir had developed relating to cyber security

8

insurance and the use of customer consortia to improve cyber security, as well as the Palantir

9

technology that could be used to implement them.

10

33.

When Abramowitz

During his June 2014 meeting with Abramowitz, the second Palantir

When Abramowitz next met with Palantir on the subject, he indicated he was

11

interested in setting up a Palantir subsidiary that he would run to perform the insurance-related

12

function Palantir had revealed to him, further confirming that his participation in the discussions

13

were solely for the benefit and interest of Palantir.

14

suggestion.

15

34.

Palantir did not pursue Abramowitz’s

Without Palantir’s knowledge, on October 21, 2014, Abramowitz filed Provisional

16

Application No. 62/066,716 at the USPTO attempting to patent the ideas he learned about in

17

confidence through his conversations with Palantir executives and claiming to be the invention’s

18

sole owner and inventor. To read Abramowitz’s application, one would never suspect Palantir

19

had anything to do with the idea at all, as Abramowitz fails to mention Palantir and does not

20

include a single Palantir employee as an inventor.

21

35.

However, presumably unbeknownst to Abramowitz, Palantir had already filed its

22

own patent application on the invention in February 2014, months before Abramowitz learned of

23

the idea from Palantir. That application resulted in United States Patent No. 9009827 (the “'827

24

Patent”), owned by Palantir and invented by Palantir employees.

25

Palantir’s valid patent and Abramowitz’s application are stunning. Even a cursory reading of the

26

abstract of the '827 Patent issued to Palantir and the application filed by Abramowitz reveals that

27

they are the same invention—one which Abramowitz misappropriated from Palantir.

28
8
COMPLAINT

The similarities between

1

36.

Abramowitz’s scheme is clearly revealed through his filing of two patent

2

applications within ten days of one another seeking to secure sole inventorship over ideas he

3

learned from Palantir in confidence.

4

misappropriate Palantir’s ideas in at least one more, third area. After discussions with Palantir

5

employees concerning Palantir’s work on adapting its data analysis technology for use in oil and

6

gas exploration, Abramowitz filed Provisional Application No. 62/094,888 with the USPTO,

7

seeking to patent as sole owner and inventor the ideas he learned from Palantir concerning

8

Palantir’s work in this area. As with his other applications described above, Abramowitz filed the

9

application without Palantir’s knowledge or consent and failed to credit Palantir or its employees

10
11

Abramowitz continued his concerted scheme to

in any way.
37.

Through his months-long scheme, Abramowitz intentionally abused his status as a

12

trusted investor at Palantir in an attempt to profit at Palantir’s expense by taking multiple ideas

13

from Palantir and attempting to patent them as his own. Although, on information and belief,

14

Abramowitz does not have the resources, technology, or experience to market the ideas

15

effectively, he could attempt to use the patent applications or any issued patents to hold Palantir

16

hostage in exchange for royalties. Abramowitz’s actions are causing Palantir irreparable harm,

17

and Palantir is therefore separately seeking to have Abramowitz’s patent applications denied by

18

the USPTO.

19

38.

The patent applications are not the only indication that Abramowitz has

20

misappropriated information and access to attempt to profit at Palantir’s expense. Palantir’s

21

company name is inspired by the “seeing stones” referenced in The Lord of the Rings. Without

22

Palantir’s knowledge, Abramowitz filed for a trademark on the mark “Shire,” which is also

23

referenced in The Lord of the Rings as the place where one of the main characters lives. It is

24

clear that Abramowitz has filed this trademark application in an attempt to further improperly

25

associate himself with what he views as the Palantir brand.

26
27

39.

Furthermore, Abramowitz has filed this trademark application with an intent to use

the mark in connection with “underwriting and administration of cyber liability insurance;

28
9
COMPLAINT

1

underwriting and administration of cyber security insurance; insurance brokerage in the field of

2

cyber liability and cyber security insurance.” He has claimed he intends to use the mark for the

3

aforementioned goods and services despite knowing that the aforementioned goods and services

4

are services offered by, or intended to be offered by, Palantir, from whom he misappropriated

5

confidential and proprietary ideas and information in these areas.

6
7

Abramowitz Demands Information Under the Investors’ Rights Agreement
40.

In furtherance of his scheme, on August 16, 2016, KT4, through counsel at

8

Williams & Connolly LLP, sent Palantir a letter (the “Demand Letter”) demanding information

9

pursuant to the Investors’ Rights Agreement (as amended most recently on September 1, 2016,

10

the “IRA”). Under the February 15, 2008 version of the IRA (the “February IRA”) invoked by

11

Abramowitz in his letter, and the July 8, 2015 version in effect at the time Abramowitz sent his

12

letter (the “July IRA”), the agreement granted certain rights to receive information from Palantir

13

to anyone who was a “Major Investor” in Palantir, defined in Section 2.1 of the IRA as any

14

investor that holds “at least 5,000,000 shares of” certain types of Palantir stock.

15

41.

In the Demand Letter, KT4 purports to be a Major Investor of Palantir and

16

demands that Palantir produce documents and provide information to its counsel pursuant to

17

Sections 2.1 and 2.2 of the February IRA. Neither IRA, however, provides any right for counsel

18

or anyone other than a Major Investor to receive the information.

19

Palantir Scrupulously Protects Its Confidential Information and Trade Secrets

20

42.

Palantir undertakes significant efforts to protect the confidentiality and security of

21

its trade secrets, property (including physical locations, intellectual property, and network

22

security), as well as sensitive and confidential business and financial information.

23

confidential information is not generally known to the public and provides actual and potential

24

economic value to Palantir from not being generally known to the public or to Palantir’s

25

competitors.

26
27

43.

This

Palantir employs both technical and physical safety measures to maintain the

security of its property and confidential information. Among other things, Palantir restricts

28
10
COMPLAINT

1

employees’ access to sensitive internal information such that individual employees can only

2

access such data after obtaining appropriate authorization and only to the extent necessary to

3

perform their jobs. Additionally, Palantir employs a multitude of technical security measures to

4

protect its systems and networks, including, among other methods: intrusion detection systems,

5

network monitoring tools, anti-malware software, network firewalls, and whole disk encryption

6

of employee computers, among other measures. Palantir’s network and security systems are also

7

continually monitored for potential security risks. To secure access to information and data no

8

matter where employees are, Palantir uses and requires complex password requirements and two-

9

factor authentication for access to its hardware and its network.

10

44.

In addition to data and network security, physical access to Palantir’s facilities is

11

also highly restricted. Palantir employees must use electronic badges to access Palantir facilities.

12

Access to certain sensitive areas of Palantir’s facilities is further restricted to a small subset of

13

Palantir employees with a specific need for access (including, for example, Palantir facilities

14

containing network servers and security equipment, among others). Visitors must be invited to

15

Palantir facilities, must sign in and wear a visitor badge and are escorted at all times. In addition,

16

certain areas of Palantir’s facilities are off limits to visitors, and Palantir deploys security guards

17

to protect its facilities.

18

45.

Palantir also implements numerous measures and policies to ensure that its

19

employees safeguard the confidentiality and security of its trade secrets and sensitive and

20

confidential business information.

21

employment background checks for all new employees and also requires legal training for new

22

hires, covering confidentiality, information and data security, and compliance.

As part of the hiring process, Palantir requires pre-

23

Palantir and Major Investors Amend the IRA to Protect Palantir, its Employees, and

24

Shareholders from Malicious Actors

25
26

46.

Having discovered Abramowitz’s actions described above betraying Palantir’s

trust and misappropriating its trade secrets—and fearing more such betrayals and breaches of

27
28
11
COMPLAINT

1

confidence that remain undiscovered—Palantir could no longer trust Abramowitz with its

2

confidential information, including the information demanded by KT4 in the Demand Letter.

3

47.

To protect Palantir—as well as its employees, former employees, investors, and

4

other shareholders—from the malicious acts of Defendants, on September 1, 2016, Palantir and a

5

group of its Major Investors holding a majority of the Registrable Securities held by Major

6

Investors invoked their rights under Section 3.7 of the July IRA to amend the agreement (the

7

“Amendment”). Even assuming KT4 was a Major Investor with rights under Sections 2.1 and 2.2

8

of the July IRA, which Palantir does not concede, KT4 has no such rights under the current IRA,

9

and the Amendment is expressly retroactive in its effect, as permitted by Section 3.7.

10

48.

Palantir did not take this action lightly, but after receiving the Demand Letter and

11

noting the nefarious activities of Defendants through their access as investors, Palantir determined

12

that it was necessary to act to protect itself and others from the harmful actions of Defendants.

13

Palantir regularly and frequently works with investors, upon request, to provide relevant

14

information corresponding to their status as a shareholder, subject to confidentiality obligations.

15

As it has done in responding to Abramowitz’s reasonable questions in the past, Palantir stands

16

ready to do the same with KT4 upon a showing that such requests are being made in good faith

17

and with no improper purpose.
Harm to Palantir

18
19
20
21

49.

As a result of Defendants’ actions, Palantir has been and will continue to be

injured in an amount to be established according to proof.
50.

As a result of Abramowitz’s unauthorized copying, theft, and misappropriation of

22

Palantir’s confidential and proprietary information and trade secrets as well as his co-opting of

23

Palantir’s work developing technology and ideas and subsequently passing them off as his own,

24

Palantir has been and will continue to be injured absent equitable relief.

25
26
27
28
12
COMPLAINT

1

FIRST CAUSE OF ACTION

2

(Breach of Contract – Against All Defendants)

3
4
5

51.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 50.
52.

Defendants’ contracts with Palantir, including, inter alia, the Transfer Agreements

6

and the July 2014 NDA (the “Confidentiality Contracts”), imposed a contractual obligation on

7

Defendants to maintain the confidentiality of information learned or accessed as a result of

8

Defendants’ investments in Palantir, Abramowitz’s visits to Palantir’s offices, and his discussions

9

with Palantir employees.

10
11
12
13
14

53.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

contract and all conditions precedent to its enforcement have been performed by Palantir.
54.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
55.

Under the Confidentiality Contracts, Defendants agreed to hold in strictest

15

confidence, and not to use, except for the benefit of the Company, any information they obtain or

16

access as investors or during visits or discussions.

17

56.

Defendants breached the Confidentiality Agreements when Abramowitz used the

18

information and ideas he learned from Palantir employees to file patent applications listing

19

himself as sole inventor of Palantir’s ideas that he learned in confidence, as well as a trademark

20

application on “Shire.”

21

57.

As a direct and proximate result of Defendants’ wrongful conduct, Palantir has

22

been harmed and is being forced to take expensive steps to reduce and mitigate that harm,

23

including opposing Abramowitz’s patent and trademark applications.

24
25

58.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.

26
27
28
13
COMPLAINT

1

SECOND CAUSE OF ACTION

2

(Breach of the Implied Covenant of Good Faith and Fair Dealing– Against All Defendants)

3
4

59.

Plaintiff repeats and realleges paragraphs 1 through 58 above as though fully set

forth herein.

5

60.

California law implies a covenant of good faith and fair dealing in all contracts.

6

61.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

7
8
9
10

contract and all conditions precedent to its enforcement have been performed by Palantir.
62.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
63.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

11

the Transfer Agreements and July 2014 NDA by, among other things, misappropriating and using

12

Plaintiff’s proprietary, confidential, and trade secret information and falsely claiming to have

13

invented Palantir’s inventions.

14
15
16
17

64.

Defendants have breached and violated its implied covenant of good faith and fair

dealing.
65.

As a result of that breach by Defendants, Plaintiff has suffered monetary damages

in an amount to be quantified at trial.

18

THIRD CAUSE OF ACTION

19

(Violation of Cal. Civ. Code § 3426 et seq. – Against Abramowitz)

20
21
22

66.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 65.
67.

Palantir’s confidential and proprietary information pertaining to its projects,

23

including those concerning use of data analysis in the cyber security insurance, clinical trial and

24

natural resources exploration contexts, constitute protectable trade secrets as set forth in

25

California Civil Code § 3426.1(d).

26
27

68.

Palantir’s confidential and proprietary information derives independent economic

value, actual or potential, from not being generally known to the public or to other persons who

28
14
COMPLAINT

1

can obtain economic value from their disclosure or use as set forth in California Civil Code

2

§ 3426.1(d)(1).

3

69.

Palantir’s confidential and proprietary information is the subject of efforts that are

4

reasonable under the circumstances to maintain their secrecy as set forth in California Civil Code

5

§ 3426.1(d)(2).

6
7
8
9

70.

Palantir did not consent to the use of any of its trade secrets by anyone other than

authorized employees using them for Palantir’s business purposes.
71.

Abramowitz willfully and intentionally misappropriated Palantir’s trade secrets

when, inter alia, he filed patent and trademark applications claiming inventorship and ownership

10

of Palantir’s ideas. Palantir is informed and believes that Abramowitz has used Palantir’s trade

11

secret, confidential and/or proprietary information to develop a competing business or in

12

furtherance of that goal.

13
14
15

72.

Palantir is entitled to an injunction of both actual and threatened misappropriation

as set forth in California Civil Code § 3426.2(a).
73.

Palantir also requests that the court take affirmative acts to protect Palantir’s trade

16

secrets, as set forth in California Civil Code § 3426.2(c), including ordering an inspection of

17

Abramowitz’s personal computer(s), USB drives, email accounts, cloud storage accounts and

18

other sources and equipment by a forensics expert to determine whether Palantir’s trade secrets

19

were wrongfully taken and/or disseminated to others, and to ensure that no trade secrets

20

belonging to Palantir remain saved on those systems; and issue a writ of possession, a preliminary

21

injunction, and a permanent injunction ordering the return of Palantir’s confidential information

22

and prohibiting Abramowitz from continuing his unlawful actions.

23
24
25

74.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.
75.

Abramowitz’s conduct as alleged herein was willful, malicious and wanton, and

26

undertaken for the purpose of injuring or causing injury to Palantir. Palantir seeks exemplary and

27

punitive damages against Abramowitz.

28
15
COMPLAINT

1

FOURTH CAUSE OF ACTION

2

(Declaratory Relief – Against All Defendants)
76.

3
4

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 75.
77.

5

There presently exists a real and actual controversy between Palantir and KT4

6

regarding whether KT4 is entitled under the IRA to the information sought through the Demand

7

Letter.

8
9
10
11
12
13

78.

KT4 maintains that it is entitled to information under Sections 2.1 and 2.2 of the

IRA, and Palantir maintains that KT4 is not a “Major Investor” under the IRA, and therefore has
no such right.
79.

Defendants have acted with unclean hands by, among other things,

misappropriated Palantir’s trade secrets.
80.

A declaratory judgment is necessary and appropriate at this time to resolve the

14

controversy between the parties. Palantir therefore specifically requests a judgment declaring that

15

KT4 has no right to any information pursuant to Sections 2.1 or 2.2 of the IRA.

16

FIFTH CAUSE OF ACTION

17

(Violation of California’s Unfair Competition Law,

18

Cal. Bus. & Prof. Code Section 17200 et seq. – Against All Defendants)

19
20
21

81.

Plaintiff Palantir repeats and realleges paragraphs 1 through 80 above as though

fully set forth herein.
82.

Defendants have engaged in (and continues to engage in) the unlawful, fraudulent,

22

and unfair business acts and practices described throughout this Complaint in violation of

23

California’s Unfair Competition Law (the “UCL”), California Business and Professions Code,

24

Section 17200, et seq.

25

83.

Defendants’ business acts and practices were unlawful under the UCL because

26

they resulted in the violations of state common law described herein, including breach of contract

27

and breach of the implied covenant of good faith and fair dealing.

28
16
COMPLAINT

1

84.

Defendants’ business acts and practices were fraudulent because a reasonable

2

person would likely be deceived by Defendant’s false statements and claims, including that they

3

invented and own Palantir’s inventions.

4

85.

Defendants’ business acts and practices are unfair because the harm suffered by

5

Palantir described herein outweighs any justification that Defendants may assert for engaging in

6

those acts and practices. Moreover, Palantir could not have avoided the harm it suffered as a

7

result of Defendants’ unfair acts and practices because Defendants made every effort to obscure

8

and conceal from Palantir the existence and extent of its harmful acts and practices.

9
10
11
12
13
14

86.

Defendants’ unlawful, unfair and fraudulent business acts and practices were

carried out and effectuated in California and injured Plaintiff in California.
87.

Plaintiff suffered harm as herein alleged as a direct and proximate result of

Defendants’ unlawful, unfair and fraudulent business acts and practices.
88.

Plaintiff is entitled to an injunction enjoining Defendants from such further

violations of the UCL. Any such injunction will benefit Plaintiff and the general public.

15
PRAYER FOR RELIEF

16
17

WHEREFORE, Palantir respectfully requests the following relief:

18

1.

19
20

Judgment in favor of Palantir and against all Defendants on all of Palantir’s claims

asserted in the Complaint;
2.

For a preliminary injunction and permanent injunction restraining Defendants,

21

their officers, agents, servants, employees, and all persons acting in concert or participation with

22

them from:

23

a.

perpetuating the wrongful acts and conduct as set forth above;

24

b.

directly or indirectly retaining, using or disclosing Palantir’s trade secret,

25
26
27

confidential and/or proprietary information, and derivatives thereof;
c.

destroying any property, emails, documents or materials that are relevant or

potentially relevant to this action;

28
17
COMPLAINT

E-FILED
9/1/2016 11:20:57 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

16CV299476
Peter H. Kirwan
1 / Complex

16CV299476

9/1/2016

/s/ Rowena Walker

1
2
3
4
5
6
7
8
9

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
David Zifkin (SBN 232845)
([e-mail])
Shira Liu (SBN 274158)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]

E-FILED
9/23/2016 5:04:54 PM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

10
11
12

Additional counsel identified on signature page
Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

13
SUPERIOR COURT OF THE STATE OF CALIFORNIA
14
15
16
17
18
19
20
21
22
23
24
25
26

FOR THE COUNTY OF SANTA CLARA
UNLIMITED JURISDICTION
PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)

Case No. 16CV299476
FIRST AMENDED COMPLAINT FOR:
(1) Breach of Contract
(2) Breach of the Implied Covenant of Good
Faith and Fair Dealing
(3) Violation of Cal. Civ. Code § 3426 et seq.
(4) Declaratory Relief
(5) Violation of California’s Unfair
Competition Law, Cal. Bus. & Prof. Code §
17200 et seq.
JURY TRIAL DEMAND
Complaint Filed: September 1, 2016
Trial Date: Not set

27
28
FIRST AMENDED COMPLAINT

1

Plaintiff Palantir Technologies Inc. (“Palantir”), for its First Amended Complaint against

2

defendants Marc L. Abramowitz (“Abramowitz”), both in his individual capacity and as trustee of

3

the Marc Abramowitz Charitable Trust No. 2 (the “Trust”), KT4 Partners LLC (“KT4”), and

4

Does 1 through 50 (collectively with Abramowitz, KT4, and the Trust, “Defendants”), alleges as

5

follows:
NATURE OF THE ACTION

6
7

1.

This is an action to stop Defendants from misappropriating Palantir’s confidential

8

information and proprietary trade secrets for their own benefit and to prevent them from receiving

9

any additional confidential or proprietary information from Palantir pursuant to an Investors’

10
11

Rights Agreement.
2.

Abramowitz was a respected confidant and advisor to Palantir and its senior

12

executives until he betrayed the trust they bestowed upon him for his own personal gain. He was,

13

through KT4 and other entities, an early equity investor in Palantir who personally engaged in

14

regular discussions with executives about some of the company’s most sensitive business

15

strategies and trade secrets. Those discussions were highly confidential, as was made clear by

16

express written agreements among the parties at the time and a course of dealing based on the

17

most basic principles of fairness and honesty between a trusted shareholder and advisor and

18

Palantir’s management and business personnel.

19

3.

Nonetheless, as part of brazen scheme to claim Palantir’s own highly confidential

20

information and trade secrets as his own, Abramowitz stole those secrets, engaged in methodical

21

deception of Palantir’s senior executives, and made false claims to the United States Patent and

22

Trademark Office (USPTO). Abramowitz’s claim to be a patent innovator is directly

23

contradicted by the facts surrounding his professional career and his interactions with Palantir.

24

4.

To start, Abramowitz has no notable history as an inventor or patent innovator in

25

the data analysis area. He has made most of his career and fortune in real estate and buyout

26

investing. Yet, beginning in 2014, Abramowitz suddenly filed five patent applications with the

27

USPTO, all of them based on trade secrets he stole from Palantir. This was plainly illegal and

28

highly unethical conduct, and it was a betrayal of his trusted relationship with Palantir and its
1
FIRST AMENDED COMPLAINT

1
2

executives.
5.

But Abramowitz’s scheme did not end there. After stealing from Palantir, he hired

3

lawyers to demand from Palantir sensitive and confidential information about the company,

4

including its finances and business dealings, which Palantir considers to be, and treats as, highly

5

sensitive and confidential. Having uncovered Abramowitz’s breach of Palantir’s trust (and of his

6

contractual obligations to Palantir under multiple agreements), it is apparent that Abramowitz is

7

not seeking this information in good faith or for a proper purpose. In fact, unlike Palantir’s other

8

investors, history has shown that Abramowitz has and will misuse any information provided to

9

him in breach of confidence, causing Palantir irreparable harm in the process.

10

6.

Palantir now has been forced to protect itself, both through amendments to its

11

corporate documents, through actions before the USPTO, and through this action, by which

12

Palantir seeks redress for Abramowitz’s breaches of contract, breaches of confidence, and misuse

13

of Palantir’s confidential and proprietary information and trade secrets. Further, to protect

14

Palantir and its shareholders—including employees, former employees and other investors—from

15

continued breaches of confidence in the future, Palantir seeks a declaratory judgment that

16

Abramowitz has no right to the information he has demanded under the Investors’ Rights

17

Agreement.
PARTIES, JURISDICTION, AND VENUE

18
19
20
21

7.

The Court has jurisdiction over this action by virtue of Article VI § 10 of the

California Constitution and California Code of Civil Procedure § 410.10.
8.

Palantir is a Delaware corporation with its principal place of business at 100

22

Hamilton Avenue, Palo Alto, California, 94301. Palantir has suffered, and continues to suffer,

23

injury in this jurisdiction by reason of Defendants’ actions.

24

9.

Palantir is informed and believes and on that basis alleges that defendant Marc L.

25

Abramowitz is an individual residing in San Francisco, California. Palantir is informed and

26

believes and on that basis alleges that Abramowitz is the trustee of the Marc Abramowitz

27

Charitable Trust No. 2. The wrongful actions of Abramowitz occurred in, were targeted to, and

28

caused damage in, California.
2
FIRST AMENDED COMPLAINT

10.

1

Palantir is informed and believes and on that basis alleges that defendant KT4

2

Partners LLC is a Delaware limited liability company with its principal place of business in San

3

Francisco, California. On information and belief, KT4 does business in California and has

4

committed acts that submit it to the jurisdiction of California’s courts. Upon information and

5

belief, Abramowitz is the sole member of KT4 and controls and directs the activities of KT4. The

6

wrongful actions of KT4 occurred in, were targeted to, and caused damage in, California.
11.

7

Palantir is ignorant of the true names of Does 1 through 50 and such names are

8

fictitious. Such defendants are legally responsible for the events and happenings described herein

9

and for the damages proximately caused thereby. Once Palantir learns of the true names of Does

10

1 through 50, Palantir will amend the complaint to include the real name(s) of such party or

11

parties.

12

12.

This action is founded on injuries and damages suffered by Palantir in Santa Clara

13

County by virtue of the Defendants’ misappropriation of trade secrets, breach of contract, breach

14

of confidence and other illegal and wrongful acts as alleged in this Complaint. Venue is proper in

15

this Court because Plaintiff resides in this County, the harm caused by Defendants occurred in

16

this County, and the events that form the basis for this Complaint largely took place in this

17

County.

18

FACTUAL BACKGROUND

19

Palantir’s Business and the Trade Secrets at Issue

20

13.

Palantir is a software and services company that specializes in data analytics. In

21

2004, Palantir was founded on a vision: to provide solutions not only to problems then faced by

22

business and government, but also solutions to problems that did not yet exist, but that would

23

surely come to be as part of our rapidly-evolving world. It sought to make this vision a reality by

24

the use of technology. And it embarked on an ambitious, time-consuming, and costly endeavor to

25

create a viable, successful business. As a result of hard work and investment, Palantir has

26

succeeded and is now a leader in its industry. Today, Palantir’s products are deployed at the most

27

critical government, commercial, and non-profit institutions in the world to solve problems the

28

company’s founders had not even dreamed of back in 2004.
3
FIRST AMENDED COMPLAINT

14.

1

In particular, at its founding Palantir set out to create products that would

2

transform the way organizations use, perhaps their most important asset in today’s business

3

world, data. Palantir’s mission has been and remains to develop flexible tools and services to

4

provide human-driven analysis of real-world data, with a focus on creating the world’s best user

5

experience for working with data. To achieve this, Palantir builds platforms for integrating,

6

managing, and securing data, on top of which it layers applications for fully interactive, human-

7

driven, machine-assisted analysis.

8

services that allow businesses, governments and other entities to run their operations in a way that

9

corresponds with the reality of their marketplace and consumers.
15.

10

This means that Palantir develops programs and provides

Businesses and governments use Palantir’s software to interpret and visualize large

11

quantities of information from various sources. For example, businesses use Palantir’s software

12

to analyze their internal and externally available data to better assess cyber risks, and government

13

agencies use Palantir’s software to analyze intelligence data to better understand emerging

14

threats.

15

16.

Palantir’s success is due in part to its early recognition that many organizations are

16

traditionally unable to identify problems and leverage insights from their internal data because the

17

data is held in separate silos that are often disconnected and have different access, security

18

controls, and privacy requirements.

19

information is stored in containerized, unrelated units—businesses and governments cannot fully

20

realize the potential of that data. Palantir provides software solutions that avoid this problem,

21

allowing users to run their businesses consistent with the actual environment in which they

22

operate. Thus, Palantir’s products are used to fuse and analyze customer data across platforms

23

and sources and enable secure collaboration among analysts, while protecting data privacy and

24

security.

25

17.

When information is siloed—that is, when important

As is expected in this type of work, Palantir is also heavily involved in research

26

and development. Palantir spends millions of dollars each year to expand its business and seek

27

out new opportunities—and to stay ahead of the curve and atop the industry. This research and

28

development investment involves both creating new software, technologies and processes and
4
FIRST AMENDED COMPLAINT

1
2

adapting existing products and technologies to new applications and uses.
18.

As described in more detail below, this litigation concerns, among other things,

3

Defendants’ misappropriation of Palantir’s proprietary trade secret and business information

4

concerning Palantir’s technologies and/or use cases for (i) interpreting and analyzing data in the

5

healthcare space for clinical drug trials and for health insurance risk assessments (the “Healthcare

6

Technology”); (ii) cyber insurance technology and related cybersecurity technology for use of

7

customer consortia to improve cybersecurity; (the “Cyber Insurance and Cybersecurity

8

Technology”); and (iii) interpreting and analyzing data in connection with natural resources

9

exploration and management (the “Natural Resources Exploration Technology”). It also concerns

10

Defendants’ misappropriation of Palantir’s trade secret business plans and customer lists related

11

to these technologies. Palantir employed reasonable efforts to maintain the secrecy of these trade

12

secrets, which have had substantial economic value because they were not generally known to the

13

public or others in the industry at the time of Defendants’ misappropriation.

14

Palantir Scrupulously Protects Its Confidential Information and Trade Secrets

15

19.

Palantir undertakes significant efforts to protect the confidentiality and security of

16

its trade secrets, property (including physical locations, intellectual property, and network

17

security), as well as sensitive and confidential business and financial information.

18

20.

Palantir employs both technical and physical safety measures to maintain the

19

security of its property and confidential information. Among other things, Palantir restricts

20

employees’ access to sensitive internal information such that individual employees can only

21

access such data after obtaining appropriate authorization and only to the extent necessary to

22

perform their jobs. Additionally, Palantir employs a multitude of technical security measures to

23

protect its systems and networks, including, among other methods: intrusion detection systems,

24

network monitoring tools, anti-malware software, network firewalls, and whole disk encryption

25

of employee computers. Palantir’s network and security systems are also continually monitored

26

for potential security risks. To secure access to information and data no matter where employees

27

are, Palantir uses and requires complex password requirements and two-factor authentication for

28

access to its hardware and its network.
5
FIRST AMENDED COMPLAINT

1

21.

In addition to data and network security, physical access to Palantir’s facilities is

2

also highly restricted. Palantir employees must use electronic badges to access Palantir facilities.

3

Access to certain sensitive areas of Palantir’s facilities is further restricted to a small subset of

4

Palantir employees with a specific need for access (including, for example, Palantir facilities

5

containing network servers and security equipment, among others). Visitors must be invited to

6

Palantir facilities, must sign in and wear a visitor badge and are escorted at all times. In addition,

7

certain areas of Palantir’s facilities are off limits to visitors, and Palantir deploys security guards

8

to protect its facilities.

9

22.

Palantir also implements numerous measures and policies to ensure that its

10

employees safeguard the confidentiality and security of its trade secrets and sensitive and

11

confidential business information.

12

employment background checks for all new employees and also requires legal training for new

13

hires, covering confidentiality, information and data security, and compliance.
Abramowitz’s Relationship with Palantir

14
15

As part of the hiring process, Palantir requires pre-

23.

Initial funding for Palantir came from a variety of sources, including the

16

company’s founders who remain with Palantir today as shareholders of common shares of

17

Palantir stock. Abramowitz, through KT4 and other entities he controls, was an early investor in

18

Palantir, first investing in the company in 2005.

19

24.

Through the years, Abramowitz was involved with the business of Palantir.

20

Rather than acting as a passive investor, he became a regular fixture at Palantir. Between 2010

21

and 2015, Abramowitz visited Palantir offices over thirty times. Indeed, Abramowitz spent so

22

much time at Palantir that in 2014 he requested an office at the company.

23

25.

Abramowitz established relationships with the company’s founders, officers, and

24

employees. As a result, he was viewed as a trusted investor and advisor by the company,

25

including several founders and senior employees. Abramowitz fostered these relationships of

26

confidence and held himself out as a friend of, advisor to, and investor in Palantir, whose interests

27

were completely aligned with the company. He made clear that he could be trusted to keep

28

confidences and act in the company’s best interests. When Abramowitz had questions about
6
FIRST AMENDED COMPLAINT

1

Palantir’s business, including financial information, that were relevant to his status as a

2

shareholder and trusted advisor to the company, he was provided with the information.
26.

3

In this context, Abramowitz often inquired about specific Palantir projects. On

4

several occasions, Palantir provided information to Abramowitz in his capacity as a shareholder

5

and advisor about concepts for new technology and use cases for technology that Palantir had

6

spent significant time and resources researching, developing and testing, including the Healthcare

7

Technology, Cyber Insurance and Cybersecurity Technology, and Natural Resources Exploration

8

Technology.

9

proprietary business plans and customer lists for these technologies. Palantir always provided

10

any such information to Abramowitz with the express and reasonable expectation that

11

Abramowitz would maintain its confidentiality, that he would never pass Palantir’s concepts and

12

trade secrets off as his own, and that he would never use the information to Palantir’s detriment or

13

without Palantir’s permission.
27.

14
15

At Abramowitz’s request, Palantir also provided him with information about

Consistent with the confidential nature of these communications, Palantir and

Abramowitz entered into confidentiality agreements.
28.

16

For example, in a Preferred Stock Transfer Agreement, dated August 14, 2012,

17

Abramowitz agreed “to keep confidential and refrain from using or disclosing all agreements,

18

documents and other information regarding the Company or its securityholders provided or made

19

available to [Abramowitz]…in [his] capacity as a stockholder of the Company….” Abramowitz

20

renewed that confidentiality agreement in a Preferred Stock Transfer Agreement, dated June 17,

21

2015.

22

29.

Similarly, in a Preferred Stock Transfer Agreement also dated June 17, 2015, KT4

23

agreed “to keep confidential and refrain from using or disclosing all agreements, documents and

24

other information regarding the Company or its securityholders provided or made available to

25

[Abramowitz]…in [his] capacity as a stockholder of the Company….”

26

30.

Abramowitz also executed an NDA, dated July 12, 2014 (the “July 2014 NDA”),

27

covering “Proprietary Information,” which is defined in the NDA as “non-public business,

28

technical or other information, materials and/or ideas of Palantir [including] anything you learn or
7
FIRST AMENDED COMPLAINT

1

discover as a result of exposure to or analysis of any Proprietary Information.” The NDA

2

expressly forbids Abramowitz from using or revealing any of Palantir’s Proprietary Information.

3
4

Abramowitz Misappropriation of Business Information and Trade Secrets
31.

By 2014, Abramowitz had embarked on an intentional and calculated scheme to

5

discover Palantir trade secrets and convert them for his own use and profit. Abramowitz violated

6

the trust Palantir put in him by, at a minimum, misappropriating the above-described trade secrets

7

related to the Healthcare Technology, the Cyber Insurance and Cybersecurity Technology, and

8

the Natural Resources Exploration Technology.

9

32.

The Healthcare Technology. Since 2010, Palantir worked extensively to identify

10

the most effective way to enter and advance the clinical trial space. As a result of this work,

11

Palantir developed proprietary and trade secret technology and data analytics services to improve

12

the design of clinical trials of prescription drugs by pharmaceutical companies and academic

13

institutions. For example, this proprietary technology and data analytics services can interpret

14

and analyze various data for purposes of patient recruitment in clinical trial. In conjunction with

15

developing this technology, Palantir developed proprietary business plans, customer lists and use

16

cases that are also trade secrets.

17

confidentiality of these trade secrets.

18

33.

Palantir has made reasonable efforts to maintain the

In the healthcare space, Palantir also worked extensively to develop proprietary

19

technology and data analytic services to perform insurance risk assessments, including, for

20

example, patient diagnoses not accounted for by health insurance companies and healthcare fraud

21

risks. In conjunction with developing this technology, Palantir developed proprietary business

22

plans, customer lists and use cases that are also trade secrets. Palantir has made reasonable

23

efforts to maintain the confidentiality of these trade secrets.

24

34.

As a trusted investor and advisor, Abramowitz learned proprietary trade secret

25

information concerning the Healthcare Technology through his communications with Palantir

26

about Palantir’s research and development work, technology, business plans, use cases, and

27

customer lists in this area.

28

35.

At all times, Abramowitz knew that this information was confidential and
8
FIRST AMENDED COMPLAINT

1

proprietary, and that he needed Palantir’s permission before disclosing any of it. As described

2

above, Abramowitz entered into confidentiality agreements with Palantir. Moreover, in his

3

communications with Palantir, Abramowitz made clear that he understood the information

4

Palantir provided to him was confidential.

5

36.

In February 2014, Abramowitz sought to broker a deal between Palantir and a

6

customer. Had the introduction resulted in a finalized deal, Abramowitz would have received a

7

fee for the introduction. Consistent with the confidential nature of their communications, the

8

draft agreement between Abramowitz and Palantir for this fee contains a confidentiality

9

provision. Even though this potential customer understood that it was also obligated to maintain

10

the confidentiality of any information received, Palantir advised Abramowitz that he could

11

provide this potential customer only with limited information.

12

37.

After it was clear that the introduction would not result in a finalized deal – and

13

despite knowing that Palantir invented the Healthcare Technology and that it was confidential

14

trade secret information – Abramowitz misappropriated Palantir’s inventions and trade secrets in

15

this space, has improperly disclosed them in an effort to profit from them, and has attempted to

16

patent them as his own.

17

38.

On October 29, 2014, without Palantir’s knowledge or consent, Abramowitz filed

18

Provisional Application No. 62/072,368 with the United States Patent and Trademark Office

19

(“USPTO”) seeking to patent systems, methods and concepts concerning the Healthcare

20

Technology that were developed by Palantir and explained to Abramowitz in confidence. The

21

application falsely identifies Abramowitz as the sole inventor of the Healthcare Technology,

22

includes no mention of Palantir at all, and fails to list a single Palantir employee as an inventor.

23

39.

On information and belief, in his effort to market the Healthcare Technology as his

24

own and to profit from it, Abramowitz has also improperly disclosed trade secret information

25

related to the Healthcare Technology to others.

26

40.

In addition to misappropriating Palantir’s trade secret Healthcare Technology,

27

Defendants breached their confidentiality agreements when they filed the patent application and

28

disclosed Palantir’s confidential information to others.
9
FIRST AMENDED COMPLAINT

1

41.

The Cyber Insurance and Cybersecurity Technology. Palantir engaged in

2

research and development to build technology to assist companies in the cyber insurance and

3

cybersecurity space. Beginning in 2013, Palantir began developing trade secret systems and

4

methods for companies to better defend themselves against cyberattacks to their networks by

5

sharing cyberattack data among various participants in Palantir’s system. Palantir developed

6

trade secret technology, business plans, use cases, and customer lists to implement these

7

cybersecurity systems and methods. Palantir often referred to this project as “CyberMesh” or

8

“Cyber Consortium.” Additionally, Palantir developed related systems, methods, technologies,

9

business plans, uses cases, and customer lists that were specific to improving cyber insurance.

10

For example, Palantir expanded upon its existing cyber security technologies to develop

11

technology to more accurately measure the risk of a cyberattack and thus enable insurers to

12

provide products to protect customers against the risk of cyberattacks.

13

reasonable efforts to maintain the confidentiality of these trade secrets.

14
15
16

42.

Palantir has made

Abramowitz requested information and participated in discussions about Palantir’s

Cyber Insurance and Cybersecurity Technology trade secrets.
43.

In June 2014, a Palantir executive disclosed to Abramowitz during a conversation

17

that Palantir was working on opportunities in the insurance industry, including opportunities

18

related to cyber insurance. When Abramowitz expressed interest in these concepts and requested

19

additional information, the Palantir executive arranged for Abramowitz to speak with another

20

Palantir executive, who sent Abramowitz trade secret information on these concepts via email and

21

invited Abramowitz to meet with him at Palantir’s offices to discuss them. During his June 2014

22

meeting with Abramowitz, this Palantir executive further described the two related concepts that

23

Palantir had developed relating to cyber insurance and the use of customer consortia to improve

24

cyber security.

25

44.

When Abramowitz next met with Palantir on the subject, he indicated he was

26

interested in setting up a Palantir subsidiary that he would run to perform the insurance-related

27

function Palantir had revealed to him. This once again reflects that Abramowitz’s participation in

28

the discussions in June 2014 were confidential communications made solely for the benefit and
10
FIRST AMENDED COMPLAINT

1

interest of Palantir. Palantir ultimately decided not pursue the subsidiary Abramowitz suggested.
45.

2

After Palantir decided not to pursue the subsidiary Abramowitz desired – and

3

despite knowing that Palantir invented the Cyber Insurance and Cybersecurity Technology and

4

that it was confidential trade secret information – Abramowitz misappropriated Palantir’s

5

inventions and trade secrets in this space, has improperly disclosed them in an effort to profit

6

from them, and has attempted to patent them as his own.
46.

7

Without Palantir’s knowledge, on October 21, 2014, Abramowitz filed Provisional

8

Application No. 62/066,716 at the USPTO attempting to patent systems, methods and concepts

9

related to Palantir’s Cyber Insurance and Cybersecurity Technology as his own, claiming to be

10

the invention’s sole owner and inventor. Once again, Abramowitz’s application fails to mention

11

Palantir and does not include a single Palantir employee as an inventor.
47.

12

Presumably unbeknownst to Abramowitz, Palantir had filed its own patent

13

application on certain inventions related to the Cyber Insurance and Cybersecurity Technologies,

14

on May 16, 2014, months before Abramowitz learned of the systems, methods, techniques and

15

concepts from Palantir; that application resulted in United States Patent No. 9,009,827, dated

16

April 14, 2015, which is owned by Palantir and was invented by Palantir employees. During the

17

pendency of that application, the information contained in it remained confidential trade secret

18

information. Moreover, that patent application and patent does not disclose other trade secret

19

information related to the Cyber Insurance and Cybersecurity Technology (e.g., business plans,

20

use cases), which was disclosed to Abramowitz in confidence.
48.

21

On information and belief, in his effort to market the Cyber Insurance and

22

Cybersecurity Technology as his own and to profit from it, Abramowitz has also improperly

23

disclosed trade secret information related to the Cyber Insurance and Cybersecurity Technology

24

to others.
49.

25

In addition to misappropriating Palantir’s trade secret Cyber Insurance and

26

Cybersecurity Technology, Defendants breached their confidentiality agreements when

27

Abramowitz filed the patent application and disclosed Palantir’s confidential information to

28

others.
11
FIRST AMENDED COMPLAINT

50.

1

The Natural Resources Exploration Technology. Palantir engaged in research

2

and development to create a more effective way for natural resources exploration companies to

3

mine data. Palantir was able to adapt its existing data analysis technologies to develop this new

4

proprietary and trade secret technology. In conjunction with developing this valuable technology,

5

Palantir also developed proprietary business plans, use cases and customer lists that are also trade

6

secret. Palantir has made reasonable efforts to maintain the confidentiality of these trade secrets.
51.

7

After discussions with Palantir employees concerning Palantir’s work on adapting

8

its data analysis technology for use in oil and gas exploration, Abramowitz again sought to patent

9

Palantir’s systems, methods and concepts by filing Provisional Application No. 62/094,888 with

10

the USPTO on December 19, 2014, and falsely claiming to be the sole owner and inventor. As

11

with his other applications described above, Abramowitz filed the application without Palantir’s

12

knowledge or consent and failed to credit Palantir or its employees in any way.
52.

13

On information and belief, in his effort to market the Natural Resources

14

Exploration Technology as his own and to profit from it, Abramowitz has also improperly

15

disclosed trade secret information related to the Natural Resources Exploration Technology to

16

others.

17

53.

In addition to misappropriating Palantir’s trade secret Natural Resources

18

Exploration Technology, Defendants breached their confidentiality agreements when they filed

19

the patent application and disclosed Palantir’s confidential information to others.

20

54.

After Palantir learned of one of Abramowitz’s improper patent applications, a

21

Palantir employee asked him about it. At that time, Abramowitz claimed that he filed the patent

22

application for Palantir’s benefit. That statement was plainly false, and was presumably designed

23

to induce Palantir to delay challenging Abramowitz’s patent application and filing suit for

24

misappropriation of trade secrets and breach of contract.

25

withdrawn any of his improper patent applications nor amended them to indicate that Palantir is

26

the inventor and owner of the systems, methods and concepts described therein.

27
28

55.

Indeed, Abramowitz has neither

Through his scheme, Abramowitz intentionally abused his status as an investor

and trusted advisor in an attempt to profit at Palantir’s expense by improperly using and
12
FIRST AMENDED COMPLAINT

1

disclosing multiple Palantir trade secrets and improperly attempting to patent them as his own.

2

On information and belief, despite Abramowitz’s lack of experience in these areas, he is

3

attempting to market them as his own. Additionally, he could, for example, attempt to use

4

Palantir’s trade secrets to hold Palantir hostage in exchange for royalties. Abramowitz’s actions

5

are causing Palantir irreparable harm, and Palantir is therefore separately seeking to have

6

Abramowitz’s patent applications denied by the USPTO.

7

56.

The foregoing facts are not the only indications that Abramowitz has sought to

8

profit from Palantir’s trade secrets. As Abramowitz knows, Palantir’s company name is inspired

9

by the “seeing stones” referenced in The Lord of the Rings. Without Palantir’s knowledge,

10

Abramowitz filed for a trademark on the mark “Shire,” which is also referenced in The Lord of

11

the Rings as the place where one of the main characters lives. It is clear that Abramowitz has

12

filed this trademark application in an attempt to further improperly associate himself with what he

13

views as the Palantir brand.

14

57.

Significantly, Abramowitz filed this trademark application with an intent to use the

15

mark in connection with “underwriting and administration of cyber liability insurance;

16

underwriting and administration of cyber security insurance; insurance brokerage in the field of

17

cyber liability and cyber security insurance.” This further reflects that Abramowitz is using, and

18

intends to continue to use, Palantir’s trade secrets in these areas.

19
20

Abramowitz Demands Information Under the Investors’ Rights Agreement
58.

In furtherance of his scheme, on August 16, 2016, KT4, through counsel at

21

Williams & Connolly LLP, sent Palantir letter (the Demand Letter”) demanding information

22

pursuant to the Investors’ Rights Agreement (as amended most recently on September 1, 2016,

23

the “IRA”). Under the February 15, 2008 version of the IRA (the “February IRA”) invoked by

24

Abramowitz in his letter, and the July 8, 2015 version in effect at the time Abramowitz sent his

25

letter (the “July IRA”), the agreement granted certain rights to receive information from Palantir

26

to anyone who was a “Major Investor” in Palantir, defined in Section 2.1 of the IRA as any

27

investor that holds “at least 5,000,000 shares of” certain types of Palantir stock.

28

59.

In the Demand Letter, KT4 purports to be a Major Investor of Palantir and
13
FIRST AMENDED COMPLAINT

1

demands that Palantir produce documents and provide information to its counsel pursuant to

2

Sections 2.1 and 2.2 of the February IRA. Neither IRA, however, provides any right for counsel

3

or anyone other than a Major Investor to receive the information.

4

60.

Even if KT4 were a Major Investor (which Palantir does not concede) and even if

5

the IRA had not been amended as described below, Abramowitz’s breaches of his confidentiality

6

agreements and misappropriation of trade secrets – namely, his unclean hands – preclude him

7

from obtaining confidential and proprietary information through the IRA.

8

Palantir and Major Investors Amend the IRA to Protect Palantir, its Employees, and

9

Shareholders from Malicious Actors

10

61.

Having discovered Abramowitz’s actions, his betrayal of Palantir’s trust, and his

11

misappropriation of its trade secrets—and fearing more such betrayals and breaches of confidence

12

that remain undiscovered—Palantir could no longer trust Abramowitz with its confidential

13

information, including the information demanded by KT4 in the Demand Letter.

14

62.

To further protect Palantir—as well as its employees, former employees, investors,

15

and other shareholders—from the malicious acts of Defendants, on September 1, 2016, Palantir

16

and a group of its Major Investors holding a majority of the Registrable Securities held by Major

17

Investors invoked their rights under Section 3.7 of the July IRA to amend the agreement (the

18

“Amendment”). Even assuming KT4 was a Major Investor with rights under Sections 2.1 and 2.2

19

of the July IRA and even assuming that Defendants’ unclean hands did not preclude them from

20

receiving any confidential information through the IRA, KT4 has no such rights under the current

21

IRA; the Amendment is expressly retroactive in its effect, as permitted by Section 3.7 of the IRA.

22

63.

Palantir did not take this action lightly, but after receiving the Demand Letter

23

following the nefarious activities of Defendants through their access as investors and

24

Abramowitz’s former status as an advisor, Palantir determined that it was necessary to act to

25

protect itself and others from the harmful actions of Defendants.

26

64.

Palantir regularly and frequently works with investors, upon request, to provide

27

relevant information corresponding to their status as a shareholder, subject to confidentiality

28

obligations. As it has done in responding to Abramowitz’s reasonable questions in the past,
14
FIRST AMENDED COMPLAINT

1

Palantir stands ready to do the same with KT4 upon a showing that such requests are being made

2

in good faith and with no improper purpose.
Harm to Palantir

3
4
5
6

65.

As a result of Defendants’ actions, Palantir has been and will continue to be

injured in an amount to be established according to proof.
66.

As a result of Abramowitz’s unauthorized copying, theft, and misappropriation of

7

Palantir’s confidential and proprietary information and trade secrets, as well as his co-opting of

8

Palantir’s work developing technology, systems, methods, and concepts and subsequently passing

9

them off as his own, Palantir has been and will continue to be injured absent equitable relief.

10

FIRST CAUSE OF ACTION

11

(Breach of Contract – Against All Defendants)

12
13
14

67.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 66.
68.

Defendants’ contracts with Palantir, including, inter alia, the Transfer Agreements

15

and the July 2014 NDA (the “Confidentiality Contracts”), imposed a contractual obligation on

16

Defendants to maintain the confidentiality of information learned or accessed as a result of

17

Defendants’ investments in Palantir, Abramowitz’s visits to Palantir’s offices, and his discussions

18

with Palantir employees.

19
20
21
22
23

69.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

contract and all conditions precedent to its enforcement have been performed by Palantir.
70.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
71.

Under the Confidentiality Contracts, Defendants agreed to hold in strictest

24

confidence, and not to use, except for the benefit of the company, any information they obtain or

25

access as investors or during visits or discussions.

26

72.

As described above, Defendants breached the Confidentiality Agreements when

27

Abramowitz used the information he learned from Palantir employees to file patent applications

28

listing himself as sole inventor of Palantir’s systems, methods and concepts that he learned in
15
FIRST AMENDED COMPLAINT

1

confidence, as well as a trademark application on “Shire” that they intend to use in the cyber

2

insurance space.

3

disclosed confidential information to others in an improper effort to profit from Palantir’s

4

confidential information and trade secrets.

5
6
7
8

73.

Defendants further breached their confidentiality obligations when they

As a direct and proximate result of Defendants’ wrongful conduct, Palantir has

been harmed and is being forced to take expensive steps to reduce and mitigate that harm.
74.

In addition to equitable relief, Palantir demands monetary damages, fees and costs,

where allowed.

9

SECOND CAUSE OF ACTION

10

(Breach of the Implied Covenant of Good Faith and Fair Dealing– Against All Defendants)

11
12

75.

Plaintiff repeats and realleges paragraphs 1 through 74 above as though fully set

forth herein.

13

76.

California law implies a covenant of good faith and fair dealing in all contracts.

14

77.

The Transfer Agreements, signed by Abramowitz on behalf of the Trust, is a valid

15
16
17
18

contract and all conditions precedent to its enforcement have been performed by Palantir.
78.

The July 2014 NDA, signed by Abramowitz, is a valid contract and all conditions

precedent to its enforcement have been performed by Palantir.
79.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

19

the Transfer Agreements and July 2014 NDA by, among other things, misappropriating and using

20

Plaintiff’s proprietary, confidential, and trade secret information and falsely claiming to have

21

invented Palantir’s inventions.

22
23
24

80.

In addition, the IRA, as amended, is a valid contract and all conditions precedent

to its enforcement have been performed by Palantir.
81.

Defendants have unfairly interfered with Plaintiff’s right to receive the benefit of

25

the IRA by, among other things, using it to seek confidential information for improper purposes.

26

As a result, Palantir is being forced to take expensive steps to reduce and mitigate that harm.

27
28

82.

Defendants have breached and violated its implied covenant of good faith and fair

dealing.
16
FIRST AMENDED COMPLAINT

1
2

83.

As a result of that breach by Defendants, Plaintiff has suffered monetary damages

in an amount to be quantified at trial.

3

THIRD CAUSE OF ACTION

4

(Violation of California’s Unfair Competition Law,

5

Cal. Bus. & Prof. Code Section 17200 et seq. – Against All Defendants)

6
7
8
9

84.

Plaintiff Palantir repeats and realleges paragraphs 1 through 83 above as though

fully set forth herein.
85.

Defendants have engaged in (and continues to engage in) the unlawful, fraudulent,

and unfair business acts and practices described throughout this Complaint in violation of

10

California’s Unfair Competition Law (the “UCL”), California Business and Professions Code,

11

Section 17200, et seq.

12

86.

Defendants’ business acts and practices were unlawful under the UCL because

13

they resulted in the violations of state common law described herein, including breach of contract

14

and breach of the implied covenant of good faith and fair dealing.

15

87.

Defendants’ business acts and practices were fraudulent because a reasonable

16

person would likely be deceived by Defendant’s false statements and claims, including that they

17

invented and own Palantir’s inventions.

18

88.

Defendants’ business acts and practices are unfair because the harm suffered by

19

Palantir described herein outweighs any justification that Defendants may assert for engaging in

20

those acts and practices. Moreover, Palantir could not have avoided the harm it suffered as a

21

result of Defendants’ unfair acts and practices because Defendants made every effort to obscure

22

and conceal from Palantir the existence and extent of its harmful acts and practices.

23
24
25
26
27
28

89.

Defendants’ unlawful, unfair and fraudulent business acts and practices were

carried out and effectuated in California and injured Plaintiff in California.
90.

Plaintiff suffered harm as herein alleged as a direct and proximate result of

Defendants’ unlawful, unfair and fraudulent business acts and practices.
91.

Plaintiff is entitled to an injunction enjoining Defendants from such further

violations of the UCL. Any such injunction will benefit Plaintiff and the general public.
17
FIRST AMENDED COMPLAINT

1

FOURTH CAUSE OF ACTION

2

(Violation of Cal. Civ. Code § 3426 et seq. – Against All Defendants)

3
4
5

92.

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 91.
93.

Palantir’s confidential and proprietary information pertaining to its projects,

6

including those concerning use of data analysis in the Healthcare Technology, Cyber Insurance

7

and Cybersecurity Technology, and Natural Resources Exploration Technology, constitute

8

protectable trade secrets as set forth in California Civil Code § 3426.1(d).

9

94.

Palantir’s confidential and proprietary information derives independent economic

10

value, actual or potential, from not being generally known to the public or to other persons who

11

can obtain economic value from their disclosure or use as set forth in California Civil Code

12

§ 3426.1(d)(1).

13

95.

Palantir’s confidential and proprietary information is the subject of efforts that are

14

reasonable under the circumstances to maintain their secrecy as set forth in California Civil Code

15

§ 3426.1(d)(2).

16

96.

Palantir did not consent to the use of any of its trade secrets by anyone other than

17

authorized employees using them for Palantir’s business purposes and customers bound by

18

confidentiality obligations.

19

97.

Defendants willfully and intentionally misappropriated Palantir’s trade secrets

20

when, inter alia, he used them to develop patent and trademark applications claiming

21

inventorship and ownership of Palantir’s systems, methods and concepts. Palantir is informed

22

and believes that Defendants have used, and continues to use, Palantir’s trade secret, confidential,

23

and proprietary information to develop a competing business or in furtherance of that goal,

24

including those described in his trademark and patent applications.

25
26
27
28

98.

Palantir is entitled to an injunction of both actual and threatened misappropriation

as set forth in California Civil Code § 3426.2(a).
99.

Palantir also requests that the court take affirmative acts to protect Palantir’s trade

secrets, as set forth in California Civil Code § 3426.2(c), including ordering an inspection of
18
FIRST AMENDED COMPLAINT

1

Defendants’ computer(s), USB drives, email accounts, cloud storage accounts and other sources

2

and equipment by a forensics expert to determine the extent to which Palantir’s trade secrets were

3

wrongfully taken and/or disseminated to others, and to ensure that no trade secrets belonging to

4

Palantir remain saved on those systems; and issue a writ of possession, a preliminary injunction,

5

and a permanent injunction ordering the return of Palantir’s confidential information and

6

prohibiting Defendants from continuing his unlawful actions.
100.

7
8

In addition to equitable relief, Palantir demands monetary damages, fees, and

costs, where allowed.
101.

9

Defendants’ conduct as alleged herein was willful, malicious and wanton, and

10

undertaken for the purpose of injuring or causing injury to Palantir. Palantir seeks exemplary and

11

punitive damages against Defendants.

12

FIFTH CAUSE OF ACTION

13

(Declaratory Relief – Against All Defendants)
102.

14
15

Palantir hereby realleges, as if set forth fully herein, the allegations of paragraphs 1

through 101.
103.

16

There presently exists a real and actual controversy between Palantir and KT4

17

regarding whether KT4 is entitled under the IRA to the information sought through the Demand

18

Letter.

19

104.

KT4 maintains that it is entitled to information under Sections 2.1 and 2.2 of the

20

IRA, and Palantir maintains that KT4 is neither a “Major Investor” under the IRA nor otherwise

21

entitled to such information under the IRA, as amended.

22

105.

Additionally, Defendants have acted with unclean hands by, among other things,

23

misappropriating Palantir’s trade secrets. For this independent reason, KT4 is not entitled to

24

information under Sections 2.1 and 2.2 of the IRA.

25

106.

A declaratory judgment is necessary and appropriate at this time to resolve the

26

controversy between the parties. Palantir therefore specifically requests a judgment declaring that

27

KT4 has no right to any information pursuant to Sections 2.1 or 2.2 of the IRA.

28
19
FIRST AMENDED COMPLAINT

PRAYER FOR RELIEF

1
2

WHEREFORE, Palantir respectfully requests the following relief:

3

1.

4
5

Judgment in favor of Palantir and against all Defendants on all of Palantir’s claims

asserted in the Complaint;
2.

For a preliminary injunction and permanent injunction restraining Defendants,

6

their officers, agents, servants, employees, and all persons acting in concert or participation with

7

them from:
a.

10
11

d.

16
17
18

destroying any property, emails, documents or materials that are relevant or

potentially relevant to this action;
e.

14
15

directly or indirectly retaining, using or disclosing Palantir’s trade secret,

confidential and/or proprietary information, and derivatives thereof;

12
13

continuing to pursue Defendants’ patent applications set forth above;

c.

9

perpetuating the wrongful acts and conduct as set forth above;

b.

8

moving or transferring outside the United States Palantir’s property,

emails, documents or materials that are relevant or potentially relevant to this action;
3.

For an Order requiring that Palantir’s confidential, proprietary and trade secret

information be returned to Palantir;
4.

For an Order requiring all Defendants to divulge the identity of the individuals,

19

groups and companies to whom they have disclosed Palantir’s confidential, proprietary and trade

20

secret information;

21
22
23
24
25
26
27
28

5.

For an Order requiring all Defendants to account for and pay to Palantir all ill-

gotten gains, profits, and savings obtained or derived from their improper conduct;
6.

For damages, unjust enrichment, and/or reasonable royalties in amounts to be

proven at trial;
7.

For an Order awarding Palantir punitive and/or exemplary damages in a sum to be

determined at trial, on the basis of Defendants’ willful, deliberate, and malicious tortious conduct;
8.

For restitution and disgorgement of all ill-gotten gains unjustly obtained and

retained by Defendants through the acts complained of herein;
20
FIRST AMENDED COMPLAINT

1
2
3
4
5
6
7
8
9

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
David Zifkin (SBN 232845)
([e-mail])
Shira Liu (SBN 274158)
([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401,
Telephone: [phone]
Facsimile: [phone]

E-FILED
9/23/2016 5:04:54 PM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

10
11

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

12
13

SUPERIOR COURT OF THE STATE OF CALIFORNIA

14

FOR THE COUNTY OF SANTA CLARA

15

UNLIMITED JURISDICTION

16
17
18
19
20
21
22
23
24
25
26

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50, )
inclusive,
)
)
Defendants.
)
)
)
)

Case No. 16CV299476
PROOF OF SERVICE

Complaint Filed: September 1, 2016
Trial Date: Not set

27
28
PROOF OF SERVICE

CASE NO. 16CV299476

1

PROOF OF SERVICE

2
3
4
5

I, the undersigned, declare as follows:
I am employed in the County of Los Angeles, State of California. At the time of service I
was over 18 years of age and not a party to this action. My business address is 401 Wilshire
Boulevard, Suite 850, Santa Monica, California 90401. On September 23, 2016 I served the
following document(s):

6

1. FIRST AMENDED COMPLAINT FOR: (1) Breach of Contract (2) Breach of the
Implied Covenant of Good Faith and Fair Dealing (3) Violation of Cal. Civ. Code §
3426 et seq. (4) Declaratory Relief (5) Violation of California’s Unfair Competition
Law, Cal. Bus. & Prof. Code § 17200 et seq.

7
8
9

I personally served the documents on the persons below, as follows:

10
11
12

MARC L. ABRAMOWITZ
3455 WASHINGTON STREET
SAN FRANCISCO, CA 94118

13
14
15
16

The documents were served by the following means:


17
18
19
20
21
22
23

KT4 PARTNERS LLC
C/O AGENT FOR SERVICE:
INCORP SERVICES, INC.
919 NORTH MARKET STREET,
SUITE 425
WILMINGTON, DE 19801



By personal service. I caused to be personally delivered the documents to the
persons at the addresses listed above. (1) For a party represented by an
attorney, delivery was made to the attorney or at the attorney's office by
leaving the documents in an envelope or package clearly labeled to identify the
attorney being served with a receptionist or an individual in charge of the
office. (2) For a party, delivery was made to the party or by leaving the
documents at the party's residence with some person not less than 18 years of
age between the hours of eight in the morning and six in the evening.
By United States mail. I enclosed the documents in a sealed envelope or
package addressed to the persons at the addresses listed above and:
 deposited the sealed envelope with the United States Postal Service,
with the postage fully prepaid.

24
25
26
27

placed the envelope for collection and mailing, following our
ordinary business practices. I am readily familiar with this business's
practice for collecting and processing correspondence for mailing. On
the same day that correspondence is placed for collection and mailing,
it is deposited in the ordinary course of business with the United States
Postal Service, in a sealed envelope with postage fully prepaid.

28
1
PROOF OF SERVICE

CASE NO. 16CV299476

E-FILED
9/30/2016 10:43:28 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

E-FILED
9/30/2016 10:43:28 AM
David H. Yamasaki
Chief Executive Officer/Clerk
Superior Court of CA,
County of Santa Clara
16CV299476
Reviewed By:Rowena Walker

Exhibit B

Exhibit 1

Exhibit C

1
2
3
4
5
6
7

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]
David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]

11

KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]

12

Additional counsel identified on signature page

8
9
10

13

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

14

SUPERIOR COURT OF THE STATE OF CALIFORNIA

15

FOR THE COUNTY OF SANTA CLARA

16

UNLIMITED JURISDICTION

17
18

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

19

Plaintiff,

20
21
22
23
24
25
26

v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Case No. 16CV299476
PLAINTIFF’S MOTION FOR
PROTECTIVE ORDER GOVERNING
THE PROTECTION AND EXCHANGE
OF CONFIDENTIAL MATERIAL;
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT THEREOF;
DECLARATION OF SHIRA R. LIU
Date: June 13, 2017
Time: 9:00 a.m.
Dept.: 9
Judge: Hon. Mary E. Arand
Complaint Filed: September 1, 2016
Trial Date: Not set

27
28
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD IN THIS ACTION:
PLEASE TAKE NOTICE THAT on June 13, 2017 at 9:00 AM, or as soon thereafter as

2
3

the matter may be heard, before the Honorable Mary E. Arand in Department 9 of the above

4

referenced Court located at 191 N. First Street, San Jose, California 95113, Plaintiff Palantir

5

Technologies Inc. (“Plaintiff” or “Palantir”) will move the Court for entry of a Protective Order in

6

this case.
This motion is made on the ground that discovery in this action will involve the

7
8

production of confidential and highly confidential materials and deposition testimony concerning

9

confidential and highly confidential matters, the treatment of which should be governed by the

10

terms of a Protective Order entered by the Court. Plaintiff’s proposed Protective Order is

11

attached as Exhibit 1 to the Declaration of Shira R. Liu (“Liu Decl.”).
The parties met and conferred about the proposed Protective Order. While both parties

12
13

agreed that a Protective Order was warranted and there was agreement on many terms of such an

14

order, they reached an impasse on two critical issues that are needed to protect highly confidential

15

information, including trade secrets and competitively sensitive information. First, Plaintiff’s

16

proposed Protective Order includes a multi-tiered confidentiality designation that is needed to

17

ensure the protection of trade secret and competitively sensitive information. Second, Plaintiff’s

18

proposed Protective Order includes a provision requiring the parties to give notice before

19

disclosing highly confidential materials to outside experts or expert consultants. This provision is

20

needed to ensure that highly confidential materials are not shared with an expert or expert

21

consultant who, for example, works or consults for a competitor.
The motion is based upon this notice, Plaintiff’s Memorandum of Points and Authorities;

22
23

the Declaration of Shira R. Liu; the Court’s file in this matter; and such further evidence and

24

arguments as may be presented at the hearing of this matter.

25

///

26

///

27

///

28

///
1
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1
2
3
4
5

KIRKLAND & ELLIS LLP
601 Lexington Ave
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES
INC.

6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
3
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

TABLE OF CONTENTS

1
2

I.

3
4
5
6
7
8
9

II.

Entry of a Protective Order is Necessary to Protect the Parties’ Confidential and
Trade Secret Information .................................................................................................... 8
A.
Attorneys’ Eyes Only Designations Are Standard Provisions in a
Protective Order, Especially In Trade Secret Cases Among Competitors. ............. 8
B.
An AEO Designation Is Necessary To Protect Disclosure of Palantir’s
Most Sensitive Information to a Direct Competitor Accused of
Misappropriating Similar Information and Breaching Confidentiality
Agreements. ........................................................................................................... 10
C.
The Harm Palantir Faces from Inadvertent Disclosure Outweighs Any
Incidental Prejudice to Defendants........................................................................ 13
D.
The Protective Order Should Require Notice Before the Parties Disclose
Highly Confidential Information to Experts or Expert Consultants...................... 15
Conclusion ........................................................................................................................ 16

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
4
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

TABLE OF AUTHORITIES

2

CASES

3

1221122 Ontario Ltd. v. TCP Water Sols., Inc.
(N.D. Ill. June 23, 2011, No. 10 C 4942) 2011 WL 2516531.................................................... 12

4
5
6
7
8

Brown Bag Software v. Symantec Corp.
(9th Cir. 1992) 960 F.2d 1465.......................................................................................... 8, 10, 11
Calcor Space Facility, Inc. v. Sup. Ct.
(1997) 53 Cal.App.4th 216 ........................................................................................................ 13
Dynetix Design Sols., Inc. v. Synopsys, Inc.
(N.D. Cal. Apr. 12, 2012, No. C-11-05973 PSG) 2012 WL 1232105 ....................................... 12

9
10
11
12
13

GT, Inc. v. Sup. Ct. of Santa Cruz Cnty.
(1984) 151 Cal.App.3d 748........................................................................................ 8, 10, 11, 14
Hitz Entm’t Corp. v. Mosley
(N.D. Ill. Feb. 1, 2017, No. 16 C 1199) 2017 WL 444073 .......................................................... 8
In re Providian Credit Card Cases
(2002) 96 Cal.App.4th 292 ........................................................................................................ 12

14
15
16
17
18

In re The City of N.Y.
(2d Cir. 2010) 607 F.3d 923 ....................................................................................................... 12
Intel Corp. v. VIA Techs., Inc.
(N.D. Cal. 2000) 198 F.R.D. 525 ............................................................................................... 14
Jagex Ltd. v. Impulse Software
273 F.R.D. 357 ........................................................................................................................... 12

19
20
21
22
23
24
25
26
27

Littlebear v. Advanced Bionics, LLC
(N.D. Okla. July 20, 2012, No. 11-CV-418-GKF-PJC) 2012 WL 2979023 ............................. 14
Moskowitz v. Superior Court
(1982) 137 Cal.App.3d 313........................................................................................................ 10
Nutratech, Inc. v. Syntech (SSPF) Int’l, Inc.
(C.D. Cal. 2007) 242 F.R.D. 552 ............................................................................................... 13
ST Sales Tech Holdings, LLC v. Daimler Chrysler Co.
(E.D.Tex. Mar. 14, 2008, No. 6:07–CV–346) 2008 WL 5634214 ............................................ 13
Stout v. Remetronix, Inc.
(S.D. Ohio 2014) 298 F.R.D. 531 ................................................................................................ 8

28
5
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1
2
3
4

Tailored Lighting, Inc. v. Osram Sylvania Prods, Inc.
(W.D.N.Y. 2006) 236 F.R.D. 146 .......................................................................................... 9, 11
Vesta Corset Co. v. Carmen Found., Inc.
(S.D.N.Y. Jan. 13, 1999, No. 97 CIV. 5139 (WHP)) 1999 WL 13257 ................................. 9, 15
Voice Domain Techs., LLC v. Apple, Inc.
(D. Mass. Oct. 8, 2014, No. CIV.A. 13-40138-TSH) 2014 WL 5106413 ..................... 11, 12, 14

5
6
7
8

STATUTES
Civ. Code § 3426.1(d) ...................................................................................................................... 8
Civ. Code § 3426.5 .................................................................................................................... 8, 12

9

Civ. Proc. Code § 2025.420 ........................................................................................................... 12

10

Civ. Proc. Code § 2030.090 ........................................................................................................... 12

11

Civ. Proc. Code § 2031.060 ........................................................................................................... 12

12

Civ. Proc. Code § 2033.080 ........................................................................................................... 12

13

OTHER AUTHORITIES

14

Cal. Prac. Guide Civ. Pro. Before Trial Ch. 8C-5 ............................................................................ 9

15
16
17
18
19
20
21
22
23
24
25
26
27
28
6
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

MEMORANDUM OF POINTS AND AUTHORITIES

1

Plaintiff Palantir Technologies Inc. (“Plaintiff” or “Palantir”) respectfully submits this

2
3

memorandum of points and authorities in support of its motion for entry of a Protective Order on

4

the ground that discovery in this action will involve the production of and testimony about

5

confidential and highly confidential information. Plaintiff’s proposed Protective Order is

6

attached as Exhibit 1 to the Declaration of Shira Liu (“Liu Decl.”).
During their meet and confer regarding this motion, the parties agreed that the entry of a

7
8

Protective Order is appropriate in this case and agreed on most of the terms. (Liu Decl. ¶ 3.)

9

However, the parties were not able to agree on certain critical provisions that Plaintiff has

10

proposed to protect highly confidential information, including trade secrets and competitively

11

sensitive information.1 (Liu Decl. ¶ 4.)
First, Plaintiff’s proposed Protective Order includes a multi-tiered confidentiality

12
13

designation that includes the following designations: “Confidential,” “Highly Confidential –

14

Attorneys’ Eyes Only,” and “Highly Confidential Software.” This provision is necessary because

15

this case is between competitors (e.g., Defendants have filed patent applications in direct

16

competition with Plaintiff), concerns highly confidential trade secrets and competitively sensitive

17

information, and may concern highly confidential software. Defendants desire a single-tiered

18

“Confidential” designation that would allow Defendants, including Mr. Abramowitz, to review

19

Plaintiff’s trade secrets and competitively sensitive information. In other words, Defendants

20

propose a provision that would allow them to continue to misappropriate Plaintiff’s trade secrets

21

and highly confidential information. Such a provision would obviously be highly prejudicial to

22

Plaintiff. It would also be contrary to case law and model protective orders that provide for

23

multi-tiered designations in trade secret cases and in cases among competitors. Both factual

24

circumstances are present here.
Second, Plaintiff’s proposed Protective Order includes a provision requiring the parties to

25
26

It is Palantir’s understanding that Defendants anticipate submitting their own proposed
protective order in accordance with a briefing schedule about which the parties are currently
meeting and conferring. (Liu Decl. ¶ 5.)
1

27
28

7
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

give notice before disclosing materials subject to the Protective Order to outside experts or expert

2

consultants and providing a brief period in which the other party could object for good cause.

3

This provision is needed for similar reasons as the first. It is needed to ensure that highly

4

confidential information is not shared with an expert or expert consultant who, for example,

5

works or consults for a competitor. In opposing this provision, Defendants again appear to be in

6

denial that this case involves claims for breach of confidentiality agreements and

7

misappropriation of trade secrets. But it is, and this provision is common in such cases.

8

I.

9
10

Entry of a Protective Order is Necessary to Protect the Parties’ Confidential and
Trade Secret Information
A.

Attorneys’ Eyes Only Designations Are Standard Provisions in a Protective
Order, Especially In Trade Secret Cases Among Competitors.

11

This action is a trade secret case among competitors involving highly confidential trade

12

secret and competitively sensitive information. In California, a trade secret means information

13

that “[d]erives independent economic value, actual or potential, from not being generally known

14

to the public or to other persons who can obtain economic value from its disclosure or use” and

15

“is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

16

(Civ. Code § 3426.1(d) [emphasis added].) In such cases and in cases among competitors,

17

Attorneys’ Eyes’ Only (“AEO”) provisions are necessary to protect trade secret information and

18

similar competitively sensitive information. Indeed, California courts are required by statute to

19

“preserve the secrecy of an alleged trade secret by reasonable means, which may include granting

20

protective orders in connection with discovery proceedings.” (Civ. Code § 3426.5.)

21

Consistent with courts throughout the country, California courts have held that AEO

22

provisions are common in actions like this where the parties are competitors and the claims

23

involve confidential and trade secret information. (See e.g., GT, Inc. v. Sup. Ct. of Santa Cruz

24

Cnty. (1984) 151 Cal.App.3d 748, 755-56 [upholding “counsel only” protective order in case

25

between competitors]; Brown Bag Software v. Symantec Corp. (9th Cir. 1992) 960 F.2d 1465,

26

1470-71 [upholding outside counsel only protective order in case between competitors]; see also,

27

e.g., Hitz Entm’t Corp. v. Mosley (N.D. Ill. Feb. 1, 2017, No. 16 C 1199) 2017 WL 444073, at *7

28

[“pricing and strategic information . . . is commonly designated as AEO”]; Stout v. Remetronix,
8
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

Inc. (S.D. Ohio 2014) 298 F.R.D. 531, 534, 536 [recognizing that “[a] Protective Order with an

2

AEO designation serves to limit disclosure of trade secret information” and ordering an AEO

3

designation for sensitive business information]; Tailored Lighting, Inc. v. Osram Sylvania Prods,

4

Inc. (W.D.N.Y. 2006) 236 F.R.D. 146, 148 [“Indeed, in cases involving the disclosure of trade

5

secrets, courts often issue protective orders limiting access to the most sensitive information to

6

counsel and their experts.”]; Vesta Corset Co. v. Carmen Found., Inc. (S.D.N.Y. Jan. 13, 1999,

7

No. 97 CIV. 5139 (WHP)) 1999 WL 13257, at *3 [“Protective orders that limit access to certain

8

documents to counsel and experts are commonly entered in litigation involving trade secrets and

9

other confidential research, development, or commercial information.”]; Cal. Prac. Guide Civ.

10

Pro. Before Trial Ch. 8C-5 [“Indeed, an ‘attorney’s eyes only’ provision is common in stipulated

11

protective orders.”].)

12

The provisions are so routine that, for example, the Northern District of California

13

includes AEO designations in its model protective order for trade secret cases (Liu Decl., Ex. 2 ¶

14

7.3); the Los Angeles Superior Court has a model protective order that includes AEO

15

designations (Liu Decl., Ex. 3 ¶ 8; the California Bar Intellectual Property Section has a model

16

protective order that includes AEO designations (Liu Decl., Ex. 4 ¶ 3); and the San Mateo

17

Superior Court has a model protective order that treats trade secrets as AEO (Liu Decl. Ex. 5 ¶¶ 1,

18

5.). There is no reason to deviate from such a standard practice in this litigation.

19

Palantir’s proposed Protective Order includes a multi-tier confidentiality provision where

20

documents “that a party believes would create a substantial risk of serious financial or other

21

injury if disclosed to another Party or non-Party, and that such risk cannot be avoided by less

22

restrictive means” could be designated “Highly Confidential – Attorneys’ Eyes Only” (“AEO”).”

23

(Liu Decl., Ex 1 ¶ 2.) Only the following information, if non-public, would be presumed to merit

24

a “Highly Confidential” designation because they are highly confidential and competitively

25

sensitive information: “trade secrets, pricing information, financial data, sales information, sales

26

or marketing forecasts or plans, business plans or strategy, sales or marketing plans or strategy,

27

product and business development information, engineering documents, testing documents,

28

employee information, personal financial information, offerings, sales or purchases of sock or
9
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

securities, and other non-public information of similar competitive and business sensitivity.” (Id.)

2

The proposed Protective Order also includes a designation for “Highly Confidential Software,”2

3

only to be used for “extremely sensitive highly confidential information or items representing

4

computer software or code . . . , disclosure of which . . . would create a substantial risk of harm

5

that could be avoided by less restrictive means.” (Id. ¶ 3.)3
The parties’ outside counsel and experts will have full access to these materials. (Id. ¶ 6.)

6
7

Palantir’s proposed protective order contains safeguards against over-designation to ensure that

8

the parties limit AEO protection to only those documents that warrant it. Specifically, if any

9

party believes materials have been improperly designated as AEO, the protective order includes

10

procedures to challenge the designation. (Id. ¶ 18.) These balanced provisions are reasonably

11

necessary to protect trade secret information and similar competitively sensitive information that

12

derives value from being confidential, especially from competitors.
B.

13
14

An AEO Designation Is Necessary To Protect Disclosure of Palantir’s Most
Sensitive Information to a Direct Competitor Accused of Misappropriating
Similar Information and Breaching Confidentiality Agreements.

It is well-established that AEO designations are warranted to protect against prejudice and

15
16

undue burden to the parties, and “‘undue burden’ in discovery . . . includ[es] protection from

17

misuse of trade secrets by competitors.” (Brown Bag Software, supra, 960 F.2d 1465, 1470.) In

18

this case, there is a substantial risk that Palantir will be required to produce some of its most

19

sensitive information in discovery or that Palantir will be required to use such information as

20

evidence in support of its causes of action. As a California appellate court has explained,

21

preventing protective orders from including AEO designations “would invite misuse of . . . legal

22

proceedings to obtain trade secrets or other confidential information” about competitors. (GT,

23

Inc., supra, 151 Cal.App.3d at 755; see also Moskowitz v. Superior Court (1982) 137 Cal.App.3d

24

313, 319) [issuing writ of mandate to vacate trial court’s denial of protective order]; GT, Inc.,

25
26
27
28

2

This provision is also AEO, but includes some additional protections for software, such as
requiring inspection at the offices of the producing party’s counsel.
3 Palantir collectively refers to the “Highly Confidential—Attorneys’ Eyes Only” designation and
the “Highly Confidential Software” designation as “AEO” designations.
10
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

supra, 151 Cal.App.3d 748, 754 n.2 [listing reasons why protective order at issue in Moskowitz

2

likely included an AEO designation].)

3

This is a valid concern in this case. Here, Palantir alleges Abramowitz was a “respected

4

confidant and advisor to Palantir” who “betrayed the trust they bestowed upon him,” “stole th[eir]

5

secrets, engaged in methodical deception of Palantir’s senior executives, and made false claims to

6

the United States Patent and Trademark Office,” for his own profit. (First Amended Complaint

7

for Damages ¶¶ 2, 3, 27-31, 72, 82, 85, 97.) Palantir has also alleged that Abramowitz has

8

breached confidentiality agreements regarding both trade secret information and other highly

9

sensitive competitive information. If Abramowitz is permitted to gain access to Palantir’s

10

competitively sensitive information through discovery, there is a risk that he may misappropriate

11

this information as he has done in the past or otherwise misuse or disclose it.

12

The Court need not determine whether Abramowitz has committed the acts Palantir

13

alleges in order to find good cause for the multi-tier protective order. It is indisputable that

14

Abramowitz holds himself out as an inventor and that he submitted several patent applications in

15

areas in which Palantir does business. Courts have clearly held that, standing alone, the “risk of

16

inadvertent use of confidential information if disclosed to inventors, engineers, and scientists” is

17

good cause for an AEO designation. (Voice Domain Techs., LLC v. Apple, Inc. (D. Mass. Oct. 8,

18

2014, No. CIV.A. 13-40138-TSH) 2014 WL 5106413, at *4 [imposing AEO designation in

19

protective order] [emphasis added].) Even when the court credits a party’s integrity and good

20

faith, it must consider whether the party can “lock-up trade secrets in his mind, safe from

21

inadvertent disclosure . . . once he ha[s] read the documents.” (Brown Bag Software, supra, 960

22

F.2d 1465, 1471.) Abramowitz’s status as a purported inventor of technologies in the same field

23

as Palantir makes this the type of case where the risk of inadvertent disclosure is at its highest

24

because “it seems unreasonable to expect that anyone working to further his own scientific and

25

technical interests would be able assuredly to avoid even the subconscious use of confidential

26

information revealed through discovery that is relevant to those interests.” (Tailored Lighting,

27

Inc., supra, 236 F.R.D. 146, 149 [imposing an AEO designation even when the court “ha[d] no

28

reason to question the integrity of plaintiff’s president and patent inventor”]; see also Voice
11
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

Domain, supra, 2014 WL 5106413, at *5 [“While the Court has no cause to doubt [employee]’s

2

integrity, it questions whether it is possible to avoid the subconscious use of [defendant]’s

3

confidential material in his future endeavors.”].)

4

Moreover, AEO designations are especially appropriate in cases like this one involving

5

trade secrets where the court has a statutory duty to preserve the secrecy of an alleged trade

6

secret. (Civ. Code § 3426.5.) California’s statutes governing protective orders specifically

7

contemplate this issue and provide a “protective order may include . . . [t]hat a trade secret or

8

other confidential research, development, or commercial information not be disclosed, or be

9

disclosed only to specified persons or only in a specified way.” (Civ. Proc. Code § 2031.060(b)(5)

10

[document production]; see also id. § 2025.420(b)(13) [depositions]; id. § 2030.090(b)(6)

11

[interrogatories]; id. § 2033.080(b)(4) [requests for admission].) Under UTSA, the court is vested

12

with broad discretion to protect an alleged trade secret from dissemination. (In re Providian

13

Credit Card Cases (2002) 96 Cal.App.4th 292, 298 [mandatory confidentiality requirement

14

imposed “in actions initiated pursuant to the Uniform Trade Secrets Act for misappropriation of

15

trade secrets”].) Federal courts also routinely implement AEO designations in trade secret cases.

16

(See, e.g., In re The City of N.Y. (2d Cir. 2010) 607 F.3d 923, 935 [“The disclosure of

17

confidential information on an ‘attorneys’ eyes only’ basis is a routine feature of civil litigation

18

involving trade secrets.”]; 1221122 Ontario Ltd. v. TCP Water Sols., Inc. (N.D. Ill. June 23,

19

2011, No. 10 C 4942) 2011 WL 2516531, at *5 [finding an AEO designation “necessary to give

20

‘sufficient protection’ to the parties’ trade secrets during the discovery process” and ordering the

21

parties to amend their stipulated protective order to add an AEO designation].) Courts also

22

protect source code under an AEO designation. (See., e.g., Liu Decl. Ex. 2 ¶ 2.9 [Northern

23

District of California Model Protective Order including provisions for source code]; Dynetix

24

Design Sols., Inc. v. Synopsys, Inc. (N.D. Cal. Apr. 12, 2012, No. C-11-05973 PSG) 2012 WL

25

1232105, at *2 aff’d 473 Fed. App’x 896 (Fed. Cir. 2012) [applying the source code provisions of

26

the Northern District of California Model Protective Order]; Jagex Ltd. v. Impulse Software, 273

27

F.R.D. 357, 358 (D. Mass. 2011) [recognizing source code can constitute a trade secret]).

28
12
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

Beyond trade secrets, AEO designations are required to prevent the inadvertent disclosure

2

of the parties’ confidential financial and business information and “courts should be particularly

3

sensitive to the potential for creating an unfair commercial advantage to a party seeking discovery

4

of [trade secret] materials.” (Calcor Space Facility, Inc. v. Sup. Ct. (1997) 53 Cal.App.4th 216,

5

226.) As a result, “[c]ourts commonly issue protective orders limiting access to sensitive

6

information,” such as pricing information, customer lists and supply lists, “to counsel and their

7

experts.” (Nutratech, Inc. v. Syntech (SSPF) Int’l, Inc. (C.D. Cal. 2007) 242 F.R.D. 552, 555

8

[customer and supplier lists]; see also, e.g., Stout, supra, 298 F.R.D. 531, 536 [pricing

9

information].)

10

The need to protect confidential financial and business information extends even beyond

11

direct competitors to parties that could compete in the future. (Nutratech, Inc., supra 242 F.R.D.

12

552, 555 [“legitimate” “fear of competitive harm” warranted AEO designation where, although

13

the parties “currently sell[] to different buyers,” the party opposing the AEO designation could

14

“choose to become a direct competitor of [the other party] in the future”]; ST Sales Tech

15

Holdings, LLC v. Daimler Chrysler Co. (E.D.Tex. Mar. 14, 2008, No. 6:07–CV–346) 2008 WL

16

5634214, at *6 [“Moreover, it is somewhat disingenuous to argue Sales Tech is not Defendants’

17

competitor . . . . Plaintiff and Defendants all seek to utilize, in one manner or another, intellectual

18

property as part of a business model for pecuniary gain.”].) The need to protect this type of

19

information is particularly pronounced in this case because Abramowitz and Palantir are

20

competitors – Palantir researches, invests, and performs business in the same commercial areas

21

for which Abramowitz applied for patent applications and in which Abramowitz claims to be an

22

inventor.

23
24
25

C.

The Harm Palantir Faces from Inadvertent Disclosure Outweighs Any
Incidental Prejudice to Defendants.

Any incidental prejudice Defendants incur from a multi-tiered protective order is

26

outweighed by the prejudice Palantir will suffer if its trade secrets and highly confidential

27

business information are made available to a competitor. First, as courts have widely recognized,

28

litigants are fully able to use confidential information produced in discovery when their attorneys
13
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

and experts have access to that information. (See, e.g., Intel Corp. v. VIA Techs., Inc. (N.D. Cal.

2

2000) 198 F.R.D. 525, 529 [“The party seeking access [to confidential information] must

3

demonstrate that its ability to litigate will be prejudiced, not merely its ability to manage outside

4

litigation counsel . . . . Requiring a party to rely on its competent outside counsel does not create

5

an ‘undue and unnecessary burden.’”].) Defendants’ outside counsel and expert witnesses will

6

have access to materials with an AEO designation. (Liu Decl., Ex. 1, ¶ 6.) Defendants are

7

represented by counsel from Skadden, Arps, Slate, Meagher & Flom LLP and Williams &

8

Connolly. (Liu Decl., ¶ 2.) There can be no doubt that Defendants’ outside counsel is competent

9

to defend this action.

10

Second, this argument is especially strong where, as here, the party opposing the AEO

11

designation is an individual Palantir alleges has already violated his confidentiality agreements

12

with Palantir. Abramowitz’s role as the supposed inventor of technologies that compete with

13

Palantir make him “especially situated to take positions directly harmful and antagonistic to”

14

Palantir. (See Voice Domain, supra, 2014 WL 5106413, at *4, *5 [employee who wore “many

15

hats” at plaintiff company, including founder and inventor who was, according to defendant,

16

“‘synonymous” with plaintiff,’” could be prevented from accessing defendant’s documents

17

because the employee “was especially situated to take positions directly harmful and antagonistic

18

to [defendant]” even where the “Court ha[d] no cause to doubt [employee]’s integrity”].) That he

19

is an individual does not change the fact that he is a competitor who has already improperly used

20

and disclosed Palantir’s trade secret and competitively sensitive information.

21

Third, any prejudice to Defendants is mitigated because there is no risk Abramowitz will

22

be prevented from accessing materials that are not AEO since Plaintiff’s proposed protective

23

order strictly defines “Highly Confidential” and “Highly Confidential Software” information and

24

includes procedures for disputing an AEO designation. (Liu Decl., Ex. 1, ¶ 18; see also GT. Inc.,

25

supra, 151 Cal.App.3d at 756 n.4 [authorizing AEO designation and noting procedure to seek

26

relief from protective order when “some form of disclosure to the clients would be warranted”];

27

Littlebear v. Advanced Bionics, LLC (N.D. Okla. July 20, 2012, No. 11-CV-418-GKF-PJC) 2012

28

WL 2979023, at *3 [ordering a protective order with AEO designations despite plaintiff’s
14
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1

“concerns regarding the potential misuse” because “the protective order provides Plaintiff with a

2

remedy to prevent and/or resolve any type of potential misuse”].)

3

Although Plaintiff and Defendants have competing interests, their positions “are not

4

irreconcilable” since “a balance may be struck which limits the dissemination [of highly

5

confidential information] to counsel and experts” through a multi-tiered confidentiality

6

designation. (Vesta Corset Co., supra, 1999 WL 13257, at *3.)

7
8
9

D.

The Protective Order Should Require Notice Before the Parties Disclose
Highly Confidential Information to Experts or Expert Consultants.

The second point of dispute between the parties concerns Plaintiff’s proposal that the

10

Protective Order require the parties to give each other notice and an opportunity to object before

11

disclosing “Highly Confidential” information or “Highly Confidential Software” to experts or

12

expert consultants. (Liu Decl., Ex. 1, ¶ 9.) This provision is necessary to protect the parties from

13

the same type of prejudice described above. Experts and consultants may work for Plaintiff’s

14

competitors outside of their roles as testifying/consulting experts, or because of his purported

15

status as an inventor, Abramowitz may seek to serve as his own expert. In such circumstances,

16

these experts could make use of Palantir’s “Highly Confidential” information or “Highly

17

Confidential Software” in their work with Palantir’s competitors, because the experts could not

18

un-learn the information they review in this case. An expert’s knowledge of Palantir’s trade

19

secrets or financials or business plans, for example, is a bell that cannot be un-rung.

20

The provision proposed by Plaintiff would safeguard against this risk by requiring the

21

parties to give each other notice and five days to object before disclosing “Highly Confidential

22

Software” or “Highly Confidential” information to experts or consultants. Any objection raised

23

by a party would have to be grounded by an “objectively reasonable concern that the outside

24

expert or expert consultant will, intentionally or inadvertently, use or disclose ‘Highly

25

Confidential Material—Attorneys’ Eyes Only’ or ‘Highly Confidential Software’” information in

26

ways inconsistent with the Protective Order. (Liu Decl. Ex. 1, ¶ 9.) For instance, Plaintiff would

27

have a serious—and “objectively reasonable”—concern if one of Defendants’ experts had an

28

employment or ongoing consulting relationship with one of Plaintiff’s competitors outside the
15
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

1
2
3
4
5
6
7
8
9
10
11
12
13
14

Carlos M. Sires (Pro Hac Vice to be filed)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
401 East Las Olas Blvd., Suite 1200
Fort Lauderdale, FL 33301
Telephone: [phone]
Facsimile: [phone]
Kaitlyn Murphy (SBN 293309)
BOIES, SCHILLER & FLEXNER LLP
([e-mail])
1999 Harrison St., Suite 900
Oakland, CA 94612
Telephone: [phone]
Facsimile: [phone]
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
KIRKLAND & ELLIS LLP
601 Lexington Ave
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES
INC.

15
16
17
18
19
20
21
22
23
24
25
26
27
28
17
NOTICE OF MOTION AND MOTION FOR ENTRY OF PROTECTIVE ORDER

DECLARATION OF SHIRA R. LIU

1
2
3

I, Shira R. Liu, declare as follows:
1.

I am an attorney duly admitted to practice law in the State of California and am an

4

associate with the law firm of Boies Schiller Flexner LLP, counsel to Plaintiff Palantir

5

Technologies Inc. (“Plaintiff” or “Palantir”). I make this declaration in support of the Plaintiff’s

6

Motion for Entry of a Protective Order. I have personal knowledge of the facts set forth herein, or

7

am informed and believe them to be true. If called as a witness, I could and would competently

8

testify to the matters stated herein.

9
10
11

2.

During our meet and confer process, Defendants have been represented by counsel

from Skadden, Arps, Slate, Meagher & Flom LLP and Williams & Connolly.
3.

The parties have met and conferred regarding the terms of a Protective Order in

12

this case. During the meet and confer, Defendants agreed with Palantir that a Protective Order is

13

appropriate in this case.

14

4.

However, the parties have reached an impasse regarding two primary aspects of

15

the Protective Order. First, Palantir proposes a multi-tiered Protective Order that includes an

16

Attorneys’ Eyes Only designation. Defendants propose a single-tier Protective Order that would

17

allow Marc Abramowitz to see all documents produced by Palantir in this case. Second, Palantir

18

proposed to require the parties to give other notice and an opportunity to object before disclosing

19

“Confidential,” “Highly Confidential” information or “Highly Confidential Software” to experts

20

or expert consultants. Defendants object to this provision. Palantir’s proposed Protective Order

21

requires the parties to give other notice and an opportunity to object before disclosing “Highly

22

Confidential” information or “Highly Confidential Software” to experts or expert consultants.

23
24

5.

It is my understanding that Defendants intend to submit their own proposed order

in connection with briefing of these issues.

25

6.

Attached as Exhibit 1 is Plaintiff’s proposed Protective Order.

26

7.

Attached as Exhibit 2 is a true and correct copy of the Northern District of

27

California’s Model Protective Order for Litigation Involving Patents, Highly Sensitive

28

Confidential Information and/or Trade Secrets. I downloaded this document from
1
DECLARATION OF SHIRA LIU ISO MOTION FOR ENTRY OF PROTECTIVE ORDER

EXHIBIT
1

1
2
3
4
5
6
7
8

SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

FOR THE COUNTY OF SANTA CLARA

10

UNLIMITED JURISDICTION

11
12

15
16
17
18

[PROPOSED] PROTECTIVE ORDER
GOVERNING THE PROTECTION AND
EXCHANGE OF CONFIDENTIAL
MATERIAL

Plaintiffs,

13
14

Case No. 16CV299476

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Judge Mary E. Arand
Trial Date: Not Set
Dept.: 9

19
20
21
22

[PROPOSED] PROTECTIVE ORDER GOVERNING THE
PROTECTION AND EXCHANGE OF CONFIDENTIAL MATERIAL
IT IS HEREBY ORDERED that this Protective Order shall govern the handling of

23

any information produced or disclosed by any party named in the above captioned litigation or

24

any non-party (the “Producing Party”) in connection with the above captioned litigation

25

(hereinafter “Litigation” or “Action”), including documents or electronic files exchanged, things

26

viewed, depositions, deposition exhibits, interrogatory responses, responses to requests for

27

admission, pretrial and trial testimony, and all copies, extracts, summaries, compilations,

28
1
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

designations and portions of any of the foregoing (such information shall hereinafter be referred

2

to as “Discovery Material”). This Order is entered in the exercise of this Court’s inherent power

3

to manage litigation for the express purpose of facilitating discovery and the exchange of

4

documents. This Order is made without prejudice to the right of any party to apply to the Court

5

for modification of this Order on good cause shown, or to challenge the application of this order

6

to any particular Discovery Material produced during the course of discovery in this case.

7

1.

8

as “Confidential” under the terms of this Protective Order if such Producing Party in good faith

9

believes that such Discovery Material contains “Confidential Information.” The term

“Confidential” Information. Any Producing Party may designate any Discovery Material

10

“Confidential Information” shall be interpreted to mean confidential, proprietary, and/or

11

commercially sensitive information or information entitled to confidential treatment under

12

applicable law.

13

2.

14

designate any Discovery Material as “Highly-Confidential—Attorneys’ Eyes Only” if such

15

Producing Party in good faith believes that such Discovery Material contains Highly Confidential

16

Information. “Highly Confidential” means those subsets of Confidential Information that a party

17

believes would create a substantial risk of serious financial or other injury if disclosed to another

18

Party or non-Party, and that such risk cannot be avoided by less restrictive means. The following

19

information, if non-public, shall be presumed to merit the “Highly Confidential—Attorneys’ Eyes

20

Only” designation: trade secrets, pricing information, financial data, sales information, sales or

21

marketing forecasts or plans, business plans or strategy, sales or marketing plans or strategy,

22

product and business development information, engineering documents, testing documents,

23

employee information, personal financial information, offerings, sales or purchases of stock or

24

securities, and other non-public information of similar competitive and business sensitivity.

25

3.

26

information “Highly Confidential Software” if such Producing Party in good faith believes that

27

such Discovery Material contains Highly Confidential Software Information. “Highly

“Highly Confidential—Attorneys’ Eyes Only” Information. Any Producing Party may

“Highly Confidential Software” Information. Any Producing Party may designate

28
2
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Confidential Software” Information means extremely sensitive highly confidential information or

2

items representing computer software or code and associated comments and revision histories,

3

formulas, engineering specifications, or schematics that define or otherwise describe in detail the

4

algorithms or structure of software or hardware designs, disclosure of which to another Party or

5

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

6

restrictive means.

7

4.

8

Confidential Software” Discovery Material. “Confidential,” “Highly Confidential—Attorneys’

9

Eyes Only,” or “Highly Confidential Software” Discovery Material, and information derived

10

therefrom, shall be used solely for purposes of this Action and shall not be used for any other

11

purpose, including, without limitation, any business, proprietary, commercial or governmental

12

purpose. “Confidential,” “Highly Confidential—Attorneys’ Eyes Only,” or “Highly Confidential

13

Software” Discovery Material shall not be given, shown, made available to or communicated in

14

any way to any person other than as permitted by this Protective Order.

15

5.

16

“Confidential,” “Highly Confidential—Attorneys’ Eyes Only,” or “Highly Confidential

17

Software” for purposes of this Protective Order shall be made in the following manner by the

18

Producing Party.

19

Use of “Confidential” or “Highly Confidential—Attorneys’ Eyes Only” or “Highly

Manner of Designating Materials. The designation of Discovery Material as

a. In the case of documents, including any and all exhibits, briefs, memoranda,

20

interrogatory responses, responses to request for admission, or other materials

21

(apart from transcripts or recordings of oral testimony from any deposition, which

22

is subject to Paragraph 5(e) below), by affixing the legend “Confidential,” “Highly

23

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software” to all

24

pages of any document containing “Confidential,” “Highly Confidential—

25

Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery Materials,

26

respectively. The legend shall not obscure or interfere with the legibility of the

27

designated information.

28
3
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

b. In the case of documents produced electronically as a “TIF” or similar image

2

format, by affixing the legend “Confidential,” “Highly Confidential—Attorneys’

3

Eyes Only,” or “Highly Confidential Software” to all pages of the imaged

4

document containing any “Confidential,” “Highly Confidential—Attorneys’ Eyes

5

Only,” or “Highly Confidential Software” Discovery Materials, respectively.

6

c. In the case of documents produced electronically in their native format, by

7

appending the legend “Confidential,” “Highly Confidential—Attorneys’ Eyes

8

Only,” or “Highly Confidential Software” to the Bates number associated with the

9

document. It is the responsibility of any person producing a hard copy or image of

10

a native file produced in this fashion to affix the Bates number and the legend

11

“Confidential” or “Highly Confidential” to the hard copy document or image.

12

d. In the case of video tapes, audio tapes, and electronic media such as computer

13

disks or compact discs (CD), which contain or include “Confidential,” “Highly

14

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

15

Discovery Material, by affixing the required legend on the package thereof.

16
17

e. For deposition testimony, in one of the following manners:
i. At any deposition, counsel for the person providing testimony may

18

designate their entire transcript “Confidential,” “Highly Confidential—

19

Attorneys’ Eyes Only,” or “Highly Confidential Software” at any time

20

during the proceeding, including at the outset. In addition, upon any

21

inquiry with regard to the content of Discovery Material marked

22

“Confidential,” “Highly Confidential—Attorneys’ Eyes Only,” or “Highly

23

Confidential Software” or when counsel for a person (party or nonparty)

24

deems that the answer to a question may result in the disclosure of

25

“Confidential,” “Highly Confidential—Attorneys’ Eyes Only,” or “Highly

26

Confidential Software” Information of his or her client within the meaning

27

of this Protective Order, counsel for the person whose information is

28
4
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

involved, at his or her option, may state on the record before or during the

2

deposition that such testimony shall be treated as “Confidential,” “Highly

3

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

4

Discovery Material, respectively, and, in lieu of taking other steps available

5

in such situation, may direct that the question and answer be transcribed

6

separately from the remainder of the deposition or proceeding and be filed

7

in a sealed envelope marked in the manner set forth in Paragraph 10 hereof.

8

When such a direction has been given, the disclosure of the testimony shall

9

be limited in the manner specified within this Protective Order, and the

10

information contained herein shall not be used for any purpose other than

11

for purposes of this suit. Counsel for the person whose “Confidential,”

12

“Highly Confidential—Attorneys’ Eyes Only,” or “Highly Confidential

13

Software” Information is involved may also request that all persons other

14

than the reporter, the Court and its personnel, counsel, and authorized

15

individuals leave the deposition during the confidential portion of the

16

deposition. The failure of such other persons to comply with a request to

17

leave the deposition, unless the Court orders the testimony to go forward,

18

shall constitute substantial justification for counsel to advise the witness

19

that he or she need not answer the question.

20

ii. Within 21 days from the receipt of a final transcript or recording of the

21

deposition, counsel of record may designate the testimony or portions

22

thereof as “Confidential,” “Highly Confidential—Attorneys’ Eyes Only,”

23

or “Highly Confidential Software” Discovery Material and give written

24

notice to opposing counsel. The parties shall treat all depositions and

25

rough drafts or other transcripts of depositions as “Confidential,” “Highly

26

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

27

Discovery Material until 21 days after receiving a copy of a rough or draft

28
5
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

transcript thereof. After 21 days, only those portions of the transcript

2

designated in writing (or on the record at the deposition or proceeding) as

3

“Confidential,” “Highly Confidential—Attorneys’ Eyes Only,” or “Highly

4

Confidential Software” shall be deemed “Confidential,” “Highly

5

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

6

Discovery Material, respectively. Counsel for the party designating a

7

transcript, recording, or portions thereof “Confidential,” “Highly

8

Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

9

shall be responsible for notifying the court reporter and opposing counsel

10

in writing of those portions of the transcript that are “Confidential,”

11

“Highly Confidential—Attorneys’ Eyes Only,” or “Highly Confidential

12

Software.” The parties may modify this procedure for any other particular

13

deposition, through agreement on the record at such deposition or

14

proceeding or otherwise by written stipulation, without further order of the

15

Court.

16

f. In the case of documents and things being made available for inspection, at the

17

request of counsel for the Producing Party, all documents and things produced for

18

inspection during discovery shall initially be considered to contain, at a minimum,

19

wholly Confidential information, and shall be produced for inspection only to

20

persons representing the Receiving Party who fall within the category described in

21

Paragraph 6(a) of this Protective Order. At the initial (or any subsequent)

22

inspection of the original documents and things, if requested by the Producing

23

Party, the Receiving Party shall not make copies of the documents produced.

24

Copies of documents and copies or photographs of things requested by the

25

Receiving Party shall be made, Bates-numbered and delivered to the Receiving

26

Party; such process shall be performed as promptly as reasonably practicable and

27

shall not await the production or inspection of other documents and things. After

28
6
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

the Receiving Party has designated documents or things for copying, and before

2

copies are transmitted to the Receiving Party, counsel for the Producing Party shall

3

designate and mark the documents and things, as appropriate, as “Confidential,”

4

“Highly Confidential—Attorneys’ Eyes Only,” or “Highly Confidential Software”

5

in accordance with Paragraphs 1-3 of this Order. Except as provided below in this

6

Paragraph, documents and things not so designated shall be considered thereafter

7

outside the provisions of this Protective Order. Failure to so designate and mark as

8

provided above in this Paragraph shall not preclude the Producing Party from

9

thereafter in good faith making such designation and requesting the Receiving

10

Party to so mark and treat such documents and things so designated. After such

11

designations, such documents and things shall be fully subject to this Protective

12

Order. The Receiving Party, however, shall incur no liability for disclosures made

13

prior to notice of such designations.
Who May Access “Confidential” Information. Discovery Materials designated

14

6.

15

“Confidential” may be disclosed, summarized, described, or otherwise communicated or made

16

available in whole or in part only to the following:

17

a. Outside counsel, together with secretaries, paralegals, document clerks, and other

18

support staff reporting directly to them and who are necessary to assist counsel

19

with the preparation or trial of this Action;

20

b.

For each party:

21

i. Any counsel who is a member of the party’s respective in-house legal staff,

22

along with secretaries, paralegals and similar support staff assisting in-

23

house counsel with the management of files relating to this Action. Each

24

party hereto represents that such in-house counsel has been (or will be prior

25

to receiving Confidential Discovery Material) informed of the terms of this

26

Protective Order and has agreed to be bound by its terms and conditions;

27

and

28
7
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

ii. Those officers, directors, partners, members, or employees of all non-

2

designating Parties, such number which shall be limited to five individuals

3

that counsel for such Parties deems reasonably necessary to aid counsel in

4

the prosecution and defense of this Action; provided, however, that prior to

5

the Disclosure of Confidential materials to any such officer, director,

6

partner, member, or employee, counsel for the Party making the disclosure

7

shall deliver a copy of this Protective Order to such person, shall explain

8

that such person is bound to follow the terms of such Order, and shall

9

secure the signature of such person on a statement in the form attached

10

hereto as Exhibit A; and witnesses, subject to and conditioned upon the

11

witness’s acceptance of and compliance with the terms and conditions of

12

this Protective Order; and

13

c. Consultants or experts specifically retained for this Action, together with their

14

assistants; provided, however, that prior to the Disclosure of Confidential materials

15

to any such consultant or expert or any assistant to any such consultant or expert,

16

counsel for the Party making the disclosure shall deliver a copy of this Protective

17

Order to such person, shall explain that such person is bound to follow the terms of

18

such Order, and shall secure the signature of such person on a statement in the

19

form attached hereto as Exhibit A; and

20

d. The Court and its staff, the jury, any discovery referee or Special Master appointed

21

by the Court to assist in resolving discovery disputes, reporters retained in

22

connection with depositions, to the extent necessary to transcribe the testimony

23

and identify exhibits marked in the course of the testimony subject to Paragraph

24

5(e) of this Protective Order; and

25

e. Commercial copy services, translators, data entry and computer support

26

organizations, and graphics, translation, design and/or trial consulting services,

27

hired by and assisting outside counsel for a party, provided that outside counsel

28
8
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

shall secure the signature of a duly authorized representative of each such service

2

in the form attached hereto as Exhibit A and maintain the original of Exhibit A;

3

and

4

f. Court reporters in this Proceeding (whether at depositions, hearings, or any other

5

proceeding); and

6

g. Mock jury participants, provided, however, that prior to the Disclosure of

7

Confidential Materials to any such mock jury participant, counsel for the Party

8

making the disclosure shall deliver a copy of this Protective Order to such person,

9

shall explain that such person is bound to follow the terms of such Order, shall

10

secure the signature of such person on a statement in the form attached hereto as

11

Exhibit A, and shall maintain the original of Exhibit A; and

12

h. Any mediator who is assigned or retained to hear this matter, and his or her staff;

13

provided, however, that counsel for the Party making any Disclosure shall deliver

14

a copy of this Protective Order to such person, shall explain that such person is

15

bound to follow the terms of such Order, shall secure the signature of such person

16

on a statement in the form attached hereto as Exhibit A, shall maintain the original

17

of Exhibit A; and

18

i. Such other persons as hereafter may be designated by written agreement in this

19

Action or by order of the Court.
Who May Access “Highly Confidential—Attorneys’ Eyes Only” Information. Discovery

20

7.

21

Materials designated “Highly Confidential—Attorneys’ Eyes Only” may be disclosed,

22

summarized, described, or otherwise communicated or made available in whole or in part on the

23

same terms as set forth in Paragraphs 6(a), (d), (e), (f), (g), (h), and (i) of this Protective Order.

24

Such Discovery Material may not be disclosed to persons representing the Receiving Party who

25

fall within the categories described in Paragraph 6(b) of this Protective Order. Discovery

26

Materials designated “Highly Confidential—Attorneys’ Eyes Only” may be disclosed,

27

summarized, described, or otherwise communicated or made available in whole or in part on the

28
9
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

same terms as set forth in Paragraphs 6(c) to consultants or experts specifically retained for this

2

Action, together with their assistants, provided that the notification procedures described in

3

Paragraph 9 have been complied with.

4

8.

5

“Highly Confidential Software” shall be subject to all of the protections afforded to “Highly

6

Confidential—Attorneys’ Eyes Only” information, and may be disclosed only to the individuals

7

to whom “Highly Confidential—Attorneys’ Eyes Only” information may be disclosed, and only

8

on the terms under which “Highly Confidential—Attorneys’ Eyes Only” information may be

9

disclosed to those persons.

Access to “Highly Confidential Software” Information. Discovery Materials designated

10

a. Any software or source code to be disclosed in discovery shall be made available

11

for inspection, in a format allowing it to be reasonably reviewed and searched,

12

during normal business hours or at other mutually agreeable times, at an office of

13

the Producing Party’s counsel or another mutually agreed upon location. The

14

software or source code shall be made available for inspection on a secured

15

computer in a secured room without Internet access or network access to other

16

computers, and the Receiving Party shall not copy, remove, or otherwise transfer

17

any portion of the software or source code onto any recordable media or

18

recordable device. The Producing Party may visually monitor the activities of the

19

Receiving Party’s representatives during any software or source code review, but

20

only to ensure that there is no unauthorized recording, copying, or transmission of

21

the software or source code.

22

b. The Receiving Party may request paper copies of limited portions of software or

23

source code that are reasonably necessary for the preparation of court filings,

24

pleadings, expert reports, or other papers, or for deposition or trial, but shall not

25

request paper copies for the purposes of reviewing the software or source code

26

other than electronically as set forth in Paragraph 8(a) in the first instance. The

27

Producing Party shall provide all such software or source code in paper form

28
10
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

including bates numbers and the label “Highly Confidential Software.” The

2

Producing Party may challenge the amount of software or source code requested in

3

hard copy. If the Producing Party makes such a challenge, it shall not be required

4

to produce the disputed hard copies until the Court resolves the dispute.

5

c. The Receiving Party shall maintain a log indicating the names of any individual

6

who has inspected any portion of the software or source code in electronic or paper

7

form, the dates and times of inspection, and the names of any individuals to whom

8

paper copies of portions of software or source code were provided. The Receiving

9

Party shall maintain all paper copies of any printed portions of the software or

10

source code in a secured, locked area. The Receiving Party shall not create any

11

electronic or other images of the paper copies and shall not convert any of the

12

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

13

Receiving Party shall only make additional paper copies if such additional copies

14

are (1) necessary to prepare court filings, pleadings, or other papers (including a

15

testifying expert’s expert report), provided that the Receiving Party provides notice

16

to the Producing Party before including “Highly Confidential Software”

17

information in a court filing, pleading, or expert report, (2) necessary for

18

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

19

copies used during a deposition shall be retrieved by the Producing Party at the

20

end of each day and must not be given to or left with a court reporter or any other

21

individual.
Experts and Consultants. Prior to disclosing any “Highly Confidential Materials—

22

9.

23

Attorneys’ Eyes Only” or “Highly Confidential Software” Discovery Materials to any person

24

under Paragraph 6(c), the Party seeking to disclose such information shall provide the designating

25

party or parties written notice that includes (i) the name of the outside expert or expert consultant,

26

(ii) an up-to-date curriculum vitae of the outside expert or expert consultant; (iii) the present

27

employer and title of the outside expert or expert consultant; (iv) an identification of all of the

28
11
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

outside expert’s or expert consultant’s past and current employment and consulting relationships,

2

including direct relationships and relationships through entities owned or controlled by the

3

outside expert or expert consultant, including but not limited to an identification of any individual

4

or entity with or for whom the person is employed; and (v) a list of the cases in which the outside

5

expert or expert consultant has testified at deposition or trial within the last five years.

6

Within five days of receipt of the disclosure of the outside expert or expert consultant, the

7

designating party or parties may object by electronic mail to the outside expert for good cause. In

8

the absence of an objection at the end of the five-day period, the outside expert or expert

9

consultant shall be deemed approved under this Protective Order. There shall be no disclosure of

10

“Highly Confidential Materials—Attorneys’ Eyes Only” or “Highly Confidential Software,”

11

Discovery Materials to the outside expert or expert consultant prior to expiration of this five-day

12

period. If the designating party objects to disclosure to the outside expert or expert consultant

13

within such five-day period, the Parties shall meet and confer via telephone or in person within

14

five days following the objection and attempt in good faith to resolve the dispute on an informal

15

basis. If the dispute is not resolved, the Party objecting to the disclosure will have five days from

16

the date of the meet and confer to seek relief from the Court. If relief is not sought from the

17

Court within that time, the objection shall be deemed withdrawn. If relief is sought, designated

18

materials shall not be disclosed to the person in question until the Court resolves the objection.
For purposes of this section, “good cause” shall include an objectively reasonable concern

19
20

that the outside expert or expert consultant will, intentionally or inadvertently, use or disclose

21

“Highly Confidential Materials—Attorneys’ Eyes Only” or “Highly Confidential Software”

22

materials in a way or ways that are inconsistent with the provisions contained in this Protective

23

Order.

24

a. An initial failure to object to a Person under this section shall not preclude a Party

25

from later objecting to continued access by that Person for good cause. If an

26

objection is made, the Parties shall meet and confer via telephone or in person

27

within five days following the objection and attempt in good faith to resolve the

28
12
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

dispute on an informal basis. If the dispute is not resolved, the Party objecting to

2

the disclosure will have five days from the date of the meet and confer to seek

3

relief from the Court. The designated person may continue to have access to

4

information that was provided to that person prior to the date of the objection but

5

no additional “Highly Confidential Materials—Attorneys’ Eyes Only” or “Highly

6

Confidential Software” materials shall be disclosed to that person until the Court

7

resolves the matter or the objecting party withdraws its objection. Notwithstanding

8

the foregoing, if the objecting party fails to move for a protective order within five

9

days after the meet and confer, the objection shall be deemed withdrawn.

10

10.

Filings with the Court:

11

a. Discovery Motions. Any party that files or otherwise submits to the Court any

12

“Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or

13

“Highly Confidential Software” material that is subject to this Protective Order, or

14

includes any portion of such material in any pleading, motion, exhibit or other

15

paper filed or submitted to the Court, in connection with a Discovery Motion, must

16

file all such documents in sealed envelopes or other appropriate sealed containers.

17

On the outside of the envelopes or other containers, a copy of the first page of the

18

documents shall be attached. If Confidential Material is included in the first page

19

attached to the outside of the envelopes or other containers, it may be deleted from

20

the outside copy. The words “CONFIDENTIAL,” “HIGHLY

21

CONFIDENTIAL—ATTORNEYS’ EYES ONLY,” or “HIGHLY

22

CONFIDENTIAL SOFTWARE” shall be stamped on the envelopes or other

23

containers and a statement substantially similar to the following shall also be

24

clearly printed on the envelopes or other containers:

25
26
27

“This envelope [or other container] is sealed pursuant to Order of the
Court, contains Confidential Information, and is not to be opened or the
contents revealed, except by Order of the Court or agreement by the
parties. The contents of this envelope [or other container] are being

28
13
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

submitted in connection with a Discovery Motion or for a purpose other
than the adjudication of a material controversy or use at trial and, therefore,
are not subject to the California Sealed Records Rules, California Rule of
Court 2.550, et seq.”

1
2
3

The foregoing statement will provide a sufficient basis for filing the materials

4

under seal in the manner described above, with no need for further briefing or

5

motion practice. Any party objecting to maintaining any such materials under seal

6

shall present its arguments pursuant to duly noticed motion with the Court.

7

b. For purposes of this Protective Order, a “Discovery Motion” is a motion, along

8

with responsive briefing and supporting materials, directed at resolving a dispute

9

concerning a party’s rights or access to discovery in the prosecution and/or defense

10

of the claims in this Action, and includes, but is not limited to, any motion or

11

proceeding relating to a party’s right to access information in the custody or

12

control of another person or entity, to take any person’s or entity’s deposition, to

13

compel any person’s or entity’s admission or denial of an alleged fact or

14

contention, to compel the testimony of any person or entity, to compel the

15

disclosure of any document or communication, or to use any other tool or method

16

of discovery allowed. A “Discovery Motion” excludes any motion that seeks

17

adjudication or resolution of any claim or defense or any portion thereof, or any

18
19
20
21
22
23
24
25
26

factual or legal issue; or seeks any substantive procedural change.
11.

All Other Filings. With respect to all filings not categorized as “Discovery Motions” as

defined in Paragraph 10(b) above, any party that files or intends to file “Confidential,” “Highly
Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery
Material with the Court, regardless of whether that party intends to request the Court to have
material sealed, must comply with the requirements of California Rule of Court 2.551(b)(3) and:
(i) lodge the unredacted material subject to this Protective Order and any pleadings,
memorandums, declarations, and other documents that disclose the contents of such material, in
the manner stated in California Rule of Court 2.551(d); (ii) file copies of the documents under (i)

27
28
14
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

that are redacted so that they do not disclose the contents of the material subject to this Protective

2

Order; and (iii) give written notice to the Producing Party that the records and other documents

3

lodged under (i) will be placed in the public court file unless that party files a timely motion or

4

application to seal the records pursuant to California Rule of Court 2.551(b)(1)-(2).

5

If the Producing Party was served with written notice as provided above and fails to file a

6

motion or an application to seal the records within 10 days or to obtain a Court order extending

7

the time to file such a motion or an application, the Court clerk will promptly remove all the

8

documents lodged conditionally under seal pursuant to (i) above (California Rule of Court

9

2.551(b)(3)(A)(i),(d)) from the envelope or container where they were located and place them in

10

the public file. If the Producing Party does file a motion or an application to seal within 10 days

11

or such later time as the Court has ordered, the records and other documents are to remain

12

“lodged” conditionally under seal until the Court rules on the motion or application and thereafter

13

are to be filed as ordered by the Court. The parties agree that prior to trial in this Action, they

14

will work together in good faith to propose, for the Court’s consideration and approval,

15

mechanism(s) providing an opportunity for the reasonable advance notice and orderly resolution

16

of any disputed over the confidentiality of materials in advance of their use at trial.

17

12.

18

Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery Material

19

under, or otherwise acting in accordance with the terms of this Protective Order, or failing to

20

object thereto, shall not:

21

No Admission or Prejudice. Producing or receiving “Confidential,” “Highly Confidential

a. Operate as an admission by any party that any particular information does or does

22

not comprise or reflect trade secrets, proprietary or commercially sensitive

23

information or any other type of confidential information;

24

b. Operate as an admission by any party that the restrictions and procedures set forth

25

herein constitute adequate protection for any particular information deemed by and

26

party to be “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes

27

Only,” or “Highly Confidential Software” information;

28
15
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

c. Prejudice or waive in any way the rights of the parties to object to the production

2

of documents they consider not subject to discovery for any reason;

3

d. Prejudice or waive in any way the rights of any party to object to the authenticity

4

or admissibility into evidence of any documents, testimony or other evidence

5

subject to this Protective Order;

6

e. Prejudice or waive in any way the rights of a party of seek determination by the

7

Court whether any Discovery Material should or should not be subject to the terms

8

of this Protective Order;

9

f. Prejudice or waive in any way the rights of a party to petition the Court for a

10

further protective order relating to any purportedly confidential information;

11

g. Prejudice or waive in any way any claim, cross-claim or defense in this Action;

12

h. Prevent the parties to this Protective Order from agreeing in writing or on the

13

record during a deposition or hearing in this Action to alter or waive the provisions

14

or protections provided for herein with respect to any particular Discovery

15

Material;

16

i. Operate as a consent to any discovery; or

17

j. Prejudice or waive in any way the rights of any party to contest, under Paragraph

18

18 of this Order, to the other party’s designation of any material as “Confidential,”

19

“Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential

20

Software.”
Materials Which Are “Exempt”. This Protective Order has no effect upon, and shall not

21

13.

22

apply to, a Producing Party’s use or disclosure of its own “Confidential,” “Highly Confidential

23

Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery Material for

24

any purpose. Nothing contained herein shall impose any restrictions on the use or disclosure by a

25

Receiving Party of documents, materials or information designated as “Confidential” or “Highly

26

Confidential Materials—Attorneys’ Eyes Only” obtained lawfully by such party independently of

27

any proceeding in this Action, or which:

28
16
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

a. Was already known or obtained by such Receiving Party by lawful means prior to

2

acquisition from, or disclosure by, another party in this Action;

3

b. Is or becomes publically known through no fault or act of the Receiving Party; or

4

c. Is rightfully obtained by the Receiving Party from a third party which has authority

5

to provide such “Confidential” or “Highly Confidential Materials—Attorneys’

6

Eyes Only” information to the Receiving Party without restriction as to disclosure

7

by the Receiving Party.

8

14.

9

additional party shall not have access to “Confidential,” “Highly Confidential Materials—

Joinder of Parties. In the event additional parties join or are joined in this Action, each

10

Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery Material until the newly-

11

joined party or its counsel has executed and, at the request of any party, filed with the Court its

12

agreement to be fully bound by this Protective Order or an alternative protective order which is

13

satisfactory to all parties and the Court.

14

15.

15

party that produces Discovery Material that is designated by such third party as “Confidential,”

16

“Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software.”

17

Nothing in this Paragraph permits a party to designate as “Confidential,” “Highly Confidential

18

Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” any Discovery Materials

19

produced in this litigation by a third party which that third party did not itself designate as

20

“Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential

21

Software” unless the third party has “Confidential,” “Highly Confidential Materials—Attorneys’

22

Eyes Only,” or “Highly Confidential Software” information of a party and it is demonstrated that

23

the third party is legally obligated to maintain the materials as confidential. If the parties dispute

24

whether a third party is legally obligated to maintain the materials as confidential, the materials in

25

question shall be deemed “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes

26

Only,” or “Highly Confidential Software” as designated by the party seeking confidentiality

27

protections, until the Court resolves the dispute.

Applicability to Third Parties. The terms of this Protective Order shall apply to any third

28
17
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

16.

2

discovery and all proceedings in this Action and any appeals therefrom. Each of the parties

3

hereto is entitled to seek modification of this Protective Order by application to the Court on

4

notice to the other parties thereto for good cause.

5

17.

6

from the Producing Party or further order of the Court, continue to be binding throughout and

7

after the conclusion of this Action, including, without limitation, any appeals therefrom. Within

8

60 days after receiving notice of the entry of an order, judgment or decree finally disposing of this

9

Action, including any appeals therefrom, all persons having received “Confidential,” “Highly

Governance of Action; Modification. The provisions of this Protective Order shall govern

Termination. The provisions of this Protective Order shall, absent written permission

10

Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” Discovery

11

Material shall, at the option of the Receiving Party, either destroy or return to counsel for the

12

Producing Party such information and all copies thereof (including summaries and excerpts) that

13

are maintained in hard copy form or in any readily accessible data locations and all active media.

14

Nothing in this Protective Order will require the Receiving Party to search inactive media

15

(including, but not limited to, backup tapes and/or disaster-recovery tapes or media) to destroy

16

from such sources Discovery Material covered by this Order. Counsel shall make reasonable

17

efforts to ensure that any consultants it has retained abide by this provision. Counsel for the

18

Receiving Party shall provide a certification in writing to counsel for the Producing Party that all

19

“Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential

20

Software” Discovery Materials in its possession has been destroyed or returned pursuant to this

21

Paragraph, or otherwise certify to the opposing party that reasonable efforts have been taken to

22

destroy or return the records. Outside counsel of record from the Receiving Party shall be entitled

23

to retain papers submitted by any other party to the Court, deposition and trial transcripts and

24

exhibits, and attorney work product (including filings, transcripts, and attorney work product that

25

contains “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly

26

Confidential Software” Discovery Material), provided that such counsel, and employees of such

27

counsel, shall not disclose any such Discovery Material contained in such filings, transcripts, or

28
18
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

attorney work product to any person or entity except pursuant to a written agreement with the

2

Producing Party. All materials returned to the parties or their counsel by the Court likewise shall

3

be disposed of in accordance with this Paragraph.

4

18.

5

Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential Software” designation,

6

it may notify the Producing Party in writing of such disagreement, and both parties will thereupon

7

confer in good faith as to the proper status of such Discovery Material. If the parties are unable to

8

reach agreement within 10 business days, the parties shall file a Joint Statement with the Court

9

setting forth their respective positions concerning the disputed designation or designations. Upon

Disputing a Designation. If the Receiving Party disagrees with a “Confidential,” “Highly

10

receipt of the parties’ Joint Statement, the Court will set briefing schedules and/or schedule

11

further proceedings relating to the disputed designations as it deems appropriate. Pending

12

resolution of the disputed designations by the Court, the Receiving Party shall treat such

13

Discovery Material as required under this Protective Order. No party shall be obligated to

14

challenge the propriety of a confidential designation, and a failure to do so during or after this

15

litigation shall not preclude a subsequent attack on the propriety of such designation. The

16

provisions of this Protective Order are not intended to shift the burden of establishing

17

confidentiality.

18

19.

19

Agency. By entering this Order and limiting the disclosure of information in this case, the Court

20

does not intend to preclude another court from finding that information may be relevant and

21

subject to disclosure in another case. If any Receiving Party is (a) subpoenaed in another action,

22

(b) served with a legally binding demand in another action to which it is a party, (c) served with

23

any legal process by one not a party to this Action, or (d) legally obligated to disclose materials,

24

and if such subpoena or obligation would require the production of Discovery Material which was

25

produced or designated as “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes

26

Only,” or “Highly Confidential Software” by someone other than the Receiving Party, the

27

Receiving Party, upon determining that such Discovery Materials are called for, shall (i) give

Other Court Proceedings / Subpoena or Legal Process / Disclosure to Government

28
19
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

actual written notice, at the earliest practicable time, by hand or electronic mail transmission, of

2

such subpoena, demand or legal process, to those who produced or designated the material

3

“Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or “Highly Confidential

4

Software” and (ii) set forth the existence of this Protective Order and request the highest form of

5

confidentiality treatment allowed for the Discovery Material produced. In the event the party that

6

produced or designated the material “Confidential,” “Highly Confidential Materials—Attorneys’

7

Eyes Only,” or “Highly Confidential Software” seeks, within ten (10) days of the actual notice

8

discussed above, to intervene in the action or proceeding in which the materials are sought for the

9

purpose of objecting to the production and, the Receiving Party shall, to the extent permissible,

10

avoid producing the materials until such objections are resolved. Nothing herein shall be

11

construed as requiring the Receiving Party of anyone else covered by this Protective Order to

12

challenge or appeal any order issued under the circumstances of this Paragraph requiring

13

production of “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,” or

14

“Highly Confidential Software” Discovery Material covered by this Protective Order, or to

15

subject itself to any penalties for noncompliance with any legal process or order, or to seek any

16

relief from this Court.

17

20.

18

a qualified recipient of “Confidential,” “Highly Confidential Materials—Attorneys’ Eyes Only,”

19

or “Highly Confidential Software” Discovery Material under the terms of Paragraphs 1-3 of this

20

Protective Order from rendering advice to his or her client with respect to this Action and, in the

21

course thereof, from generally relying upon his or her examination of such Discovery Material.

22

In rendering such advice or in otherwise communicating with the client, the attorney shall not

23

disclose the specific content of any such Discovery Material of another person or party, whether

24

specifically, generally, inferentially, in summary or otherwise, where such disclosure would not

25

otherwise be permitted under the terms of this Protective Order.

26

21.

27

protected exempted information, as well as the inadvertent production of information without an

Rendering Legal Advice. Nothing herein shall bar or otherwise restrict an attorney who is

Inadvertent Production. The inadvertent production of any privileged or otherwise

28
20
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

appropriate designation of confidentiality, shall not be deemed a waiver of impairment of any

2

claim of privilege or protection, including, but not limited to, the attorney-client privilege, the

3

protection afforded to work-product materials, or the subject matter thereof or the confidential

4

nature of any such information, as to the inadvertently produced document and as to any related

5

material. The Producing Party must notify the Receiving Party promptly, in writing, upon

6

discovery that a document has been inadvertently produced. Upon receiving written notice from

7

the Producing Party that confidential information has been inadvertently produced with the

8

incorrect designation, the Receiving Party shall immediately treat the materials as if they bear the

9

corrected designation, and may dispute the corrected designation pursuant to the provisions of

10

this Protective Order. Upon receiving written notice from the Producing Party that privileged

11

and/or protected material has been inadvertently produced, all such information, and all copies

12

thereof, shall be returned to the Producing Party within five business days or receipt of such

13

notice and the Receiving Party shall not use such information for any purpose until further Order

14

of the Court. All copies of the documents in electronic format must also be returned or destroyed,

15

pursuant to the terms set forth in Paragraph 17. If the Receiving Party contests that the

16

information is privileged or protected, the Receiving Party shall give the Producing Party written

17

notice of the reason for said disagreement and shall be entitled to retain one copy of the disputed

18

document for use in resolving the dispute. The Receiving party shall, within 20 business days

19

from the initial notice by the Producing Party, move the Court for an Order compelling the

20

production of the material. If no such motion if filed, upon expiration of the 20-day period all

21

copies of the disputed document shall be returned or destroyed in accordance with this Paragraph

22

and Paragraph 17. Any analyses, memoranda or protected information shall immediately be

23

placed in sealed envelopes, and must be destroyed unless (a) the Producing Party agrees in

24

writing that the inadvertently-produced is not privileged or protected, or (b) the Court rules that

25

the inadvertently-produced information is not privileged or protected.

26

22.

27

“Highly Confidential—Attorneys’ Eyes Only” Information shall be maintained at a location and

Adequate Location of Materials. All Discovery Materials containing “Confidential” or

28
21
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

under circumstances to ensure that access is limited to those persons entitled to have access under

2

the Protective Order. All Discovery Materials containing “Highly Confidential Software” shall

3

be maintained at a location and under circumstances set forth in Paragraph 8.

4

23.

5

preclude any party from seeking and obtaining, on an appropriate showing, such additional

6

protection with respect to the confidentiality of documents or other Discovery Material as that

7

party may consider appropriate; nor shall any party be precluded from claiming that any matter

8

designated hereunder is not entitled to protection or is entitled to a more limited form of

9

protection than designated.

Right to Seek Further Relief. Nothing in this Protective Order shall be deemed to

10
11

IT IS SO ORDERED.

12
13

Dated: ____________, 2017
Judge Mary E. Arand

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

22
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

EXHIBIT A

2

CERTIFICATION RE CONFIDENTIAL DISCOVERY MATERIALS

3

I hereby acknowledge that I, ______________________________ [NAME],

4

______________________________ [POSITION AND EMPLOYER], am about to receive

5

Confidential Materials and/or Highly Confidential Materials supplied in connection with the

6

Action, Case No. 16CV299476. I certify that I understand that the Confidential Materials and/or

7

Highly Confidential Materials are provided to me subject to the terms and restrictions of the

8

Protective Order filed in this Action. I have been given a copy of the Protective Order; I have

9

read it, and I agree to be bound by its terms.

10

I understand that the Confidential Materials and Highly Confidential Materials, as defined in

11

the Protective Order, including any notes or other records that may be made regarding any such

12

materials, shall not be disclosed to anyone except as expressly permitted by the Protective Order.

13

I will not copy or use, except solely for the purposes of this Action, any Confidential Materials or

14

Highly Confidential Materials obtained pursuant to this Protective Order, except as provided

15

therein or otherwise ordered by the Court in the Action.

16

I further understand that I am to retain all copies of all Confidential Material and Highly

17

Confidential Materials provided to me in the Action in a secure manner, and that all copies of

18

such materials are to remain in my personal custody until termination of my participation in this

19

Proceeding, whereupon the copies of such materials will be returned to counsel who provided me

20

with such materials.

21
22

I declare under penalty of perjury, under the laws of the State of California, that the foregoing
is true and correct. Executed this ___ day of ___, 20___, at _______

23
24
25

Date

Signature

26
27
28
23
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1
2

Printed Name

3
4
5

City and State where sworn and signed

6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
24
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

EXHIBIT
2

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

Case No. C
Plaintiff,
v.

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

Defendant.

1.

PURPOSES AND LIMITATIONS
Disclosure and discovery activity in this action are likely to involve production of confidential,

proprietary, or private information for which special protection from public disclosure and from use for any
purpose other than prosecuting this litigation may be warranted. Accordingly, the parties hereby stipulate to
and petition the court to enter the following Stipulated Protective Order. The parties acknowledge that this
Order does not confer blanket protections on all disclosures or responses to discovery and that the protection
it affords from public disclosure and use extends only to the limited information or items that are entitled to
confidential treatment under the applicable legal principles. The parties further acknowledge, as set forth in
Section 14.4, below, that this Stipulated Protective Order does not entitle them to file confidential
information under seal; Civil Local Rule 79-5 sets forth the procedures that must be followed and the
standards that will be applied when a party seeks permission from the court to file material under seal.

1

2.

2
3

DEFINITIONS
2.1

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

items under this Order.

4

2.2

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

5

stored or maintained) or tangible things that qualify for protection under Federal Rule of Civil Procedure

6

26(c).

7
8
9
10
11

2.3

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

support staff).
[2.4

Optional: 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

12

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

13

– ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE CODE”].

14

2.6

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

15

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

16

and tangible things), that are produced or generated in disclosures or responses to discovery in this matter.

17

2.7

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

18

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

19

in this action, (2) is not a past or current employee of a Party or of a Party’s competitor, and (3) at the time

20

of retention, is not anticipated to become an employee of a Party or of a Party’s competitor.

21

2.8

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

22

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

23

would create a substantial risk of serious harm that could not be avoided by less restrictive means.

24

[2.9

Optional: “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:

25

extremely sensitive “Confidential Information or Items” representing computer code and associated

26

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

27

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

28

1

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

2

less restrictive means.]
2.10

3
4

not include Outside Counsel of Record or any other outside counsel.
2.11

5
6

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

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

not named as a Party to this action.
2.12

7

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

8

are retained to represent or advise a party to this action and have appeared in this action on behalf of that

9

party or are affiliated with a law firm which has appeared on behalf of that party.
2.13

10
11

retained experts, and Outside Counsel of Record (and their support staffs).
2.14

12
13

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

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

this action.
2.15

14

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

15

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

16

retrieving data in any form or medium) and their employees and subcontractors.
2.16

17

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

18

“CONFIDENTIAL,” or as “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” [Optional: or as

19

“HIGHLY CONFIDENTIAL – SOURCE CODE.”]
2.17

20
21

Party.

22

3.

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

23

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

24

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

25

excerpts, summaries, or compilations of Protected Material; and (3) any testimony, conversations, or

26

presentations by Parties or their Counsel that might reveal Protected Material. However, the protections

27

conferred by this Stipulation and Order do not cover the following information: (a) any information that is in

28

the public domain at the time of disclosure to a Receiving Party or becomes part of the public domain after

1

its disclosure to a Receiving Party as a result of publication not involving a violation of this Order, including

2

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

3

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

4

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

5

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

6

4.

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

7
8
9
10
11
12
13

shall remain in effect until a Designating Party agrees otherwise in writing or a court order otherwise
directs. Final disposition shall be deemed to be the later of (1) dismissal of all claims and defenses in this
action, with or without prejudice; and (2) final judgment herein after the completion and exhaustion of all
appeals, rehearings, remands, trials, or reviews of this action, including the time limits for filing any motions
or applications for extension of time pursuant to applicable law.
5.

16
17
18
19
20
21
22
23
24
25
26
27
28

DESIGNATING PROTECTED MATERIAL
5.1

14
15

DURATION

Exercise of Restraint and Care in Designating Material for Protection. Each Party or Non-

Party that designates information or items for protection under this Order must take care to limit any such
designation to specific material that qualifies under the appropriate standards. To the extent it is practical to
do so, the Designating Party must designate for protection only those parts of material, documents, items, or
oral or written communications that qualify – so that other portions of the material, documents, items, or
communications for which protection is not warranted are not swept unjustifiably within the ambit of this
Order.
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 encumber or
retard the case development process or to impose unnecessary expenses and burdens on other parties)
expose the Designating Party to sanctions.
If it comes to a Designating Party’s attention that information or items that it designated for
protection do not qualify for protection at all or do not qualify for the level of protection initially asserted,
that Designating Party must promptly notify all other parties that it is withdrawing the mistaken designation.
5.2

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

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

second paragraph of section 5.2(a) below), or as otherwise stipulated or ordered, Disclosure or Discovery
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 excluding
transcripts of depositions or other pretrial or trial proceedings), that the Producing Party affix the legend
“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or
“HIGHLY CONFIDENTIAL – SOURCE CODE”] to each page that contains protected material. If only a
portion or portions of the material on a page qualifies for protection, the Producing Party also must clearly
identify the protected portion(s) (e.g., by making appropriate markings in the margins) and must specify, for
each portion, the level of protection being asserted.
A Party or Non-Party that makes original documents or materials available for inspection need not
designate them for protection until after the inspecting Party has indicated which material it would like
copied and produced. During the inspection and before the designation, all of the material made available
for inspection shall be deemed “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY.” After the
inspecting Party has identified the documents it wants copied and produced, the Producing Party must
determine which documents, or portions thereof, qualify for protection under this Order. Then, before
producing the specified documents, the Producing Party must affix the appropriate legend
(“CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or
“HIGHLY CONFIDENTIAL – SOURCE CODE]) to each page that contains Protected Material. If only a
portion or portions of the material on a page qualifies for protection, the Producing Party also must clearly
identify the protected portion(s) (e.g., by making appropriate markings in the margins) and must specify, for
each portion, the level of protection being asserted.
(b) for testimony given in deposition or in other pretrial or trial proceedings, that the
Designating Party identify on the record, before the close of the deposition, hearing, or other proceeding, all
protected testimony and specify the level of protection being asserted. When it is impractical to identify
separately each portion of testimony that is entitled to protection and it appears that substantial portions of
the testimony may qualify for protection, the Designating Party may invoke on the record (before the

1

deposition, hearing, or other proceeding is concluded) a right to have up to 21 days to identify the specific

2

portions of the testimony as to which protection is sought and to specify the level of protection being

3

asserted. Only those portions of the testimony that are appropriately designated for protection within the 21

4

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

5

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

6

entire transcript shall be treated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’

7

EYES ONLY.”

8
9

Parties shall give the other parties notice if they reasonably expect a deposition, hearing or other
proceeding to include Protected Material so that the other parties can ensure that only authorized individuals

10

who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A) are present at those

11

proceedings. The use of a document as an exhibit at a deposition shall not in any way affect its designation

12

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

13

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

14

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

15

line numbers as appropriate) that have been designated as Protected Material and the level of protection

16

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

17

requirements. Any transcript that is prepared before the expiration of a 21-day period for designation shall

18

be treated during that period as if it had been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’

19

EYES ONLY” in its entirety unless otherwise agreed. After the expiration of that period, the transcript shall

20

be treated only as actually designated.
(c) for information produced in some form other than documentary and for any other

21
22

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

23

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

24

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE

25

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

26

the extent practicable, shall identify the protected portion(s) and specify the level of protection being

27

asserted.

28

5.3

Inadvertent Failures to Designate. If timely corrected, an inadvertent failure to designate

1

qualified information or items does not, standing alone, waive the Designating Party’s right to secure

2

protection under this Order for such material. Upon timely correction of a designation, the Receiving Party

3

must make reasonable efforts to assure that the material is treated in accordance with the provisions of this

4

Order.

5

6.

6

CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

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

7

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

8

necessary to avoid foreseeable, substantial unfairness, unnecessary economic burdens, or a significant

9

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

10
11

designation by electing not to mount a challenge promptly after the original designation is disclosed.
6.2

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

12

providing written notice of each designation it is challenging and describing the basis for each challenge. To

13

avoid ambiguity as to whether a challenge has been made, the written notice must recite that the challenge to

14

confidentiality is being made in accordance with this specific paragraph of the Protective Order. The parties

15

shall attempt to resolve each challenge in good faith and must begin the process by conferring directly (in

16

voice to voice dialogue; other forms of communication are not sufficient) within 14 days of the date of

17

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

18

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

19

designated material, to reconsider the circumstances, and, if no change in designation is offered, to explain

20

the basis for the chosen designation. A Challenging Party may proceed to the next stage of the challenge

21

process only if it has engaged in this meet and confer process first or establishes that the Designating Party

22

is unwilling to participate in the meet and confer process in a timely manner.

23

6.3

Judicial Intervention. If the Parties cannot resolve a challenge without court intervention,

24

the Designating Party shall file and serve a motion to retain confidentiality under Civil Local Rule 7 (and in

25

compliance with Civil Local Rule 79-5, if applicable) within 21 days of the initial notice of challenge or

26

within 14 days of the parties agreeing that the meet and confer process will not resolve their dispute,

27
28

1

whichever is earlier.1 Each such motion must be accompanied by a competent declaration affirming that the

2

movant has complied with the meet and confer requirements imposed in the preceding paragraph. Failure by

3

the Designating Party to make such a motion including the required declaration within 21 days (or 14 days,

4

if applicable) shall automatically waive the confidentiality designation for each challenged designation. In

5

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

6

there is good cause for doing so, including a challenge to the designation of a deposition transcript or any

7

portions thereof. Any motion brought pursuant to this provision must be accompanied by a competent

8

declaration affirming that the movant has complied with the meet and confer requirements imposed by the

9

preceding paragraph.
The burden of persuasion in any such challenge proceeding shall be on the Designating Party.

10
11

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

12

expenses and burdens on other parties) may expose the Challenging Party to sanctions. Unless the

13

Designating Party has waived the confidentiality designation by failing to file a motion to retain

14

confidentiality as described above, all parties shall continue to afford the material in question the level of

15

protection to which it is entitled under the Producing Party’s designation until the court rules on the

16

challenge.

17

7.

ACCESS TO AND USE OF PROTECTED MATERIAL
7.1

18

Basic Principles. A Receiving Party may use Protected Material that is disclosed or

19

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

20

or attempting to settle this litigation. Such Protected Material may be disclosed only to the categories of

21

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

22

Receiving Party must comply with the provisions of section 15 below (FINAL DISPOSITION).
Protected Material must be stored and maintained by a Receiving Party at a location and in a secure

23
24
25
26
1

27
28

Alternative: It may be appropriate in certain circumstances for the parties to agree to shift the burden to move on the Challenging
Party after a certain number of challenges are made to avoid an abuse of the process. The burden of persuasion would remain on the
Designating Party.

1

manner2 that ensures that access is limited to the persons authorized under this Order.
7.2

2

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

3

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

4

item designated “CONFIDENTIAL” only to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well as employees of

5
6

said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this

7

litigation and who have signed the “Acknowledgment and Agreement to Be Bound” that is attached hereto

8

as Exhibit A;
(b) the officers, directors, and employees (including House Counsel) of the Receiving Party

9
10

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

11

and Agreement to Be Bound” (Exhibit A);
(c) Experts (as defined in this Order) of the Receiving Party to whom disclosure is

12
13

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

14

Bound” (Exhibit A);

15

(d) the court and its personnel;

16

(e) court reporters and their staff, professional jury or trial consultants, and Professional

17

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

18

“Acknowledgment and Agreement to Be Bound” (Exhibit A);
(f) during their depositions, witnesses in the action to whom disclosure is reasonably

19
20

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

21

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

22

testimony or exhibits to depositions that reveal Protected Material must be separately bound by the court

23

reporter and may not be disclosed to anyone except as permitted under this Stipulated Protective Order.
(g) the author or recipient of a document containing the information or a custodian or other

24
25

person who otherwise possessed or knew the information.

26
27
28

2

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

7.3

1

Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional:

2

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

3

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

4

or item designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY

5

CONFIDENTIAL – SOURCE CODE”] only to:
(a) the Receiving Party’s Outside Counsel of Record in this action, as well as employees of

6
7

said Outside Counsel of Record to whom it is reasonably necessary to disclose the information for this

8

litigation and who have signed the “Acknowledgment and Agreement to Be Bound” that is attached hereto

9

as Exhibit A;
[(b) Optional as deemed appropriate in case-specific circumstances: Designated House

10
11

Counsel of the Receiving Party3 (1) who has no involvement in competitive decision-making, (2) to whom

12

disclosure is reasonably necessary for this litigation, (3) who has signed the “Acknowledgment and

13

Agreement to Be Bound” (Exhibit A), and (4) as to whom the procedures set forth in paragraph 7.4(a)(1),

14

below, have been followed];4
(c) Experts of the Receiving Party (1) to whom disclosure is reasonably necessary for this

15
16

litigation, (2) who have signed the “Acknowledgment and Agreement to Be Bound” (Exhibit A), and (3) as

17

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

18

(d) the court and its personnel;

19

(e) court reporters and their staff, professional jury or trial consultants,5 and Professional

20

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

21

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

22
23

3

24

4

25
26

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.
5

27
28

Alternative: The parties may wish to allow disclosure of information not only to professional jury or trial consultants, but also to
mock jurors, to further trial preparation. In that situation, the parties may wish to draft a simplified, precisely tailored Undertaking
for mock jurors to sign.

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

1
2

person who otherwise possessed or knew the information.
7.4 Procedures for Approving or Objecting to Disclosure of “HIGHLY CONFIDENTIAL –

3
4

ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE CODE”]

5

Information or Items to Designated House Counsel6 or Experts.7

6

(a)(1) Unless otherwise ordered by the court or agreed to in writing by the Designating

7

Party, a Party that seeks to disclose to Designated House Counsel any information or item that has been

8

designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” pursuant to paragraph 7.3(b) first

9

must make a written request to the Designating Party that (1) sets forth the full name of the Designated

10

House Counsel and the city and state of his or her residence, and (2) describes the Designated House

11

Counsel’s current and reasonably foreseeable future primary job duties and responsibilities in sufficient

12

detail to determine if House Counsel is involved, or may become involved, in any competitive decision-

13

making.8
(a)(2) Unless otherwise ordered by the court or agreed to in writing by the Designating

14
15

Party, a Party that seeks to disclose to an Expert (as defined in this Order) any information or item that has

16

been designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY

17

CONFIDENTIAL – SOURCE CODE”] pursuant to paragraph 7.3(c) first must make a written request to the

18

Designating Party that (1) identifies the general categories of “HIGHLY CONFIDENTIAL –

19

ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE CODE”]

20

information that the Receiving Party seeks permission to disclose to the Expert, (2) sets forth the full name

21

of the Expert and the city and state of his or her primary residence, (3) attaches a copy of the Expert’s

22
23
6

24

Alternative: The parties may exchange names of a certain number of Designated House Counsel instead of following this
procedure.

25

Alternative: “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information or items may be
disclosed to an Expert without disclosure of the identity of the Expert as long as the Expert is not a current officer, director, or
employee of a competitor of a Party or anticipated to become one.

26

8

7

27
28

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.

1

current resume, (4) identifies the Expert’s current employer(s), (5) identifies each person or entity from

2

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

3

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

4

the preceding five years,9 and (6) identifies (by name and number of the case, filing date, and location of

5

court) any litigation in connection with which the Expert has offered expert testimony, including through a

6

declaration, report, or testimony at a deposition or trial, during the preceding five years.10
(b) A Party that makes a request and provides the information specified in the preceding

7
8

respective paragraphs may disclose the subject Protected Material to the identified Designated House

9

Counsel or Expert unless, within 14 days of delivering the request, the Party receives a written objection

10

from the Designating Party. Any such objection must set forth in detail the grounds on which it is based.
(c) A Party that receives a timely written objection must meet and confer with the

11
12

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

13

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

14

Designated House Counsel or the Expert may file a motion as provided in Civil Local Rule 7 (and in

15

compliance with Civil Local Rule 79-5, if applicable) seeking permission from the court to do so. Any such

16

motion must describe the circumstances with specificity, set forth in detail the reasons why the disclosure to

17

Designated House Counsel or the Expert is reasonably necessary, assess the risk of harm that the disclosure

18

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

19

motion must be accompanied by a competent declaration describing the parties’ efforts to resolve the matter

20

by agreement (i.e., the extent and the content of the meet and confer discussions) and setting forth the

21

reasons advanced by the Designating Party for its refusal to approve the disclosure.

22

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

23

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

24
25
26

9

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.
10

27
28

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.

1

proposed) outweighs the Receiving Party’s need to disclose the Protected Material to its Designated House

2

Counsel or Expert.

3

8.

PROSECUTION BAR [Optional]
Absent written consent from the Producing Party, any individual who receives access to “HIGHLY

4
5

CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE

6

CODE”] information shall not be involved in the prosecution of patents or patent applications relating to

7

[insert subject matter of the invention and of highly confidential technical information to be produced],

8

including without limitation the patents asserted in this action and any patent or application claiming priority

9

to or otherwise related to the patents asserted in this action, before any foreign or domestic agency,

10

including the United States Patent and Trademark Office (“the Patent Office”).11 For purposes of this

11

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

12

the scope or maintenance of patent claims.12 To avoid any doubt, “prosecution” as used in this paragraph

13

does not include representing a party challenging a patent before a domestic or foreign agency (including,

14

but not limited to, a reissue protest, ex parte reexamination or inter partes reexamination). This Prosecution

15

Bar shall begin when access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or

16

“HIGHLY CONFIDENTIAL – SOURCE CODE”] information is first received by the affected individual

17

and shall end two (2) years after final termination of this action.13

18

9.

SOURCE CODE [Optional]
(a)

19

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

20

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

21

comprises or includes confidential, proprietary or trade secret source code.
(b)

22

Protected Material designated as “HIGHLY CONFIDENTIAL – SOURCE CODE”

23
24
25

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.”
11

12

26
27
28

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

Alternative: It may be appropriate for the Prosecution Bar to apply only to individuals who receive access to another party’s
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” technical or source code information pursuant to this Order, such as
under circumstances where one or more parties is not expected to produce “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” information that is technical in nature or “HIGHLY CONFIDENTIAL – SOURCE CODE” information,
13

1

shall be subject to all of the protections afforded to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

2

ONLY” information [Optional: including the Prosecution Bar set forth in Paragraph 8], and may be

3

disclosed only to the individuals to whom “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

4

information may be disclosed, as set forth in Paragraphs 7.3 and 7.4, with the exception of Designated

5

House Counsel.14
(c)

6

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

7

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

8

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

9

location.15 The source code shall be made available for inspection on a secured computer in a secured room

10

without Internet access or network access to other computers, and the Receiving Party shall not copy,

11

remove, or otherwise transfer any portion of the source code onto any recordable media or recordable

12

device. The Producing Party may visually monitor the activities of the Receiving Party’s representatives

13

during any source code review, but only to ensure that there is no unauthorized recording, copying, or

14

transmission of the source code.16
(d)

15

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

16

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

17

or for deposition or trial, but shall not request paper copies for the purposes of reviewing the source code

18

other than electronically as set forth in paragraph (c) in the first instance. The Producing Party shall provide

19

all such source code in paper form including bates numbers and the label “HIGHLY CONFIDENTIAL -

20

SOURCE CODE.” The Producing Party may challenge the amount of source code requested in hard copy

21

form pursuant to the dispute resolution procedure and timeframes set forth in Paragraph 6 whereby the

22
23
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,
14

24

15

25
26

Alternative: Any source code produced in discovery shall be made available for inspection in a format through which it could be
reasonably reviewed and searched during normal business hours or other mutually agreeable times at a location that is reasonably
convenient for the Receiving Party and any experts to whom the source code may be disclosed. This alternative may be appropriate
if the Producing Party and/or its counsel are located in a different jurisdiction than counsel and/or experts for the Receiving Party.
16

27
28

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.

1

Producing Party is the “Challenging Party” and the Receiving Party is the “Designating Party” for purposes

2

of dispute resolution.
(e)

3

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

4

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

5

copies of any printed portions of the source code in a secured, locked area. The Receiving Party shall not

6

create any electronic or other images of the paper copies and shall not convert any of the information

7

contained in the paper copies into any electronic format. The Receiving Party shall only make additional

8

paper copies if such additional copies are (1) necessary to prepare court filings, pleadings, or other papers

9

(including a testifying expert’s expert report), (2) necessary for deposition, or (3) otherwise necessary for

10

the preparation of its case. Any paper copies used during a deposition shall be retrieved by the Producing

11

Party at the end of each day and must not be given to or left with a court reporter or any other unauthorized

12

individual.17

13

10.

14
15
16
17

If a Party is served with a subpoena or a court order issued in other litigation that compels
disclosure of any information or items designated in this action as “CONFIDENTIAL” or “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE
CODE”] that Party must:

18
19

(a) promptly notify in writing the Designating Party. Such notification shall include a copy
of the subpoena or court order;

20
21
22

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN OTHER
LITIGATION

(b) promptly notify in writing the party who caused the subpoena or order to issue in the
other litigation that some or all of the material covered by the subpoena or order is subject to this Protective
Order. Such notification shall include a copy of this Stipulated Protective Order; and

23

(c) cooperate with respect to all reasonable procedures sought to be pursued by the

24
25
26
17

27
28

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.

1

Designating Party whose Protected Material may be affected.18
If the Designating Party timely seeks a protective order, the Party served with the subpoena

2
3

or court order shall not produce any information designated in this action as “CONFIDENTIAL” or

4

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” [Optional: or “HIGHLY CONFIDENTIAL

5

– SOURCE CODE”] before a determination by the court from which the subpoena or order issued, unless

6

the Party has obtained the Designating Party’s permission. The Designating Party shall bear the burden and

7

expense of seeking protection in that court of its confidential material – and nothing in these provisions

8

should be construed as authorizing or encouraging a Receiving Party in this action to disobey a lawful

9

directive from another court.

10

11.

A NON-PARTY’S PROTECTED MATERIAL SOUGHT TO BE PRODUCED IN THIS
LITIGATION

11
12
13
14
15
16

(a)

this action and designated as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” [Optional: or “HIGHLY CONFIDENTIAL – SOURCE CODE”]. Such information produced by
Non-Parties in connection with this litigation is protected by the remedies and relief provided by this Order.
Nothing in these provisions should be construed as prohibiting a Non-Party from seeking additional
protections.

17
18
19

(b)

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

22
23
24

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 the Non-

20
21

The terms of this Order are applicable to information produced by a Non-Party in

2. promptly provide the Non-Party with a copy of the Stipulated Protective Order in
this litigation, the relevant discovery request(s), and a reasonably specific description of the information
requested; and

25
26
18

27
28

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.

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

1
(c)

2

If the Non-Party fails to object or seek a protective order from this court within 14

3

days of receiving the notice and accompanying information, the Receiving Party may produce the Non-

4

Party’s confidential information responsive to the discovery request. If the Non-Party timely seeks a

5

protective order, the Receiving Party shall not produce any information in its possession or control that is

6

subject to the confidentiality agreement with the Non-Party before a determination by the court.19 Absent a

7

court order to the contrary, the Non-Party shall bear the burden and expense of seeking protection in this

8

court of its Protected Material.

9

12.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

10

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

11

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

12

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

13

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

14

the person or persons to whom unauthorized disclosures were made of all the terms of this Order, and (d)

15

request such person or persons to execute the “Acknowledgment and Agreement to Be Bound” that is

16

attached hereto as Exhibit A.

17

13.

18
19
20

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

produced material is subject to a claim of privilege or other protection, the obligations of the Receiving
Parties are those set forth in Federal Rule of Civil Procedure 26(b)(5)(B).20 This provision is not intended to

21
22
23
24
19

25

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.
Alternative: The parties may agree that the recipient of an inadvertent production may not “sequester” or in any way use the
document(s) pending resolution of a challenge to the claim of privilege or other protection to the extent it would be otherwise
allowed by Federal Rule of Civil Procedure 26(b)(5)(B) as amended in 2006. This could include a restriction against “presenting”
the document(s) to the court to challenge the privilege claim as may otherwise be allowed under Rule 26(b)(5)(B) subject to ethical
obligations.
20

26
27
28

1

modify whatever procedure may be established in an e-discovery order that provides for production without

2

prior privilege review. Pursuant to Federal Rule of Evidence 502(d) and (e), insofar as the parties reach an

3

agreement on the effect of disclosure of a communication or information covered by the attorney-client

4

privilege or work product protection, the parties may incorporate their agreement in the stipulated protective

5

order submitted to the court.

6

14.

7
8
9

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 Order no

10

Party waives any right it otherwise would have to object to disclosing or producing any information or item

11

on any ground not addressed in this Stipulated Protective Order. Similarly, no Party waives any right to

12

object on any ground to use in evidence of any of the material covered by this Protective Order.

13

[14.3 Optional: Export Control. Disclosure of Protected Material shall be subject to all applicable

14

laws and regulations relating to the export of technical data contained in such Protected Material, including

15

the release of such technical data to foreign persons or nationals in the United States or elsewhere. The

16

Producing Party shall be responsible for identifying any such controlled technical data, and the Receiving

17

Party shall take measures necessary to ensure compliance.]

18

14.4

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

19

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

20

this action any Protected Material. A Party that seeks to file under seal any Protected Material must comply

21

with Civil Local Rule 79-5. Protected Material may only be filed under seal pursuant to a court order

22

authorizing the sealing of the specific Protected Material at issue. Pursuant to Civil Local Rule 79-5, a

23

sealing order will issue only upon a request establishing that the Protected Material at issue is privileged,

24
25
26
27
28

An alternate provision could state: “If information is produced in discovery that is subject to a claim of privilege or of protection as
trial-preparation material, the party making the claim may notify any party that received the information of the claim and the basis
for it. After being notified, a party must promptly return or destroy the specified information and any copies it has and may not
sequester, use or disclose the information until the claim is resolved. This includes a restriction against presenting the information to
the court for a determination of the claim.”

1

protectable as a trade secret, or otherwise entitled to protection under the law. If a Receiving Party's request

2

to file Protected Material under seal pursuant to Civil Local Rule 79-5(e) is denied by the court, then the

3

Receiving Party may file the Protected Material in the public record pursuant to Civil Local Rule 79-5(e)(2)

4

unless otherwise instructed by the court.

5

15.

6

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

7

Receiving Party must return all Protected Material to the Producing Party or destroy such material. As used

8

in this subdivision, “all Protected Material” includes all copies, abstracts, compilations, summaries, and any

9

other format reproducing or capturing any of the Protected Material. Whether the Protected Material is

10

returned or destroyed, the Receiving Party must submit a written certification to the Producing Party (and, if

11

not the same person or entity, to the Designating Party) by the 60-day deadline that (1) identifies (by

12

category, where appropriate) all the Protected Material that was returned or destroyed and (2) affirms that

13

the Receiving Party has not retained any copies, abstracts, compilations, summaries or any other format

14

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

15

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

16

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

17

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

18

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

19

Section 4 (DURATION).

20

IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD.

21
22

DATED: ________________________ _____________________________________
Attorneys for Plaintiff

23
24

DATED: ________________________ _____________________________________
Attorneys for Defendant

25

PURSUANT TO STIPULATION, IT IS SO ORDERED.

26
27
28

DATED: ________________________ _____________________________________
[Name of Judge]
United States District/Magistrate Judge

EXHIBIT A

1
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 its entirety and understand

5

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

6

of California on [date] in the case of ___________ [insert formal name of the case and the number and

7

initials assigned to it by the court]. I agree to comply with and to be bound by all the terms of this

8

Stipulated Protective Order and I understand and acknowledge that failure to so comply could expose me to

9

sanctions and punishment in the nature of contempt. I solemnly promise that I will not disclose in any

10

manner any information or item that is subject to this Stipulated Protective Order to any person or entity

11

except in strict compliance with the provisions of this Order.

12

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

13

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

14

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

15

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

16

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

17

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

18

enforcement of this Stipulated Protective Order.

19
20

Date: _________________________________

21

City and State where sworn and signed: _________________________________

22

Printed name: ______________________________
[printed name]

23
24
25
26
27
28

Signature: __________________________________
[signature]

EXHIBIT
3

1
2

[Attorney Names]
[Attorneys’ Business Address]

3
4
5
6

SUPERIOR COURT OF CALIFORNIA

7

COUNTY OF LOS ANGELES
8
9

[Plaintiff’s Name],

Case No.: [Number]
Plaintiff,

10
11
12

STIPULATION AND PROTECTIVE
ORDER – CONFIDENTIAL AND
HIGHLY CONFIDENTIAL
DESIGNATIONS1

vs.
[Defendant’s Name],

13
14

Defendant

15
16
17

IT IS HEREBY STIPULATED by and between the parties to Plaintiffs v. Defendants,

18

(list names of Plaintiffs and Defendants) (“Parties”), by and through their respective counsel of

19

record, that in order to facilitate the exchange of information and documents which may be

20

subject to confidentiality limitations on disclosure due to federal laws, state laws, and privacy

21

rights, the Parties stipulate as follows:

22
23
24
25
26
27
28

1 INFORMATION RE: STIPULATION AND
PROTECTIVE ORDER – CONFIDENTIAL AND HIGHLY CONFIDENTIAL DESIGNATIONS

Where the Parties wish to have a confidentiality stipulation and protective order the parties in all civil cases, other
than products liability cases, are encouraged to use this Stipulated Confidentiality Order Form as an initial working draft to save
time.
Where this Stipulated Confidentiality Order Form is used, then any proposed stipulated confidentiality order
submitted to the Court MUST be accompanied by a “redlined’ or “compare” version of this Form, so that the Court may readily
see ALL MODIFICATIONS that were made to this Form. This procedure is intended to save you and the Court time, and
promote faster processing of these proposed orders.
This model form confidentiality stipulation and protective order (the “Stipulated Confidentiality Order Form”) does not
address, and may not be used in, products liability cases.

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

1

1

1.

In this Stipulation and Protective Order, the words set forth below shall have the

2

following meanings:
3
4
5
6
7

a.

“Proceeding” means the above-entitled proceeding (specify case number).

b.

“Court” means the Hon. (list name of judge), or any other judge to which

this Proceeding may be assigned, including Court staff participating in such proceedings.
c.

“Confidential” means any Documents, Testimony, or Information which

8

is in the possession of a Designating Party who believes in good faith that such Documents,

9

Testimony, or Information is entitled to confidential treatment under applicable law.

10

d.

“Confidential Materials” means any Documents, Testimony, or

11

Information as defined below designated as “Confidential” pursuant to the provisions of this

12

Stipulation and Protective Order.

13
14
15
16
17
18
19

e.

[This provision is only to be used when a legitimate basis, tailored to the

case, has been explained.] “Highly Confidential” means any information which belongs to a
Designating Party who believes in good faith that the Disclosure of such information to another
Party or non-Party would create a substantial risk of serious financial or other injury that cannot
be avoided by less restrictive means.
f.

“Highly Confidential Materials” means any Documents, Testimony, or

Information, as defined below, designated as “Highly Confidential” pursuant to the provisions

20
21
22
23
24
25
26

of this Stipulation and Protective Order.
g.

“Designating Party” means the Party that designates Documents,

Testimony, or Information, as defined below, as “Confidential” or “Highly Confidential.”
h.

“Disclose” or “Disclosed” or “Disclosure” means to reveal, divulge, give,

or make available Materials, or any part thereof, or any information contained therein.
i.

“Documents” means (i) any “Writing,” “Original,” and “Duplicate” as

27

those terms are defined by California Evidence Code Sections 250, 255, and 260, which have

28

been produced in discovery in this Proceeding by any person or entity, and (ii) any copies,
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

2

1

reproductions, or summaries of all or any part of the foregoing.
2

j.

“Information” means the content of Documents or Testimony.

k.

“Testimony” means all depositions, declarations, or other testimony taken

3
4
5
6

or used in this Proceeding.
2.

The Designating Party shall have the right to designate as “Highly Confidential”

7

only the non-public Documents, Testimony, or Information that the Designating Party in good

8

faith believes would create a substantial risk of serious financial or other injury, if Disclosed to

9

another Party or non-Party, and that such risk cannot be avoided by less restrictive means.

10

3.

The entry of this Stipulation and Protective Order does not alter, waive, modify,

11

or abridge any right, privilege, or protection otherwise available to any Party with respect to the

12

discovery of matters, including but not limited to any Party’s right to assert the attorney-client

13

privilege, the attorney work product doctrine, or other privileges, or any Party’s right to contest

14

any such assertion.

15
16
17
18

4.

Any Documents, Testimony, or Information to be designated as “Confidential”

or “Highly Confidential” must be clearly so designated before the Document, Testimony, or
Information is Disclosed or produced. The parties may agree that a case name and number are to
be part of the “Highly Confidential” designation. The “Confidential” or “Highly Confidential”

19

designation should not obscure or interfere with the legibility of the designated Information.
20
21
22
23
24
25

a.

For Documents (apart from transcripts of depositions or other pretrial or

trial proceedings), the Designating Party must affix the legend “Confidential” or “Highly
Confidential” on each page of any Document containing such designated material.
b.

For Testimony given in depositions the Designating Party may either:
i.

identify on the record, before the close of the deposition, all

26

“Confidential” or “Highly Confidential” Testimony, by specifying all portions of the Testimony

27

that qualify as “Confidential” or “Highly Confidential;” or

28

ii.

designate the entirety of the Testimony at the deposition as

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

3

1

“Confidential” or “Highly Confidential” (before the deposition is concluded) with the right to

2

identify more specific portions of the Testimony as to which protection is sought within 30 days
3
4
5
6

following receipt of the deposition transcript. In circumstances where portions of the deposition
Testimony are designated for protection, the transcript pages containing “Confidential” or
“Highly Confidential” Information may be separately bound by the court reporter, who must

7

affix to the top of each page the legend “Confidential” or “Highly Confidential,” as instructed

8

by the Designating Party.
c.

9

For Information produced in some form other than Documents, and for

10

any other tangible items, including, without limitation, compact discs or DVDs, the Designating

11

Party must affix in a prominent place on the exterior of the container or containers in which the

12

Information or item is stored the legend “Confidential” or “Highly Confidential.” If only

13

portions of the Information or item warrant protection, the Designating Party, to the extent

14

practicable, shall identify the “Confidential” or “Highly Confidential” portions.

15
16
17
18

5.

The inadvertent production by any of the undersigned Parties or non-Parties to

the Proceedings of any Document, Testimony, or Information during discovery in this
Proceeding without a “Confidential” or “Highly Confidential” designation, shall be without
prejudice to any claim that such item is “Confidential” or “Highly Confidential” and such Party

19

shall not be held to have waived any rights by such inadvertent production. In the event that any
20
21
22
23
24

Document, Testimony, or Information that is subject to a “Confidential” or “Highly
Confidential” designation is inadvertently produced without such designation, the Party that
inadvertently produced the document shall give written notice of such inadvertent production
within twenty (20) days of discovery of the inadvertent production, together with a further copy

25

of the subject Document, Testimony, or Information designated as “Confidential” or “Highly

26

Confidential” (the “Inadvertent Production Notice”). Upon receipt of such Inadvertent

27

Production Notice, the Party that received the inadvertently produced Document, Testimony, or

28

Information shall promptly destroy the inadvertently produced Document, Testimony, or
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

4

1

Information and all copies thereof, or, at the expense of the producing Party, return such
2

together with all copies of such Document, Testimony or Information to counsel for the
3
4
5
6

producing Party and shall retain only the “Confidential” or “Highly Confidential” materials.
Should the receiving Party choose to destroy such inadvertently produced Document,
Testimony, or Information, the receiving Party shall notify the producing Party in writing of

7

such destruction within ten (10) days of receipt of written notice of the inadvertent production.

8

This provision is not intended to apply to any inadvertent production of any Document,

9

Testimony, or Information protected by attorney-client or work product privileges. In the event

10

that this provision conflicts with any applicable law regarding waiver of confidentiality through

11

the inadvertent production of Documents, Testimony or Information, such law shall govern.

12

6.

In the event that counsel for a Party receiving Documents, Testimony or

13

Information in discovery designated as “Confidential” or “Highly Confidential” objects to such

14

designation with respect to any or all of such items, said counsel shall advise counsel for the

15
16
17
18

Designating Party, in writing, of such objections, the specific Documents, Testimony or
Information to which each objection pertains, and the specific reasons and support for such
objections (the “Designation Objections”). Counsel for the Designating Party shall have thirty
(30) days from receipt of the written Designation Objections to either (a) agree in writing to de-

19

designate Documents, Testimony, or Information pursuant to any or all of the Designation
20
21
22
23
24

Objections and/or (b) file a motion with the Court seeking to uphold any or all designations on
Documents, Testimony, or Information addressed by the Designation Objections (the
“Designation Motion”). Pending a resolution of the Designation Motion by the Court, any and
all existing designations on the Documents, Testimony, or Information at issue in such Motion

25

shall remain in place. The Designating Party shall have the burden on any Designation Motion

26

of establishing the applicability of its “Confidential” or “Highly Confidential” designation. In

27

the event that the Designation Objections are neither timely agreed to nor timely addressed in

28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

5

1

the Designation Motion, then such Documents, Testimony, or Information shall be de2

designated in accordance with the Designation Objection applicable to such material.
3
4
5

7.

Access to and/or Disclosure of Confidential Materials shall be permitted only to

the following persons or entities:
a.

7

the Court;

b.

6

(1) Attorneys of record in the Proceeding and their affiliated attorneys,

8

paralegals, clerical and secretarial staff employed by such attorneys who are actively involved

9

in the Proceeding and are not employees of any Party; (2) In-house counsel to the undersigned

10

Parties and the paralegal, clerical and secretarial staff employed by such counsel. Provided,

11

however, that each non-lawyer given access to Confidential Materials shall be advised that such

12

materials are being Disclosed pursuant to, and are subject to, the terms of this Stipulation and

13

Protective Order and that they may not be Disclosed other than pursuant to its terms;

14
15
16
17
18

c.

those officers, directors, partners, members, employees and agents of all

non-designating Parties that counsel for such Parties deems necessary to aid counsel in the
prosecution and defense of this Proceeding; provided, however, that prior to the Disclosure of
Confidential Materials to any such officer, director, partner, member, employee or agent,
counsel for the Party making the Disclosure shall deliver a copy of this Stipulation and

19

Protective Order to such person, shall explain that such person is bound to follow the terms of
20
21
22

such Order, and shall secure the signature of such person on a statement in the form attached
hereto as Exhibit A;
d.

23
24

court reporters in this Proceeding (whether at depositions, hearings, or

any other proceeding);
e.

25

any deposition, trial, or hearing witness in the Proceeding who previously

26

has had access to the Confidential Materials, or who is currently or was previously an officer,

27

director, partner, member, employee or agent of an entity that has had access to the Confidential

28

Materials;
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

6

1

f.

any deposition or non-trial hearing witness in the Proceeding who

2

previously did not have access to the Confidential Materials; provided, however, that each such
3
4
5
6

witness given access to Confidential Materials shall be advised that such materials are being
Disclosed pursuant to, and are subject to, the terms of this Stipulation and Protective Order and
that they may not be Disclosed other than pursuant to its terms;
g.

7

mock jury participants, provided, however, that prior to the Disclosure of

8

Confidential Materials to any such mock jury participant, counsel for the Party making the

9

Disclosure shall deliver a copy of this Stipulation and Protective Order to such person, shall

10

explain that such person is bound to follow the terms of such Order, and shall secure the

11

signature of such person on a statement in the form attached hereto as Exhibit A.

12

h.

outside experts or expert consultants consulted by the undersigned Parties

13

or their counsel in connection with the Proceeding, whether or not retained to testify at any oral

14

hearing; provided, however, that prior to the Disclosure of Confidential Materials to any such

15
16
17
18

expert or expert consultant, counsel for the Party making the Disclosure shall deliver a copy of
this Stipulation and Protective Order to such person, shall explain its terms to such person, and
shall secure the signature of such person on a statement in the form attached hereto as Exhibit
A. It shall be the obligation of counsel, upon learning of any breach or threatened breach of this

19

Stipulation and Protective Order by any such expert or expert consultant, to promptly notify
20
21

counsel for the Designating Party of such breach or threatened breach; and
i.

22
23
24
25
26

any other person or entity that the Designating Party agrees to in

writing.
8.

Access to and/or Disclosure of Highly Confidential Materials shall be permitted

only to the following persons or entities:
a.

Trial Counsel for the Parties, their partners and associates, and staff and

27

supporting personnel of such attorneys, such as paralegal assistants, secretarial, stenographic

28

and clerical employees and contractors, and outside copying services, who are working on this
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

7

1

Proceeding (or any further proceedings herein) under the direction of such attorneys and to
2

whom it is necessary that the Highly Confidential Materials be Disclosed for purposes of this
3
4
5
6

Proceeding.

Such employees, assistants, contractors and agents to whom such access is

permitted and/or Disclosure is made shall, prior to such access or Disclosure, be advised of, and
become subject to, the provisions of this Protective Order. “Trial Counsel,” for purposes of this

7

Paragraph, shall mean outside retained counsel and shall not include in-house counsel to the

8

undersigned Parties and the paralegal, clerical and secretarial staff employed by such in-house

9

counsel;
b.

10

outside experts or expert consultants consulted by the undersigned Parties

11

or their counsel in connection with the Proceeding, whether or not retained to testify at any oral

12

hearing; provided, however, that prior to the Disclosure of Highly Confidential Materials to any

13

such expert or expert consultant, counsel for the Party making the Disclosure shall deliver a

14

copy of this Stipulation and Protective Order to such person, shall explain its terms to such

15
16
17
18

person, and shall secure the signature of such person on a statement in the form attached hereto
as Exhibit A prior to the Disclosure of Highly Confidential Materials. It shall be the obligation
of Trial Counsel, upon learning of any breach or threatened breach of this Stipulation and
Protective Order by any such expert or expert consultant, to promptly notify Trial Counsel for

19

the Designating Party of such breach or threatened breach;
20

c.

21
22
23
24

Documents, Testimony, or Information or thing designated “Highly Confidential,” including
any person otherwise familiar with the Highly Confidential Information contained therein, but
only to the extent of that person’s prior familiarity with the Highly Confidential Information;
d.

25
26

court reporters in this Proceeding (whether at depositions, hearings, or

any other proceeding); and
e.

27
28

any person who authored, received, saw or was otherwise familiar with

9.

the Court.

Confidential Materials and Highly Confidential Materials shall be used by the
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

8

1

persons or entities receiving them only for the purposes of preparing for, conducting,
2

participating in the conduct of, and/or prosecuting and/or defending the Proceeding, and not for
3
4

any business or other purpose whatsoever.
10.

5
6

Any Party to the Proceeding (or other person subject to the terms of this

Stipulation and Protective Order) may ask the Court, after appropriate notice to the other Parties

7

to the Proceeding, to modify or grant relief from any provision of this Stipulation and Protective

8

Order.

9

11.

Entering into, agreeing to, and/or complying with the terms of this Stipulation

10

and Protective Order shall not:

11

a.

operate as an admission by any person that any particular Document,

12

Testimony, or Information marked “Confidential” or “Highly Confidential” contains or reflects

13

trade secrets, proprietary, confidential or competitively sensitive business, commercial,

14

financial or personal information; or

15
16

b.

the terms of this Stipulation and Protective Order):

17
18

prejudice in any way the right of any Party (or any other person subject to

i.

to seek a determination by the Court of whether any particular

Confidential Materials or Highly Confidential Materials should be subject to protection under

19

the terms of this Stipulation and Protective Order; or
20

ii.

21
22
23
24

to seek relief from the Court on appropriate notice to all other

Parties to the Proceeding from any provision(s) of this Stipulation and Protective Order, either
generally or as to any particular Document, Material or Information.
12.

Any Party to the Proceeding who has not executed this Stipulation and Protective

25

Order as of the time it is presented to the Court for signature may thereafter become a Party to

26

this Stipulation and Protective Order by its counsel’s signing and dating a copy thereof and

27

filing the same with the Court, and serving copies of such signed and dated copy upon the other

28

Parties to this Stipulation and Protective Order.
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

9

1

13.

Any Information that may be produced by a non-Party witness in discovery in

2

the Proceeding pursuant to subpoena or otherwise may be designated by such non-Party as
3
4
5
6

“Confidential” or “Highly Confidential” under the terms of this Stipulation and Protective
Order, and any such designation by a non-Party shall have the same force and effect, and create
the same duties and obligations, as if made by one of the undersigned Parties hereto. Any such

7

designation shall also function as consent by such producing non-Party to the authority of the

8

Court in the Proceeding to resolve and conclusively determine any motion or other application

9

made by any person or Party with respect to such designation, or any other matter otherwise

10
11

arising under this Stipulation and Protective Order.
14.

If any person subject to this Stipulation and Protective Order who has custody of

12

any Confidential Materials or Highly Confidential Materials receives a subpoena or other

13

process (“Subpoena”) from any government or other person or entity demanding production of

14

such materials, the recipient of the Subpoena shall promptly give notice of the same by

15
16
17
18

electronic mail transmission, followed by either express mail or overnight delivery to counsel of
record for the Designating Party, and shall furnish such counsel with a copy of the Subpoena.
Upon receipt of this notice, the Designating Party may, in its sole discretion and at its own cost,
move to quash or limit the Subpoena, otherwise oppose production of the Confidential Materials

19

or Highly Confidential Materials, and/or seek to obtain confidential treatment of such materials
20
21
22
23
24

from the subpoenaing person or entity to the fullest extent available under law. The recipient of
the Subpoena may not produce any Confidential Materials or Highly Confidential Materials
pursuant to the Subpoena prior to the date specified for production on the Subpoena.
15.

Nothing in this Stipulation and Protective Order shall be construed to preclude

25

either Party from asserting in good faith that certain Confidential Materials or Highly

26

Confidential Materials require additional protection. The Parties shall meet and confer to agree

27

upon the terms of such additional protection.

28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

10

1

16.

If, after execution of this Stipulation and Protective Order, any Confidential

2

Materials or Highly Confidential Materials submitted by a Designating Party under the terms of
3
4
5
6

this Stipulation and Protective Order is Disclosed by a non-Designating Party to any person
other than in the manner authorized by this Stipulation and Protective Order, the nonDesignating Party responsible for the Disclosure shall bring all pertinent facts relating to the

7

Disclosure of such Confidential Materials or Highly Confidential Materials to the immediate

8

attention of the Designating Party.

9

17.

This Stipulation and Protective Order is entered into without prejudice to the

10

right of any Party to knowingly waive the applicability of this Stipulation and Protective Order

11

to any Confidential Materials or Highly Confidential Materials designated by that Party. If the

12

Designating Party uses Confidential Materials or Highly Confidential Materials in a non-

13

Confidential manner, then the Designating Party shall advise that the designation no longer

14

applies.

15
16
17
18

18.

Where any Confidential Materials or Highly Confidential Materials, or

Information derived therefrom, is included in any motion or other proceeding governed by
California Rules of Court, Rules 2.550 and 2.551, the Parties and any involved non-party shall
follow those rules. With respect to discovery motions or other proceedings not governed by

19

California Rules of Court, Rules 2.550 and 2.551, the following shall apply: If Confidential
20
21
22
23
24
25
26

Materials, Highly Confidential Materials, or Information derived therefrom are submitted to or
otherwise disclosed to the Court in connection with discovery motions and proceedings, the
same shall be separately filed under seal with the clerk of the Court in an envelope marked:
“CONFIDENTIAL – FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER AND
WITHOUT ANY FURTHER SEALING ORDER REQUIRED.”
19.

The Parties shall meet and confer regarding the procedures for use of any

27

Confidential Materials or Highly Confidential Materials at trial and shall move the Court for

28

entry of an appropriate order.
STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

11

1

20.

Nothing in this Stipulation and Protective Order shall affect the admissibility into

2

evidence of Confidential Materials or Highly Confidential Materials, or abridge the rights of
3
4
5
6

any person to seek judicial review or to pursue other appropriate judicial action with respect to
any ruling made by the Court concerning the issue of the status of any Confidential Materials or
Highly Confidential Materials.
21.

7

This Stipulation and Protective Order shall continue to be binding after the

8

conclusion of this Proceeding and all subsequent proceedings arising from this Proceeding,

9

except that a Party may seek the written permission of the Designating Party or may move the

10

Court for relief from the provisions of this Stipulation and Protective Order. To the extent

11

permitted by law, the Court shall retain jurisdiction to enforce, modify, or reconsider this

12

Stipulation and Protective Order, even after the Proceeding is terminated.

13
14
15
16
17
18

22.

Upon written request made within thirty (30) days after the settlement or other

termination of the Proceeding, the undersigned Parties shall have thirty (30) days to either (a)
promptly return to counsel for each Designating Party all Confidential Materials and Highly
Confidential Materials, and all copies thereof (except that counsel for each Party may maintain
in its files, in continuing compliance with the terms of this Stipulation and Protective Order, all
work product, and one copy of each pleading filed with the Court [and one copy of each

19

deposition together with the exhibits marked at the deposition)]*, (b) agree with counsel for the
20
21
22
23
24

Designating Party upon appropriate methods and certification of destruction or other disposition
of such materials, or (c) as to any Documents, Testimony, or other Information not addressed by
sub-paragraphs (a) and (b), file a motion seeking a Court order regarding proper preservation of
such Materials. To the extent permitted by law the Court shall retain continuing jurisdiction to

25

review and rule upon the motion referred to in sub-paragraph (c) herein. *[The bracketed

26

portion of this provision shall be subject to agreement between counsel for the Parties in each

27

case.]

28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

12

1

23.

After this Stipulation and Protective Order has been signed by counsel for all

2

Parties, it shall be presented to the Court for entry. Counsel agree to be bound by the terms set
3
4
5
6

forth herein with regard to any Confidential Materials or Highly Confidential Materials that
have been produced before the Court signs this Stipulation and Protective Order.
24.

The Parties and all signatories to the Certification attached hereto as Exhibit A

7

agree to be bound by this Stipulation and Protective Order pending its approval and entry by the

8

Court. In the event that the Court modifies this Stipulation and Protective Order, or in the event

9

that the Court enters a different Protective Order, the Parties agree to be bound by this

10

Stipulation and Protective Order until such time as the Court may enter such a different Order.

11

It is the Parties’ intent to be bound by the terms of this Stipulation and Protective Order pending

12

its entry so as to allow for immediate production of Confidential Materials and Highly

13

Confidential Materials under the terms herein.

14
15

This Stipulation and Protective Order may be executed in counterparts.

16
17
18

Dated:

19

By:
20
21
22

Attorneys for Plaintiffs

Dated:
By:

Attorneys for Defendants

23
24
25
26
27
28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

13

1

ORDER
2

GOOD CAUSE APPEARING, the Court hereby approves this Stipulation and
3
4
5

Protective Order.
IT IS SO ORDERED.

6
7
8

Dated:
THE HONORABLE

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

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

14

1

EXHIBIT A
2
3

CERTIFICATION RE CONFIDENTIAL DISCOVERY MATERIALS

4
5
6

I hereby acknowledge that I, ___________________________________[NAME],

7

______________________________________________ [POSITION AND EMPLOYER], am

8

about to receive Confidential Materials and/or Highly Confidential Materials supplied in

9

connection with the Proceeding, (INSERT CASE NO.). I certify that I understand that the

10

Confidential Materials and/or Highly Confidential Materials are provided to me subject to the

11

terms and restrictions of the Stipulation and Protective Order filed in this Proceeding. I have

12

been given a copy of the Stipulation and Protective Order; I have read it, and I agree to be

13

bound by its terms.

14
15
16
17
18

I understand that the Confidential Materials and Highly Confidential Materials, as
defined in the Stipulation and Protective Order, including any notes or other records that may be
made regarding any such materials, shall not be Disclosed to anyone except as expressly
permitted by the Stipulation and Protective Order. I will not copy or use, except solely for the
purposes of this Proceeding, any Confidential Materials or Highly Confidential Materials

19

obtained pursuant to this Stipulation and Protective Order, except as provided therein or
20
21
22
23
24

otherwise ordered by the Court in the Proceeding.
I further understand that I am to retain all copies of all Confidential Materials and
Highly Confidential Materials provided to me in the Proceeding in a secure manner, and that all
copies of such materials are to remain in my personal custody until termination of my

25

participation in this Proceeding, whereupon the copies of such materials will be returned to

26

counsel who provided me with such materials.

27
28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

15

1

I declare under penalty of perjury, under the laws of the State of
2

California, that the foregoing is true and correct. Executed this _____ day of ______, 20__, at
3
4

__________________.

5

DATED:_________________________
6
7
8
9
10
11
12

BY:

_________________________________
Signature
_________________________________
Title
_________________________________
Address
_________________________________
City, State, Zip
_________________________________
Telephone Number

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

STIPULATION AND PROTECTIVE ORDER –
CONFIDENTIAL AND HIGHLY CONFIDENTIAL
DESIGNATIONS

16

EXHIBIT
4

Appendix C: Model Protective Order

MODEL PROTECTIVE ORDER
[YOUR CAPTION HERE]
Attorneys for [Plaintiff / Defendant]
[Insert party name here]

[UNITED STATES DISTRICT COURT FOR THE _ _DISTRICT
OF
or
SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF
]

[*],

Case No.-- - - - - - -

Plaintiff,
vs.

[*]

STIPULATED
PROTECTIVE ORDER

Defendants.

All parties to the above-captioned Action having agreed that a
protective order [for State Court insert: pursuant to California Civil
Code Section 3426.5, and California Rules of Court 243.1, 243.2,
243.3, and 243.4; for Federal Court insert: pursuant to Federal Rule of
Civil Procedure 26(c)] is both necessary and appropriate, and
[insert court name] ("Court") having approved such an agreement
[Note: Check local rules to ensure compliance.]

IT IS HEREBY ORDERED all parties to this Action are
bound by the following Protective Order for the protection
confidential information, documents, and other things

782

Appendix C: Model Protective Order

served, or otherwise provided in this Action by the parties or by third
parties.
[optional as deemed appropriate in case-specific
circumstances: Neither the execution of this Stipulation nor the
submission of same to the Court shall in any way be deemed a general
appearance by said parties.]
A. Designated Material
1. Infonnation, materials and/or discovery responses may be
designated as being protected under this Protective Order by the
person or entity producing or lodging it, or by any party to this Action,
(hereinafter, the "Designating Party") if: (a) produced or served,
fonnally or infonnally, or pursuant to the [select appropriate: Code of
Civil Procedure; Federal Rules of Civil Procedure] in response to any
fonnal or infonnal discovery request or disclosure obligation in this
Action; (b) filed or lodged with the Court; and/or (c) filed or lodged
with a [for Federal Court include magistrate judge,] special master
and/or discovery master or referee, and/or mediator or other alternative
dispute resolution provider. All such infonnation and material and
extracts, compliations and copies and all information or material
derived therefrom constitutes "Designated Material" which includes
materials designated "CONFIDENTIAL" andlor "ATTORNEYS
AND CONSULTANTS ONLY" under this Protective Order. Unless
and until otherwise ordered by the Court upon [X] court days notice or
agreed to in writing by the parties, all material designated under this
Protective Order shall be used only for purposes of this Action
(including any and all appeals), and shall not be used or disclosed or
communicated by any person or entity receiving the Designated
Material except as provided under the tenns of this Protective Order.
(For purposes of this Protective Order, "disclose," "disclosed," or
"disclosure" means to show, furnish, discuss, or otherwise
communicate or provide any portion of the Designated Material or its
contents, whether orally or in written communication, including the
original or a copy, summary or derivative of the Designated Material.)

783

Appendix C: Model Protective Order

2. Subject to the limitations set forth in this Protective
Designated Materials may be marked "CONFIDENTIAL" for
purposes of avoiding disclosure of information, [optional: which
1 [e.g., computer
broadly interpreted, including to mean [
source code or object code]], whether or not embodied in any physical
medium, the Designating Party in good faith believes is confidential or
sensitive, which (a) the Designating Party would not normally reveal
to third parties except in confidence, (b) the Designating Party has
undertaken with others to maintain in confidence, (c) is privileged,
is not legally permitted to be disclosed and/or (e) is protected by the
right to privacy guaranteed by the Federal Constitution or any
applicable State law or Constitution.
3. Subject to the limitations set forth in this Protective Order, a
designation of "ATTORNEYS AND CONSULTANTS ONLY" means
information, [optional: which is broadly interpreted, including to
mean [
] [e.g., computer source code or object code]],
whether or not embodied in any physical medium, which the
Designating Party believes in good faith has significant competitive
value and which, if disclosed to the requesting party, or any person or
entity not bound by a written non-disclosure agreement or
confidentiality agreement, or other legal obligation, would cause
competitive harm to the Designating Party. Such information must not
be generally known to third parties or the public and is limited to
information that (a) the Designating Party would not normally reveal
to third parties except in confidence, (b) the Designating Party has
undertaken with others to maintain in confidence, (c) is privileged, (d)
is not legally permitted to be disclosed and/or (e) is protected by the
right to privacy guaranteed by the Federal Constitution or any
applicable State law or Constitution.
4. Blanket designation of documents or information as
"CONFIDENTIAL" or "ATTORNEYS AND CONSULTANTS
ONLY," en masse, and/or designation without regard to the specific
contents of each document or piece of information, is prohibited.

784

Appendix C: Model Protective Order

" B. Access to Designated Materials

s

1. Materials designated "CONFIDENTIAL" may be disclosed
r only to the following, provided, except for the Court and Court
t personnel, such person has first read and represents that s/he
. understands this protective order and has read and executed the
certification attached hereto as Exhibit A, and in the case of Outside
Consultants has read and executed both certifications attached hereto
as Exhibits A and B.
(a) Persons who appear on the face of Designated Materials
marked "CONFIDENTIAL" as an author, addressee, or recipient
thereof and any Outside Counsel of such author, addressee or recipient
that has become counsel of record in this Action, and has agreed to the
terms of this Protective Order and to be subject to the jurisdiction of
this Court for the purposes of enforcing the rights and obligations
contained in, and remedies arising, from this Protective Order.
[optional as deemed appropriate in case-specific circumstances: Any
such review of materials designated CONFIDENTIAL pursuant to this
Protective Order must be in the presence of and under the supervision
of Outside Counsel and all originals and any copies shall remain
exclusively in the possession of Outside Counsel. Further, any written
notes, compilations or reviews of materials designated
CONFIDENTIAL made by persons falling under this subsection shall
remain in the possession of Outside Counsel];
(b) "Outside Counsel," which are defined as counsel of record
for the parties to this Action, including the partners, associates, agents
and employees of counsel of record (except for agents who have been
retained or employed by Outside Counsel as Outside Consultants to
assist in the preparation of this Action, whose access is addressed in
Section B.1.(c) below) to the extent reasonably necessary to render
professional services in this Action. Unless otherwise expressly
provided through stipulation or order, Outside Counsel shall include
only the law firms of [law firm name] on behalf of [party] and [law
firm name] on behalf of [party]. Upon the filing of a document

785

Appendix C: Model Protective Order

associating or substituting counsel as counsel of record for a party in
this Action, such counsel shall also qualify as Outside Counsel ....
this subsection, provided that any counsel that has withdrawn as
counsel of record for any party confirms in writing to all other counsel
of record that it [optional: including its partners, associates, agents,
and other employees] is no longer in possession of any Designated
Material [optional as deemed appropriate in case-specific
circumstances:
with the exception of pleadings, attorney and
consultant work product, deposition transcripts and exhibits containing
Designated Material, as well as one copy of each item of Designated
Material for archival purposes], and provided that the new Ouside
Counsel of record stipulates to be bound by the terms and obligations
of this Protective Order.
LL'-&0V.l

(c) "Outside Consultants," which are defmed as being third
party experts and consultants retained or employed by Outside
Counselor the parties to this Action to assist in the preparation of,
and/or to provide testimony in the case, to the extent reasonably
necessary to render professional services in this Action, and subject to
the disclosure limitations and prerequisites of Section C below.
(d) The parties to this Action and their officers and directors
and in-house counsel and legal department support staff [optional:
and/or employees] of the parties to this Action, [optional: not to
exceed [X] in number], on a reasonably necessary basis ("Party
Designee"). In the event that any Party Designee ceases to be an
officer [or] director [optional, if applicable: and/or employee] of that
party, the party shall be responsible for ensuring that the Party
Designee does not retain and returns any CONFIDENTIAL materials;
(e) Subject to Sections F and G below, Designated Material
marked "CONFIDENTIAL" may also be shown to witnesses at
deposition and/or at trial;
(f) Vendors with whom Outside Counsel of record for the
parties to this Action have contracted for clerical functions, such as
copying of documents or preparation of exhibits;
786

Appendix C: Model Protective Order

(g) Mock jurors and jury consultants who have been engaged
by the parties and/or the Outside Consultants in preparation for and/or
during trial. For any jury research, an appropriate screening process
must be used to assure that the jury consultant(s) and mock jurors
chosen for any mock jury presentation are not current or former
officers, directors, employees or consultants of any party or any direct
competitors of any party;
(h)Any special master and/or discovery master or referee,
and/or mediator or other alternative dispute resolution provider chosen
by the parties or the Court, along with necessary legal, paralegal, and
secretarial personnel working under the direction of the mediator; and
(i) Independent interpreters, translators, video graphers , and
"Court Reporters," which means stenographers that are Certified
Shorthand Reporters or have a similar certification.
2. Except as authorized in this Section, materials Designated
"ATTORNEYS AND CONSULTANTS ONLY" may not be disclosed
to the parties to this Action, to in-house counsel, if any, or to the
officers, directors, or employees of the parties hereto. Materials
marked ATTORNEYS AND CONSULTANTS ONLY may only be
reviewed by or disclosed to the following, provided, except for the
Court and Court personnel, such person has first read and understands
this protective order and has read and executed the certification
attached hereto as Exhibit A, and in the case of Outside Consultants
has read and executed both certifications attached hereto as Exhibits A
andB:
(a) Persons who appear on the face of Designated Materials
marked ATTORNEYS AND CONSULTANTS ONLY as an author,
addressee, or recipient thereof, and any Outside Counsel of such
author, and any Outside Counsel for any addressee or recipient that has
become counsel of record in this Action. [optional as deemed
appropriate in case-specific circumstances: Any such review of
materials designated ATTORNEYS AND CONSULTANTS ONLY
pursuant to this Protective Order must be in the presence of and under
787

Appendix C: Model Protective Order

the supervision of Outside Counsel and all originals and any copies
shall remain exclusively in the possession of Outside Counsel.
Further, any written notes, compilations or reviews of materials
designated ATTORNEYS AND CONSULTANTS ONLY made by
persons falling under this subsection shall remain in the possession
Outside Counsel] [optional as deemed appropriate in case-specific
circumstances: Notwithstanding anything to the contrary above,
identification of trade secrets alleged to have been misappropriated
a particular party may be disclosed to persons specifically accused
having had access to such Designated Materials, so long as
disclosure takes place solely in the presence of Outside Counsel, the
person takes no copies and is not permitted to make notes reflecting
such Designated Materials, and the material is retained solely in the
possession of Outside Counsel.]
(b) Outside Counsel as defined in B.l.(b) above. [optional as
deemed appropriate in case-specific circumstances: in-house counsel
and legal department support staff of a party (1) who has no
involvement in competitive decision-making [see Brown Bag Software
v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992)] or in patent
prosecutions involving [subject matter], and (2) to whom disclosure is
reasonably necessary for this litigation.] [Additional options-as
deemed appropriate in case-specific circumstances-may include
restrictions on access and/or requirements concerning the handling of
Designated Materials by in-house counsel.];
(c) Outside Consultants as defined in B.l.(c) above, and
subject to the disclosure limitations and prerequisites of Section C
below;
(d) Subject to Sections F and G below, Designated Material
marked "ATTORNEYS AND CONSULTANTS ONLY" may also be
shown to witnesses at deposition and/or at trial;

788

Appendix

Model Protective Order

(e) Vendors with whom Outside Counsel of record for the
parties to this Action have contracted for clerical functions, such as
copying of documents or preparation of exhibits; and
(t) Mock jurors and jury consultants who have been engaged
by the parties and/or the Outside Consultants in preparation for and/or
during trial. For any jury research, an appropriate screening process
must be used to assure that the jury consultant(s) and mock jurors
chosen for any mock jury presentation are not current or former
officers, directors, employees or consultants of any party or any direct
competitors of any party; and any special master and/or discovery
master or referee, and/or mediator or other alternative dispute
resolution provider chosen by the parties or the Court, along with
necessary legal, paralegal, and secretarial personnel working under the
direction of the mediator.

(g) Independent interpreters, translators, videographers and Court
Reporters as defined in Section B.l.(i) above.
3. Outside Counsel who makes any disclosure of Designated
Materials to any Outside Consultant shall retain each original executed
certificate, promptly provide a copy to counsel who has retained
himlher and, upon written request, shall circulate copies to all Outside
Counsel at the termination of this Action.
4. Prosecution Bar: Unless otherwise agreed to in writing by a
Designating Party, any individual to whom any material designated by
the Designating Party as "ATTORNEYS AND CONSULTANTS
ONLY" is disclosed shall not participate in or be responsible for the
acquisition, preparation or prosecution of any patent, patent
application, or reissue application (including but not limited to
continuation, continuation-in-part, or divisional patent applications), or
for drafting or revising patent claims, directed to [subject matter] from
the time of receipt of such Designated Material through and including
[two (2)] years following the first to occur of: (i) the complete
resolution of this Action through entry of a final, non-appealable
judgment or an order from which any appeal has been exhausted; or
789

Appendix C: Model Protective Order

(ii) the complete settlement of all claims against all the parties in
Action, and the completion of all executory obligations thereunder.
C. Access by Outside Consultants
1. If any party wishes to disclose information or materials
designated under this Protective Order to any proposed Outside
Consultant, the party must first identify that individual to Outside
Counsel and the Designating Party, who shall have [X] court days
from receipt of such notice to object in writing to such disclosure to
the proposed Outside Consultant so identified. Such identification
shall at least include the full name and professional address and!or
affiliation of the proposed Outside Consultant, his or her prior
employment, consultancies and testimony for the previous [X] years,
including identification of the law firm, case number, venue and party
on whose behalf the proposed Outside Consultant was retained, a
statement that the proposed Outside Consultant is neither an employee
or consultant nor anticipated to become an employee or consultant,
beyond the capacity as Outside Consultant as defined herein, of the
party proposing the individual, and all of the proposed Outside
Consultant's other present employment or consultancies in the field.
2. The parties shall attempt to resolve any objections informally,
and approval by any objecting party shall not be unreasonably
withheld. If the objections cannot be resolved informally, the
objecting party may, within [X] court days following its objection,
move for a protective order preventing disclosure of Designated
Materials to the individual. In the event that such a motion is made,
the objecting party seeking to prohibit disclosure shall bear the burden
of proving that the disclosure is inappropriate. Prior to the resolution
of any such objection, the objecting party's Designated Materials shall
not be disclosed to the proposed Outside Consultant. Without
modifying any obligations under the [Code of Civil ProcedurelFederal
Rules of Evidence or Federal Rules of Civil Procedure] applicable to
testifying experts, the parties shall not have any obligation under the
terms of this Protective Order to identify which materials are provided

790

Appendix C: Model Protective Order

to Outside Consultants. The disclosure of the identity of a proposed
Outside Consultant shall not result in said person being subject to
deposition or other discovery procedure. Any depositions or other
discovery procedures involving any Outside Consultant shall not take
place until that Outside Consultant has been designated as an expert
[pursuant to Code of Civil Procedure Section 2034.210 et seq. /
pursuant to the Federal Rule of Civil Procedure 26, applicable local
rule], the parties' agreement, or otherwise pursuant to order of the
Court.
3. Nothing contained herein shall require an Outside Consultant
to disclose any attorney-client privileged and/or work product doctrine
information.
4. Each Outside Consultant to whom any Designated Material
may be disclosed pursuant to the provisions in this Protective Order
shall, prior to the time such Designated Material is disclosed to him or
her, be provided with a copy of this Protective Order and shall certify
under penalty of perjury that he or she has read the Protective Order
and fully understands its terms and agrees to be bound thereby_ This
certificate shall be in the form attached as Exhibit A hereto. Outside
Counsel who makes any disclosure of Designated Materials shall
retain each original executed certificate and, upon written request,
shall circulate copies to all Outside Counsel.
5. In addition to the foregoing, each Outside Consultant to whom
any Designated Material will be disclosed shall, prior to disclosure of
such material, execute the Certification of Consultant in the form
attached as Exhibit B hereto. Upon receipt of this Certification of
Consultant by counsel for the party retaining the Outside Consultant,
and following disclosure of the Outside Consultant in compliance with
Section C.1 above and expiration of the period for objection and/or for
resolution of any objections as contemplated in Section C.2 above,
disclosure of such Designated Material may be made to the Outside
Consultant without notification to the Designating Party or any other
party to this Action. Outside Counsel who makes any disclosure of

791

Appendix C: Model Protective Order

Designated Materials shall retain each original executed Certification
of Consultant and, upon written request, shall circulate copies
all
Outside Counsel and Designating Parties at the termination of this
Action.

D. Use of Designated Materials by Designating Party
1. Nothing in this Protective Order shall limit any Designating
Party's use of its own documents and information, nor shall it prevent
the Designating Party from disclosing its own confidential information
or documents to any person. Such disclosure shall not affect any
designations made pursuant to the terms of this Protective Order, so
long as the disclosure is made in a manner that is reasonably calculated
to maintain the confidentiality of the information.
2. Nothing in this Protective Order shall be deemed to constitute a
waiver of the right of a party to object to the production of documents
or information based on grounds such as privilege, right of privacy
and/or to production of the documentation or information beyond the
scope of permissible discovery.

E. Maintenance of Designated Materials.
1. All Designated Materials shall be kept in secure facilities in a
manner intended to preserve confidentiality. Access to those facilities
and the Designated Materials shall be permitted only to those persons
properly permitted to have access hereunder. The recipient of
Designated Materials shall use his or her best efforts, but at no time
less than reasonable efforts under the circumstances, to maintain the
confidentiality of such information.

[optional as deemed appropriate in case-specific circumstances:
2. Designated Materials produced pursuant to this Protective Order
shall be maintained by the receiving party in a manner, such as, but not
limited to, physical devices such as locked file cabinets, or electronic
security devices such as separate, non-networked computers which are
not connected to the Internet and which require a special

792

Appendix C: Model Protective Order

limits access to those persons authorized to have access under this
Protective Order. Additionally, the receiving party shall limit the
number of copies of Designated Materials to that which is reasonably
necessary to render professional services in this Action.]

F. Procedure for Designating Materials
Documents, materials and discovery responses, in whole or in part,
may be designated as CONFIDENTIAL or ATTORNEYS AND
CONSULTANTS ONLY as follows:
1. When producing Designated Materials, the Designating Party
shall designate materials by placing the plainly visible legend
CONFIDENTIAL or ATTORNEYS AND CONSULTANTS ONLY
on each page of the materials [optional as deemed appropriate in
specific circumstances: or physically on the outside of any media
containing or storing electronic documents, data, or material], prior to
production.
2. When a party wishes to designate as CONFIDENTIAL or
ATTORNEYS AND CONSULTANTS ONLY materials produced or
disclosed by someone other than the Designating Party, such
designation shall be made:
(a) Within [X] calendar days from the date that the
Designating Party receives copies of the materials from the producing
or disclosing entity; and
(b) By written notice to all parties to this Action and, if the
Designating Party is not a party to this Action, then to the producing or
Designating Party, that identifies the materials to be designated with
particularity (either by production numbers or by providing other
adequate identification of the specific material). Such notice shall be
sent by facsimile and regular mail.

793

Appendix C: Model Protective Order

3. Upon notice of designation pursuant to Section F.2 above all
persons receiving notice of the requested designation of materials
shall:
(a) Make no further disclosure of such Designated Material or
information contained therein, except as allowed in this Protective
Order;
(b) Take reasonable steps to notify any persons known to have
possession of or access to such Designated Materials of the effect
such designation under this Protective Order, and to provide a copy
the Protective Order and undertake to have such person read and
execute the appropriate certifications attached hereto as Exhibits A and
B·,
(c) Take reasonable steps to reclaim or prevent access to such
Designated Material or information in the possession or control of any
person not permitted to have access under the terms of this Protective
Order;

[optional as deemed appropriate in case-specific
circumstances: (d) If Designated Material is disclosed to any
person other than those entitled to disclosure in the manner authorized
by this Protective Order, the party responsible for the disclosure shall
immediately upon learning of such disclosure inform the Designating
Party in writing of all pertinent facts relating to such disclosure and
shall make reasonable effort to prevent further disclosure by the
unauthorized person(s). Notwithstanding the foregoing, Outside
Counsel are responsible for employing reasonable measures to control,
consistent with this Protective Order, duplication of, access to, and
distribution of Designated Material. Nothing in this Protective Order
shall prevent a party from filing a motion with the Court seeking
contempt or other such relief for any violation of this Protective
Order.]
G. Procedure for Use of Designated Materials at Deposition
for Designating Deposition Transcripts
794

Appendix C: Model Protective Order

1. Deposition transcripts or portions thereof may be designated as
CONFIDENTIAL or ATTORNEYS AND CONSULTANTS ONLY
by a party [optional: or third party during deposition testimony or at
the completion of said deposition, on the record, taken in this Action,
in which case the portion of the transcript containing the Designated
Material shall be identified in the transcript by the Court Reporter as
CONFIDENTIAL or ATTORNEYS AND CONSULTANTS ONLY.]
[optional: The designated testimony shall be bound / transcribed in a
separate volume and marked by the Court Reporter accordingly.]
2. Where testimony is designated at a deposition, or where
Designated Materials are disclosed to a witness, the Designating Party
shall have the right to exclude from attendance, during those portions
of the deposition, all persons not authorized by the terms of this
Protective Order to receive such Designated Material. Materials
designated ATTORNEYS AND CONSULTANTS ONLY shall not be
disclosed to a party during discovery, including depositions, without
first obtaining the written consent of the Designating Party or upon
Order of Court.
3. [optional as deemed appropriate in case-specific
circumstances: Notwithstanding the provisions set forth in Sections B
and C above, any party may, subject to the provisions of the following
paragraph, mark Designated Material as a deposition exhibit and
examine any witness thereon, provided that the exhibit and related
transcript pages receive the same confidentiality designation as the
original Designated Material. Any person who is shown a deposition
exhibit comprised of Designated Material, but who is not otherwise
entitled to access to such Material under Sections Band C above, shall
not be allowed (except by express permission of the Designating
Party) to keep a copy of the deposition exhibit, and shall not be
furnished a copy of such deposition exhibit when given the
opportunity to review the deposition transcript for accuracy following
the deposition. Any such review shall take place at the offices of the
Court Reporter, or of Outside Counsel.

795

Appendix C: Model Protective Order

4. If any Designating Party in good faith objects to having
Designated Materials shown to a witness at deposition, it is entitled
have the Court rule on such objection prior to its Designated Materials
being shown to said witness.
5. Before Designated Materials are disclosed for the frrst time to a
witness at deposition, the witness shall be advised on the record at the
deposition by the examining attorney of the existence of the following
relevant portion of this Protective Order:

The Court orders that a witness shown at
deposition and/or trial any materials designated
ATTORNEYS
AND
CONFIDENTIAL
or
CONSULTANTS ONLY may not, absent court
order, discuss with any person(s), other than those
persons authorized to view the materials designated
CONfiDENTIAL
or
ATTORNEYS
AND
CONSULTANTS ONLY, any of the materials
designated CONfiDENTIAL or ATTORNEYS
AND CONSULTANTS ONLY shown to or
discussed with the witness at the deposition and/or
trial. A violation of this prohibition shall be
grounds for a finding by the Court that the witness
is in contempt of court. Do you understand your
obligations under this Court Order?
If the witness says that he or she does not understand the obligations of
the Protective Order, then Designated Materials may not be disclosed
to him or her. At the conclusion of each day's deposition session,
prior to discharge of the Court Reporter, any Outside Counsel present
at the deposition may [optional: or shall] remind the witness of his or
her obligations under this Protective Order.]
6. Outside Counsel for any party may, within [X] calendar days
after receipt of the fmal deposition transcript from the Court Reporter,
designate in a manner that does not disclose the confidential
information [e.g., by page and line number and/or exhibit number],
796

Appendix C: Model Protective Order

portions of the deposition transcript and/or deposition exhibits as
Designated Material. If any party so designates such material, that
Designating Party shall provide written notice via facsimile and
regular mail [optional: e-mail] to all parties within the [Xl-day period.
Designated Material within the deposition transcript or the exhibits
thereto may be identified in writing or by underlining the relevant
portions and marking such portions CONFIDENTIAL or
ATTORNEYS AND CONSULTANTS ONLY, consistent with the
terms of this Protective Order. Until the expiration of the [Xl-day
period, the deposition transcript, including all exhibits thereto, shall be
treated as ATTORNEYS AND CONSULTANTS ONLY. After the
expiration of the [Xl-day period, all undesignated portion(s) of the
deposition transcript and/or exhibits may be disclosed without
restriction. The designated portions shall be treated according to their
designations pursuant to this Protective Order.
H. Copies

All complete or partial copies of Designated Materials shall also be
deemed subject to the terms of this Protective Order.

I. Court Procedures
1. [Note: Court procedures below are intended to be in accord
with the California Rules of Court and are exemplary in nature.
Please consult local rules and standing orders of the particular court
in which the Protective Order will be entered to ensure compliance
with those rules and orders.] Disclosure of Designated Material to
Court Officials. Subject to the provisions of this Section, Designated
Material may be disclosed to the Court, Court officials or employees
involved in this Action (including Court Reporters, and any special
master and/or discovery master or referee appointed by the Court) and
the jury in this Action, and any interpreters or translators interpreting
on behalf of any party or deponent.
2. Filing Designated Materials with the Court:

797

Appendix C: Model Protective Order

(a) When filing Designated Material with the Court
connection with motions, applications, or discovery-related motions
that are not subject to California Rules of Court 2.550 et seq., the filing
party shall filed all Designated Materials in a sealed envelope or
container on which shall be affIXed a cover sheet, which shall contain
an indication of the nature of the contents and prominently display the
notation, in bold text, "DOCUMENT FILED UNDER SEAL" and a
statement, in bold text, substantially as follows:

THIS ENVELOPE CONTAINS MATERIALS
SUBJECT TO A PROTECTIVE ORDER
ENTERED IN THIS ACTION. IT IS NOT TO BE
OPENED NOR ARE ITS CONTENTS TO BE
DISPLAYED, REVEALED OR MADE PUBLIC,
EXCEPT BY ORDER OF THE COURT.
The submission shall indicate clearly which portions are Designated
Materials. The notation, in bold, "DOCUMENT FILED UNDER
SEAL" shall also be made on pleading or cover sheet under which the
document is submitted, as well as on the face of the document itself.
A party that files a paper that is a pleading, brief, declaration, or
exhibit that contains or paraphrases Designated Material shall only file
the particular document or portion thereof under seal for which good
cause to seal exists. The Clerk of the Court is directed to maintain
under seal all documents and transcripts of deposition testimony
and answers to interrogatories, requests for admission, and other
pleadings filed under seal with the Court in this Action.
(b) When filing Designated Materials with the Court in
connection with such motions subject to the application of California
Rules of Court 2.550 et seq., the filing party shall conditionally lodge
all Designated Materials in a sealed envelope or container on which
shall be affixed a cover sheet, which shall contain an indication of the
nature of the contents and prominently display the notation, in bold
text, "DOCUMENT CONDITIONALLY LODGED UNDER
SEAL" and a statement, in bold text, substantially as follows:

798

Appendix C: Model Protective Order

THIS ENVELOPE CONTAINS MATERIALS
SUBJECT TO A PROTECTIVE ORDER
ENTERED IN TIDS ACTION. IT IS SUBJECT
TO A PENDING MOTION TO SEAL, AND IS
NOT TO BE OPENED NOR ARE ITS CONTENTS
TO BE DISPLAYED, REVEALED OR MADE
PUBLIC, EXCEPT BY ORDER OF THE COURT.
The submission shall indicate clearly which portions are Designated
"DOCUMENT
Materials.
The
notation,
in
bold,
CONDITIONALLY LODGED UNDER SEAL" shall also be made
on any pleading or cover sheet under which the document is submitted,
as well as on the face of the document itself. A party that files a paper
that is a pleading, brief, declaration, or exhibit that contains or
paraphrases Designated Material shall only file the particular
document or portion thereof under seal for which good cause to seal
exists. During the pendency of a motion to seal the lodged
material, the Clerk of the Court is directed to maintain under seal
all documents and transcripts of deposition testimony and answers
to interrogatories, requests for admission, and other pleadings
lodged under seal with the Court in this Action.
3. Retrieval of Designated Materials: The party lodging or
filing the Designated Materials shall be responsible for retrieving such
Designated Materials from the Court following the final termination of
this Action (including after any appeals) consistent with applicable
laws and court procedure.
4. Failure to File Under Seal: If any party fails to file [optional:
another party's] Designated Materials under seal, the Designating
Party or any party to this Action may promptly file a motion to be
heard on an expedited basis to request that the Court place the
Designated Materials under seal. [Note: Parties might want to
consider beforehand the consequences of a party's failure to file or
lodge its own Designated Materials under seal, including whether to
and the proper method for that failure to be remedied under this

799

Appendix C: Model Protective Order

provision without waiver of any assertions of confidentiality that
be at issue substantively in the Action.]

5. Use of Designated Materials in Open Court: The parties
shall neither present nor quote from any Designated Material in open
court, unless the Court orders otherwise. Presentation of, or quotations
from, Designated Materials shall be heard by the Court under such
conditions as the Court may impose to prevent improper disclosure of
Designated Materials. Not less than 30 calendar days prior to the date
set for trial, the parties shall meet and confer concerning appropriate
methods for dealing with Designated Material at trial.
J. Objections
1. A party may challenge the propriety of any designation under
this Protective Order at any time. A challenge may be made by
serving by facsimile and by mail on all other parties (and third parties,
if applicable) a "Notice of Objection" that identifies with particularity
the Designated Materials as to which the designation is challenged and
states the basis for each challenge.
2. Ten (10) court days after service of a Notice of Objection in
full compliance with Section J.l above, the challenged material shall
be deemed de-designated or re-designated unless the Designating Party
has served by facsimile and mail delivery a response to the Notice of
Objection setting forth the legal and factual grounds upon which the
Designating Party bases its position that the materials should maintain
the original designation or for designating the material otherwise. If a
party challenging the designation is unconvinced, a motion to change
the designation shall be filed within ten (10) court days after receipt of
the response to the Notice of Objection. [optional: Parties are
encouraged to consider whether this is a sufficient period of time for
third parties who provided Designated Materials to retain counsel that
may file such pleadings on that third party's behalf, and shall allow
additional time to such a third party as necessary.] In the event of a
motion to change the designation, the Designated Material at
may be submitted to the Court under seal prior to the first hearing
800

Appendix C: Model Protective Order

conference on the subject. It shall be the burden of the Designating
Party under such circumstances to establish that the Designated
Material is designated properly as CONFIDENTIAL or ATTORNEYS
AND CONSULTANTS ONLY within the meaning of this Protective
Order. Upon the timely filing of such a motion, the original
designation shall remain effective until ten (10) court days after
service of notice of entry of an order re-designating the materials and
during the pendency of any writ petition filed within the ten (10) court
day period. The Designating Party may also file a brief on the matter
in addition to the original response to the Notice of Objection.
3. The parties shall meet and confer in good faith prior to the
filing of any motion under this Section.
K. Client Communication

Nothing in this Protective Order shall prevent or otherwise restrict
counsel from rendering advice to their clients and, in the course of
rendering such advice, relying upon the examination of Designated
Material. In rendering such advice and otherwise communicating with
the client, Outside Counsel shall comply with the terms of this
Protective Order.
L. No Prejudice

1. This Protective Order shall not diminish any existing obligation
or right with respect to Designated Materials, nor shall it prevent a
disclosure to which the Designating Party consents in writing before
the disclosure takes place.
2. Unless all parties stipulate otherwise, evidence of the existence
or nonexistence of a designation under this Protective Order, including
any marking of "CONFIDENTIAL" or "ATTORNEYS AND
CONSULTANTS ONLY" shall not be admissible for any purpose
during any proceeding on the merits of this Action. Additionally, in
the event that any Designated Material is used in any hearings, trial,
appeal or other proceeding in this Action, it shall not lose its status of

801

Appendix C: Model Protective Order

CONFIDENTIAL or ATTORNEYS AND CONSULTANTS ONLY
material through such use, even if it is provided to the jury with
markings of "CONFIDENTIAL" or "ATTORNEYS AND
CONSULTANTS ONLY" redacted.

3. If any party or third party required to produce documents
inadvertently produces what should be Designated Material without
marking it with the appropriate legend, the producing party may give
written notice to the receiving party or parties, including appropriately
stamped copies of the Designated Material, that the document, thing,
or response is deemed Designated Material and should be treated as
such in accordance with the provisions of this Protective Order.
4. If any party receives information, materials and/or discovery
responses, which it reasonably believes was inadvertently produced
without confidentiality markings, it shall promptly advise the
producing party by mail and facsimile. The producing party shall have
[X] calendar days in which to mark said information, materials and/or
discovery responses. During this [X] calendar day period, counsel for
the receiving party shall treat said information, materials and/or
discovery responses as if designated A TTORNEYS AND
CONSULTANTS ONLY.
5. The restrictions as to use or dissemination of information or
materials, set forth in any of the preceding paragraphs, shall not apply
as to:
(a) Any information which at the time of the designation under
this Protective Order is known or available to the general public;
(b) Any information which after designation under this
Protective Order becomes known or to available to the general public
through no act, or failure to act, attributable to the receiving party or
its counsel;
(c) Any information which the receiving party, its counsel, or
any recipient of designated material under this Protective Order can

802

Appendix C: Model Protective Order

show as a matter of written record was already known to the receiving
party through means other than any violation of law or of a
confidentiality or nondisclosure agreement; and
(d) Any information a receiving party can demonstrate was
developed by that party independently of any disclosure hereunder.
If the parties cannot agree as to whether there is sufficient
demonstration of the exceptions set out in subsections (a) through (d)
above and if a motion is not brought by the receiving party within [X]
calendar days of it first raising the dispute, then the information will
treated consistent with the designation accorded it by the Designating
Party_
6. Production of Designated Materials pursuant to this Protective
Order, and inadvertent production of materials without the appropriate
designation, shall not, by themselves, be deemed a waiver in whole or
in part of the producing party's claim of confidentiality or secrecy,
either to the specific information disclosed or as to any other
information relating thereto or on the same or related subject matter.
However, failure to take prompt or appropriate action to rectify any
inadvertent production within a reasonable time after materials are
produced without designation may, in appropriate circumstances,
result in a loss of confidentiality or secrecy_
7. Entering into, agreeing to, andlor producing or receIvIng
Designated Materials under this Order, or otherwise complying with
the terms of this Order shall not:
(a) Operate as an admission that any particular information of
material Designated Material contains or reflects trade secrets,
proprietary or commercially sensitive or valuable information, or any
other type of confidential information;
(b) Operate as an admission that the restrictions and procedures
set forth herein constitute or do not constitute adequate protection for
any particular Designated Material;

803

Appendix C: Model Protective Order

(c) Prejudice in any way the right to object to the production
documents a party does not consider to be subject to discovery;
(d) Prejudice in any way the right to object to the authenticity
or admissibility into evidence of any document, testimony, or
evidence subject to this Order;
(e) Prejudice in any way the right of any party or third party
petition the Court for a further protective order relating to
purportedly confidential information;
8. Privileged Materials. This Protective Order is without
prejudice to a party asserting that any Designated Materials under this
Protective Order or any document or thing inadvertently produced is
protected by the attorney-client privilege and/or protected by the
attorney work product doctrine or otherwise protected from discovery.
Nothing in this Protective Order shall preclude a party from
challenging the propriety of the claim of privilege in accordance with
applicable law.
M. Modification, Termination and Survival

1. Modification and Addition of Parties:
(a) All parties reserve the right to seek modification of this
Protective Order at any time for good cause. The parties agree to meet
and confer prior to seeking to modify this Protective Order for any
reason. The restrictions imposed by this Protective Order may only be
modified or terminated by written stipulation of all parties or by order
of Court.
(b) Parties to this Action who are not listed herein or who
become parties to this Action after the latest date of execution may
become parties to this Protective Order, and thereby be bound by all
the terms and conditions stated herein, by executing a written
agreement thereto, to be signed by all Outside Counsel for the parties,
and which designates Outside Counsel for the additional party.

804

Appendix C: Model Protective Order

(C) This Protective Order shall remain in effect until
superseded, modified, or terminated by order of Court. [optional: To

the extent third parties to this Action designate materials under this
Protective Order, the protections of this Protective Order as to those
Designated Materials shall stay in full force and effect unless and until
superseded, modified, or terminated by order of Court upon [Xl court
days notice to the affected third parties, or by the affected third parties'
consent in writing. 1
2. Survival and Return of Designated Material:
This
Protective Order shall survive termination of this Action. Upon final
termination of this Action, including appeals and retrials, and at the
written request of the Designating Party, all Designated Material,
including deposition testimony regarding designated exhibits and all
copies thereof, shall be returned to Outside Counselor the Designating
Party. Such Designated Materials shall either be returned at the
expense of the Designating Party or, at the option and expense of the
Designating Party, destroyed. Upon request for the return or
destruction of Designated Materials, Outside Counsel for the receiving
party shall certify their compliance with this provision and shall
deliver such certification to other Outside Counselor the Designating
Party not more than thirty (30) calendar days after the written request
to return or destroy Designated Materials. Notwithstanding the
provisions for return or destruction of Designated Material, Outside
Counsel may, subject to its continuing obligations under this
Protective Order, retain pleadings, attorney and Outside Consultant
work product, and deposition transcripts and exhibits containing
Designated Material [optional: as well as one copy of each item of
Designated Material for archival purposes l.
N. Production of Third Party Information as Designated Material

in This Action; Requests for Production of Designated
Materials in Other Actions or Proceedings

1. Any party seeking production of information from a third
party, through a subpoena or otherwise, in this Action shall advise the

805

Appendix C: Model Protective Order

third party of its ability to produce responsive information as
Designated Material that would be subject to this Protective Order.
Any third
party may provide
information designated
CONFIDENTIAL INFORMATION or ATTORNEYS AND
CONSULTANTS ONLY to the parties through either formal or
informal disclosure, including by being required by subpoena or court
order, and receive the protections provided by this Protective Order.
Designated third party information shall be given the same rights,
benefits, and protection under this Protective Order as information
produced by the parties, and shall have standing to enforce this
Protective Order with respect to the disclosure, use and recovery of
that third party information.
2. Where a discovery request or subpoena in this Action calls for
otherwise discoverable information that is subject to an obligation of
nondisclosure to another person or entity, it shall be the obligation of
the party or third party subjected to the discovery request or subpoena
to:
(a) identify to the party seeking the information the name and
address of each person or entity whose confidentiality interests are
implicated by the discovery request or, if the identity of such person or
entity itself is confidential, the existence of confidentiality obligations
to such person or entity, and
(b) promptly provide to such person or entity whose
confidentiality interests are implicated:
(1) notice of such discovery request seeking disclosure of
materials or information held under obligations of confidentiality; and
(2) a copy of this Protective Order.
The party or third party to whom the discovery request
subpoena has been directed shall be responsible for determining
whether the person or entity whose confidentiality interests are
implicated objects to the production of the otherwise discoverable

806

Appendix C: Model Protective Order

information. If the person or entity whose confidentiality interests are
implicated does not object in writing to Outside Counsel for the
requesting party within [Xl court days after receiving notice of the
discovery request and a copy of this Protective Order, the party or
third party to whom the discovery request has been directed shall not
be permitted to withhold discovery on the ground of confidentiality
obligations to such person or entity. If an objection is made by such
person or entity, there shall he no disclosure of the information to
which the objection is made unless the objection is withdrawn by such
person or entity or overruled by order of the Court pursuant to a
motion by the requesting party requiring disclosure of the confidential
information. The parties and/or third party shall meet and confer in
good faith to resolve any issues pertaining to deposition questions that
call for otherwise discoverable information that is subject to an
obligation of confidentiality owed to another.
3. Where a discovery request or subpoena in any other action or
proceeding is served on a party to this Action and it calls for
Designated Materials of another Designating Party pursuant to this
Protective Order, it shall be the obligation of the party subjected to the
discovery request or subpoena to:
(a) promptly provide to the party in the other action or
proceeding seeking the information a copy of this Protective Order and
the name and address of the Designating Party whose Designated
Materials are implicated by the discovery request;
(b) promptly provide to the Designating Party whose
Designated Materials are implicated a copy of the discovery require or
subpoena; and
(c) Take reasonable steps to oppose the production of the
Designated Material in the other action or proceeding and seek
restrictions on use or disclosure similar to the terms of this Protective
Order unless and until the Designating Party consents to the
production or intervenes and directly opposes the production.

807

Appendix C: Model Protective Order

O. Court's Retention of Jurisdiction
The Court retains jurisdiction to (a) make such amendments,
modifications, and additions to this Protective Order as it may from
time to time deem appropriate, (b) enforce this Protective Order, and
(c) determine whether any person or entity is in violation of this
Protective Order.

P. Authorization and Execution
This Protective Order is executed by the parties, and by their
counsels of record, who also sign on behalf of themselves and their
respective law firms. Each attorney executing this Protective Order on
behalf of any party represents that the attorney has disclosed fully to
the party the terms of this Protective Order and is duly authorized by
that attorney's client to execute this Protective Order.

Q. Waiver of the Protections of The Protective Order
No part of the restrictions imposed by this Protective Order may be
waived by a Designating Party, except by the written stipulation
executed by Outside Counselor the Designating Party.

Dated:

[FIRM REPRESENTING PLAINTIFF]

Dated:

By:
------------------------[Attorneys representing plaintiff]
Attorneys for [Plaintiff]
[FIRM REPRESENTING PLAINTIFF]
By: _________________________
[Attorneys representing defendant]
Attorneys for [Defendant]

808

Appendix C: Model Protective Order

ORDER
Pursuant to the foregoing stipulation, IT IS SO ORDERED.
Dated:

By: _ _ _ _ _ _ _ _ _ _ _ __
[U.S. District Judge] [Judge of the
Superior Court]

809

Appendix C: Model Protective Order

EXHIBIT A to STIPULATED PROTECTIVE ORDER
CERTIFICATION RE: MATERIAL COVERED BY
PROTECTIVE ORDER
I, the undersigned, hereby certify that I have read the Protective
Order entered in the [e.g., Superior Court of the State of California for
/ United States District Court, __District
the County of
] in the case entitled [*], Case No. [*]
----"
I understand the terms of the Protective Order. I agree to be bound
by such terms and to submit to the personal jurisdiction of the [e.g.,
Superior Court of the State of California for the County of _ __
United States District Court, __District of
] with respect to
any proceeding related to the enforcement of this Protective Order,
including any proceedings related to contempt of Court. I will not
disclose Designated Materials to anyone other than persons
specifically authorized by the Protective Order, and I agree to return to
counsel [optional: or destroy and confirm destruction in writing under
penalty of perjury if agreed to by the designating party] from whom I
received such materials all such materials that come into my
possession and confirm it in writing under penalty of perjury.
I declare under penalty of perjury that the foregoing is true and
correct.
Name of Individual:
Company or Firm:
Address:
Telephone No.:
Relationship to this Action and parties:
Date
Signature:

810

Appendix C: Model Protective Order

EXHIBIT B to STIPULATED PROTECTIVE ORDER
CERTIFICATION OF CONSULTANT
I, the undersigned, hereby certify that I have read the Protective
Order entered in the [Superior Court of the State of California for the
County of
/ United States District Court,
District of
_ _---"], in the case entitled [*], Case No. [*].
I certify that I am not employed or consulted by or affiliated or
contracted with a competitor of any person or entity currently a party
(as of the time of the execution of this Certification) to this Action. If
at any time after I execute this Consultant Certification and during the
pendency of this Action I become engaged in business as or with a
competitor of any person or entity currently a party to this Action, I
will promptly inform the counsel for the party who retained me in this
Action, and I will not thereafter review any Designated Materials
unless and until the Court in this Action orders otherwise.
I declare under penalty of perjury that the foregoing is true and
correct.
Name of Individual:
Company or Firm:
Address:
Telephone No.:
Date
Signature:

811

Appendix C: Model Protective Order

e-

"Model Protective Order © 2014 and licensed under the Creative Commons type license
(attribution share-alike)
(http://creativecommons.org/licenseslby-sa/3.01) by State Bar of
California, IP Section, Trade Secrets Interest Group (ipsection.org)-principal authors Jill Kopeikin, Paul
Rice, & Matthew Neco, assisted by Daniel Kassabian, Joanna Mendoza, David Morales and Benjamin
Scheibe. This entire notice, with links, in quotes must always be reproduced as is in 8pt font or larger, on
the final page of the stipulated Protective Order, or the page preceding the Court's signature line on an
order."
sa~3.0

812

EXHIBIT
5

1
2
3
4
5
6
7
8

SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

COUNTY OF SAN MATEO

10
11
12
13

Plaintiff,

14
15

vs.

16

Defendants.

17
18

)
)
)
)
)
)
)
)
)
)
)

Case No. ________
STIPULATION AND PROTECTIVE
ORDER REGARDING CONFIDENTIAL
INFORMATION
(Double Level of Confidentiality)

In order to protect confidential information obtained by the parties in connection with

19

this case, the parties, by and through their respective undersigned counsel and subject to the

20

approval of the Court, hereby agree as follows:

21
22

Part One: Use Of Confidential Materials In Discovery
1.

Any party or non-party may designate as “Confidential Information” (by

23

stamping the relevant page or as otherwise set forth herein) any document or response to

24

discovery which that party or non-party considers in good faith to contain information involving

25

trade secrets, or confidential business or financial information, including personal financial

26

information about any party to this lawsuit, putative class members or employee of any party to

27

this lawsuit; information regarding any individual’s banking relationship with any banking

28
Model Confidentiality Agreement and Order

1

institution, including information regarding the individual’s financial transactions or financial

2

accounts, and any information regarding any party not otherwise available to the public, subject

3

to protection under Rules 2.550, 2.551, 2.580, 2.585, 8.160, and 8.490 of the California Rules of

4

Court or under other provisions of California law. Any party or non-party may designate as “

5

Highly Confidential Information” (by stamping the relevant page or as otherwise set forth

6

herein) any document or response to discovery which that party or non-party considers in good

7

faith to contain information involving highly sensitive trade secrets or confidential business or

8

financial information, the disclosure of which would result in the disclosure of trade secrets or

9

other highly sensitive research, development, production, personnel, commercial, market,

10

financial, or business information, subject to protection under Rules 2.550, 2.551, 2.580, 2.585,

11

8.160, and 8.490 of the California Rules of Court or under other provisions of California law.

12

Where a document or response consists of more than one page, the first page and each page on

13

which confidential information appears shall be so designated.

14

2.

A party or non-party may designate information disclosed during a deposition or

15

in response to written discovery as “Confidential” or “Highly Confidential” by so indicating in

16

said responses or on the record at the deposition and requesting the preparation of a separate

17

transcript of such material. In addition, a party or non-party may designate in writing, within

18

thirty (30) days after receipt of said responses or of the deposition transcript for which the

19

designation is proposed, that specific pages of the transcript and/or specific responses be treated

20

as “Confidential Information” or “Highly Confidential.” Any other party may object to such

21

proposal, in writing or on the record. Upon such objection, the parties shall follow the

22

procedures described in Paragraph 9 below. After any designation made according to the

23

procedure set forth in this paragraph, the designated documents or information shall be treated

24

according to the designation until the matter is resolved according to the procedures described in

25

Paragraph 9 below, and counsel for all parties shall be responsible for marking all previously

26

unmarked copies of the designated material in their possession or control with the specified

27

designation. A party that makes original documents or materials available for inspection need

28
Model Confidentiality Agreement and Order

2

1

not designate them as Confidential or Highly Confidential Information until after the inspecting

2

party has indicated which materials it would like copied and produced. During the inspection

3

and before the designation and copying, all of the material made available for inspection shall be

4

considered Confidential or Highly Confidential Information.

5

3.

All Confidential or Highly Confidential Information produced or exchanged in

6

the course of this case (not including information that is publicly available) shall be used by the

7

party or parties to whom the information is produced solely for the purpose of this case.

8

Confidential or Highly Confidential Information shall not be used for any commercial

9

competitive, personal, or other purpose.

10

4.

Except with the prior written consent of the other parties, or upon prior order of

11

this Court obtained upon notice to opposing counsel, Confidential Information shall not be

12

disclosed to any person other than:

13

(a)

14

counsel for the respective parties to this litigation, including in-house
counsel and co-counsel retained for this litigation;

15

(b)

employees of such counsel;

16

(c)

individual parties or officers or employees of a party, to the extent deemed

17
18

necessary by counsel for the prosecution or defense of this litigation;
(d)

consultants or expert witnesses retained for the prosecution or defense of

19

this litigation, provided that each such person shall execute a copy of the

20

Certification annexed to this Order (which shall be retained by counsel to

21

the party so disclosing the Confidential Information and made available

22

for inspection by opposing counsel during the pendency or after the

23

termination of the action only upon good cause shown and upon order of

24

the Court) before being shown or given any Confidential Information, and

25

provided that if the party chooses a consultant or expert employed by the

26

defendant or one of its competitors, the party shall notify the opposing

27

party, or designating non-party, before disclosing any Confidential

28
Model Confidentiality Agreement and Order

3

1

Information to that individual and shall give the opposing party an

2

opportunity to move for a protective order preventing or limiting such

3

disclosure;

4

(e)

any authors or recipients of the Confidential Information;

5

(f)

the Court, court personnel, and court reporters; and

6

(g)

witnesses (other than persons described in Paragraph 4(e)). A witness

7

shall sign the Certification before being shown a confidential document.

8

Confidential Information may be disclosed to a witness who will not sign

9

the Certification only in a deposition at which the party who designated

10

the Confidential Information is represented or has been given notice that

11

Confidential Information produced by the party may be used. At the

12

request of any party, the portion of the deposition transcript involving the

13

Confidential Information shall be designated “Confidential” pursuant to

14

Paragraph 2 above. Witnesses shown Confidential Information shall not

15

be allowed to retain copies.

16

5.

Except with the prior written consent of the other parties, or upon prior order of

17

this Court obtained after notice to opposing counsel, Highly Confidential Information shall be

18

treated in the same manner as “Confidential Information” pursuant to Paragraph 4 above, except

19

that it shall not be disclosed to individual parties or directors, officers or employees of a party.

20

6.

Any persons receiving Confidential or Highly Confidential Information shall not

21

reveal or discuss such information to or with any person who is not entitled to receive such

22

information, except as set forth herein. If a party or any of its representatives, including counsel,

23

inadvertently discloses any Confidential or Highly Confidential Information to persons who are

24

not authorized to use or possess such material, the party shall provide immediate written notice

25

of the disclosure to the party whose material was inadvertently disclosed. If a party has actual

26

knowledge that Confidential or Highly Confidential Information is being used or possessed by a

27

person not authorized to use or possess that material, regardless of how the material was

28
Model Confidentiality Agreement and Order

4

1

disclosed or obtained by such person, the party shall provide immediate written notice of the

2

unauthorized use or possession to the party whose material is being used or possessed. No party

3

shall have an affirmative obligation to inform itself regarding such possible use or possession.

4

7.

In connection with discovery proceedings as to which a party submits

5

Confidential or Highly Confidential Information, all documents and chamber copies containing

6

Confidential or Highly Confidential Information which are submitted to the Court shall be filed

7

with the Court in sealed envelopes or other appropriate sealed containers. On the outside of the

8

envelopes, a copy of the first page of the document shall be attached. If Confidential or Highly

9

Confidential Information is included in the first page attached to the outside of the envelopes, it

10

may be deleted from the outside copy. The word “CONFIDENTIAL” shall be stamped on the

11

envelope and a statement substantially in the following form shall also be printed on the

12

envelope:

13

“This envelope is sealed pursuant to Order of the Court, contains Confidential

14

Information and is not to be opened or the contents revealed, except by Order of

15

the Court or agreement by the parties.”

16

If another court or administrative agency subpoenas or orders production of Confidential or

17

Highly Confidential Information, such party shall promptly notify counsel for the party who

18

produced the material of the pendency of such subpoena or order and shall furnish counsel with a

19

copy of said subpoena or order.

20

8.

A party may designate as “Confidential Information” or “Highly Confidential

21

Information” documents or discovery materials produced by a non-party by providing written

22

notice to all parties of the relevant document numbers or other identification within thirty (30)

23

days after receiving such documents or discovery materials. Any party or non-party may

24

voluntarily disclose to others without restriction any information designated by that party or non-

25

party as Confidential or Highly Confidential Information, although a document may lose its

26

confidential status if it is made public. If a party produces materials designated Confidential or

27

Highly Confidential Information in compliance with this Order, that production shall be deemed

28
Model Confidentiality Agreement and Order

5

1

to have been made consistent with any confidentiality or privacy requirements mandated by

2

local, state or federal laws.

3

9.

If a party contends that any material is not entitled to confidential treatment, such

4

party may at any time give written notice to the party or non-party who designated the material.

5

The party or non-party who designated the material shall have twenty (20) days from the receipt

6

of such written notice to apply to the Court for an order designating the material as confidential.

7

The party or non-party seeking the order has the burden of establishing that the document is

8

entitled to protection.

9

10.

Notwithstanding any challenge to the designation of material as Confidential or

10

Highly Confidential Information, all documents shall be treated as such and shall be subject to

11

the provisions hereof unless and until one of the following occurs:

12

(a)

13

the party or non-party who claims that the material is Confidential or
Highly Confidential Information withdraws such designation in writing; or

14

(b)

the party or non-party who claims that the material is Confidential or

15

Highly Confidential Information fails to apply to the Court for an order

16

designating the material confidential within the time period specified

17

above after receipt of a written challenge to such designation; or

18

(c)

19
20

the Court rules the material is not Confidential or Highly Confidential
Information.

11.

All provisions of this Order restricting the communication or use of Confidential

21

or Highly Confidential Information shall continue to be binding after the conclusion of this

22

action, unless otherwise agreed or ordered. Upon conclusion of the litigation, a party in the

23

possession of Confidential or Highly Confidential Information, other than that which is

24

contained in pleadings, correspondence, and deposition transcripts, shall either (a) return such

25

documents no later than thirty (30) days after conclusion of this action to counsel for the party or

26

non-party who provided such information, or (b) destroy such documents within the time period

27

upon consent of the party who provided the information and certify in writing within thirty (30)

28
Model Confidentiality Agreement and Order

6

1
2

days that the documents have been destroyed.
12.

Nothing herein shall be deemed to waive any applicable privilege or work product

3

protection, or to affect the ability of a party to seek relief for an inadvertent disclosure of

4

material protected by privilege or work product protection. Any witness or other person, firm or

5

entity from which discovery is sought may be informed of and may obtain the protection of this

6

Order by written advice to the parties’ respective counsel or by oral advice at the time of any

7

deposition or similar proceeding.

8
9

Part Two: Use of Confidential Materials in Court
The following provisions govern the treatment of Confidential or Highly Confidential

10

Information used at trial or submitted as a basis for adjudication of matters other than discovery

11

motions or proceedings. These provisions are subject to Rules 2.550, 2.551, 2.580, 2.585, 8.160,

12

and 8.490 of the California Rules of Court and must be construed in light of those Rules.

13

13.

A party that files with the Court, or seeks to use at trial, materials designated as

14

Confidential or Highly Confidential Information, and who seeks to have the record containing

15

such information sealed, shall submit to the Court a motion or an application to seal, pursuant to

16

California Rule of Court 2.551.

17

14.

A party that files with the Court, or seeks to use at trial, materials designated as

18

Confidential or Highly Confidential Information by anyone other than itself, and who does not

19

seek to have the record containing such information sealed, shall comply with either of the

20

following requirements:

21

(a)

At least ten (10) business days prior to the filing or use of the Confidential

22

or Highly Confidential Information, the submitting party shall give notice

23

to all other parties, and to any non-party that designated the materials as

24

Confidential or Highly Confidential Information pursuant to this Order, of

25

the submitting party’s intention to file or use the Confidential or Highly

26

Confidential Information, including specific identification of the

27

Confidential or Highly Confidential Information. Any affected party or

28
Model Confidentiality Agreement and Order

7

1

non-party may then file a motion to seal, pursuant to California Rule of

2

Court 2.551(b); or

3

(b)

At the time of filing or desiring to use the Confidential or Highly

4

Confidential Information, the submitting party shall submit the materials

5

pursuant to the lodging-under-seal provision of California Rule of Court

6

2.551(d). Any affected party or non-party may then file a motion to seal,

7

pursuant to the California Rule of Court 2.551(b), within ten (10) business

8

days after such lodging. Documents lodged pursuant to California Rule of

9

Court 2.551(d) shall bear a legend stating that such materials shall be

10

unsealed upon expiration of ten (10) business days, absent the filing of a

11

motion to seal pursuant to Rule 2.551(b) or Court order.

12

15.

In connection with a request to have materials sealed pursuant to Paragraph 12 or

13

Paragraph 13, the requesting party’s declaration pursuant to California Rule of Court 2.551(b)(1)

14

shall contain sufficient particularity with respect to the particular Confidential or Highly

15

Confidential Information and the basis for sealing to enable the Court to make the findings

16

required by California Rule of Court 2.550(d).

17

IT IS SO STIPULATED.

18
19

Dated: ___________________.

By: _________________________.

Dated: ___________________.

By: _________________________.

20
21
22

ORDER

23
24
25

IT IS SO ORDERED.

26
27

Dated: __________________.

_______________________________
JUDGE OF THE SUPERIOR COURT

28
Model Confidentiality Agreement and Order

8

CERTIFICATION

1
2

I hereby certify my understanding that Confidential or Highly Confidential Information is

3

being provided to me pursuant to the terms and restrictions of the Stipulation and Protective

4

Order Regarding Confidential Information filed on _______________, 200__, in San Mateo

5

County Superior Court Case No. _______________ (“Order”). I have been given a copy of that

6

Order and read it.

7

I agree to be bound by the Order. I will not reveal the Confidential or Highly

8

Confidential Information to anyone, except as allowed by the Order. I will maintain all such

9

Confidential or Highly Confidential Information, including copies, notes, or other transcriptions

10

made therefrom, in a secure manner to prevent unauthorized access to it. No later than thirty

11

(30) days after the conclusion of this action, I will return the Confidential or Highly Confidential

12

Information, including copies, notes, or other transcriptions made therefrom, to the counsel who

13

provided me with the Confidential or Highly Confidential Information. I hereby consent to the

14

jurisdiction of the San Mateo County Superior Court for the purpose of enforcing the Order.

15

I declare under penalty of perjury that the foregoing is true and correct and that this

16

certificate is executed this ___ day of ______________, 200__, at ________________________.

17
18

By: ________________________________

19

Address: ____________________________

20

____________________________

21

Phone: _____________________________

22
23
24
25
26
27
28
Model Confidentiality Agreement and Order

9

1
2
3
4
5
6

B O I E S ,

S C H I L L E R

&

F L E X N E R

L L P

7
8
9
10
11
12

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]
David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]
KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

13
SUPERIOR COURT OF THE STATE OF CALIFORNIA
14
FOR THE COUNTY OF SANTA CLARA
15
UNLIMITED JURISDICTION
16
17
18
19
20
21
22
23
24
25

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50,
)
inclusive,
)
)
)
Defendants.
)

Case No. 16CV299476
INDEX OF EXHIBITS TO
DECLARATION OF SHIRA R. LIU
IN SUPPORT OF PLAINTIFF’S MOTION
FOR PROTECTIVE ORDER
GOVERNING THE PROTECTION AND
EXCHANGE OF CONFIDENTIAL
MATERIAL
Date: June 13, 2017
Time: 9:00 a.m.
Dept.: 9
Judge: Hon. Mary E. Arand
Complaint Filed: September 1, 2016
Trial Date: Not set

26
27
28
INDEX OF EXHIBITS

1
2
3
4
5
6

B O I E S ,

S C H I L L E R

&

F L E X N E R

L L P

7
8
9
10
11
12
13
14
15
16
17
18

John T. Zach (Pro Hac Vice appl. pending)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
575 Lexington Avenue, 7th Floor
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Carlos M. Sires (Pro Hac Vice to be filed)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
401 East Las Olas Blvd., Suite 1200
Fort Lauderdale, FL 33301
Telephone: [phone]
Facsimile: [phone]
Kaitlyn Murphy (SBN 293309)
BOIES, SCHILLER & FLEXNER LLP
([e-mail])
1999 Harrison St., Suite 900
Oakland, CA 94612
Telephone: [phone]
Facsimile: [phone]
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
KIRKLAND & ELLIS LLP
601 Lexington Ave
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES
INC.

19
20
21
22
23
24
25
26
27
28
2
INDEX OF EXHIBITS

1
2
3

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]

4
5
6

David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]

7

11

KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]

12

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

8
9
10

13

SUPERIOR COURT OF THE STATE OF CALIFORNIA

14

FOR THE COUNTY OF SANTA CLARA

15

UNLIMITED JURISDICTION

16
17
18
19
20
21
22
23
24

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50,
)
inclusive,
)
)
Defendants.
)

Case No. 16CV299476

PROOF OF SERVICE
Complaint Filed: September 1, 2016
Trial Date: Not set

25
26
27
28
PROOF OF SERVICE

PROOF OF SERVICE

1

I, the undersigned, declare as follows:

2
3
4

I am employed in the County of Los Angeles. At the time of service I was over 18 years
of age and not a party to this action. My business address is 401 Wilshire Blvd., Suite 850, Santa
Monica, CA 90401. On April 21, 2017 I served the following document(s):

5

1. PLAINTIFF’S MOTION FOR PROTECTIVE ORDER GOVERNING THE
PROTECTION AND EXCHANGE OF CONFIDENTIAL MATERIAL;
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT THEREOF;
DECLARATION OF SHIRA R. LIU
2. INDEX OF EXHIBITS TO DECLARATION OF SHIRA R. LIU IN SUPPORT OF
PLAINTIFF’S MOTION FOR PROTECTIVE ORDER GOVERNING THE
PROTECTION AND EXCHANGE OF CONFIDENTIAL MATERIAL
3. [PROPOSED] ORDER GRANTING PLAINTIFF’S MOTION FOR
PROTECTIVE ORDER GOVERNING THE PROTECTION AND EXCHANGE
OF CONFIDENTIAL MATERIAL

6
7
8
9
10
11
12

I personally served the documents on the persons below, as follows:

13

16

SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
Jack P. DiCanio (SBN 138782)
525 University Avenue
Palo Alto, California 94301
Telephone: [phone]
E-mail: [e-mail]

17

Attorneys for Defendants KT4 Partners LLC and Marc Abramowitz

18

The documents were served by the following means:

19



14
15

20
21
22
23
24



By personal service. I caused to be personally delivered the documents to the
persons at the addresses listed above. (1) For a party represented by an
attorney, delivery was made to the attorney or at the attorney's office by
leaving the documents in an envelope or package clearly labeled to identify the
attorney being served with a receptionist or an individual in charge of the
office. (2) For a party, delivery was made to the party or by leaving the
documents at the party's residence with some person not less than 18 years of
age between the hours of eight in the morning and six in the evening.
By United States mail. I enclosed the documents in a sealed envelope or
package addressed to the persons at the addresses listed above and:

25
26
27

 deposited the sealed envelope with the United States Postal Service,
with the postage fully prepaid.
 placed the envelope for collection and mailing, following our

28
1
PROOF OF SERVICE

1
2
3
4
5
6
7

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]
David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]

11

KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]

12

Additional counsel identified on signature page

8
9
10

13

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

14

SUPERIOR COURT OF THE STATE OF CALIFORNIA

15

FOR THE COUNTY OF SANTA CLARA

16

UNLIMITED JURISDICTION

17
18

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

19

Plaintiff,

20
21
22
23
24

v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Case No. 16CV299476
PALANTIR’S REPLY IN SUPPORT OF
MOTION FOR A PROTECTIVE ORDER
AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER
Date: June 13, 2017
Time: 9:00 a.m.
Dept.: 9
Judge: Hon. Mary E. Arand
Complaint Filed: September 1, 2016
Trial Date: Not set

25
26
27
28
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

Palantir Technologies Inc. (“Palantir”) proposed a protective order (“Palantir’s Proposed

2

Protective Order”) that is typical of those entered in trade secret cases. Defendants, in their

3

Motion for a Protective Order and Opposition to Plaintiff’s Motion for a Protective Order

4

(“Opp.”), argue against implementing certain common sense safeguards included in Palantir’s

5

Proposed Protective Order by exaggerating and misreading its plain terms and ignoring

6

established law. Those arguments should be rejected and Palantir respectfully requests the Court

7

enter Palantir’s Proposed Protective Order, which mirrors those routinely utilized by state and

8

federal courts in California and throughout the nation.

9

There is no dispute between the parties that a protective order is warranted in this trade

10

secret case because it involves highly confidential and competitively sensitive information.

11

Defendants nonetheless seek to eliminate the “Highly Confidential-Attorneys’ Eyes Only” (AEO)

12

designation from the confidentiality designations included in Palantir’s Proposed Protective

13

Order. The AEO designation proposed by Palantir is standard practice in this type of case, so

14

much so that courts include them in their own model protective orders. In opposing

15

implementation of this type of common sense protection, Defendants central argument is that

16

Abramowitz will be prejudiced because he is “an individual defendant” and not a business. (Opp.

17

at 5.) There is simply no basis for that assertion and Defendants do not identify a single case that

18

supports this argument. Rather, the applicable precedent demonstrates that individuals are treated

19

no differently than businesses, especially where, as here, the parties are competitors.

20

Defendants also argue that an AEO designation would create unnecessary collateral

21

litigation regarding document designations. This argument ignores the safeguards built into

22

Palantir’s Proposed Protective Order and the parties’ incentives and ethical obligations that

23

prevent them from over-designating documents as AEO. Palantir, and presumably Defendants as

24

well, has no interest in taking up the Court’s time—and incurring costs—in litigating

25

confidentiality designations. Palantir seeks to simply protect its most sensitive business

26

information in a manner that has been endorsed by numerous courts in this state and elsewhere. If

27

either party overreaches or acts unreasonably, they face potential consequences from the Court

28

under Palantir’s Proposed Protective Order and Code of Civil Procedure § 2023.030. That
1
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

deterrence is a reason to implement an AEO designation, not to reject it. (See GT, Inc. v.

2

Superior Court (1984) 151 Cal.App.3d 748, 756 n.4.) Indeed, AEO designations would not be

3

commonplace in trade secret cases and in model protective orders if they were unworkable.
Defendants further claim that Palantir’s proposed expert identification provision is novel

4
5

and inappropriate, but courts impose expert identification provisions in cases such as this to

6

ensure trade secrets and competitively sensitive information are not shared with a consultant or

7

expert who works for a competitor of the producing party. This narrowly-tailored safeguard is

8

easily complied with by both parties and causes Defendants no prejudice.

9

In addition to criticizing Palantir’s proposal, Defendants offer their own version of a

10

Protective Order in their papers. (“Defendants’ Proposed Protective Order”) Their proposal

11

largely mirrors Palantir’s version (minus the AEO and expert identification provisions), but

12

Defendants do present one significant additional modification, which does not advance the goal

13

of protecting the parties’ confidential and sensitive business information in a more efficient and

14

effective manner than the framework proposed by Palantir. Defendants do not make any effort to

15

justify their modifications or even explain their utility. Accordingly, they should be rejected.

16

I.

An Attorneys’ Eyes Only Provision Is Needed In This Trade Secret Case.
A. Defendants’ Argument that AEO Designations Should Be Prohibited Where One
Party is an Individual Should Be Rejected.

17
18

The gravamen of the Complaint is that Defendants wrongfully misappropriated and

19
20

improperly used, disclosed, and published Palantir’s trade secrets and other highly confidential

21

information. (Second Amended Complaint, ¶¶ 1-7, 33-61, 70-104.) In their opposition papers

22

Defendants do not dispute that this case concerns, and discovery will involve, the production of

23

confidential and highly sensitive business information.1 Nor do they offer any challenge to the

24

fact that AEO designations are a staple of model protective orders promulgated by multiple courts

25

in California and throughout the nation. (Palantir’s Motion for Protective Order (“Mot.”) at 8-9.)

26

1

27
28

The California Uniform Trade Secret Act presumes that there is good cause for protective
orders in trade secret cases, stating that courts are required to “preserve the secrecy of an alleged
trade secret by reasonable means, which may include granting protective orders in connection
with discovery proceedings.” (Civ. Code, § 3426.5.)
2
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

Palantir’s Motion clearly describes Abramowitz as a competitor to Palantir by virtue of his

2

supposed invention of the technologies described in the patent applications and, in their papers,

3

Defendants do not address, much less attempt to dispute, the fact that Abramowitz is a competitor

4

of Palantir. Under similar circumstances, particularly where a competitor presents a risk of

5

further misuse and dissemination of the protected information, courts routinely implement AEO

6

designations. (See, e.g., GT, Inc., supra, 151 Cal. App. 3d at 755) [finding good cause for an

7

AEO designation despite opponents’ argument that proponents of protective order did not

8

“produce evidence, through affidavits, declarations, or sworn testimony, showing any facts in

9

support of their request” but stated in argument that the parties “are ongoing competitors”

10

because the trial judge understood “that the information, in the hands of a competitor, could be

11

improperly used”]; DeFreitas v. Tillinghast (W.D. Wash. Jan. 17, 2013, No. 2:12-CV-00235-JLR)

12

2013 WL 209277 at *4 [finding good cause to apply an AEO designation to “information about

13

finances, strategy, competitive market research, and confidential agreements” where the receiving

14

party “works for a direct competitor” of the designating party].)2
Against this backdrop, Defendants argue that an AEO designation should not be applied

15
16

here because Abramowitz is “an individual defendant” rather than a business. (Opp. at 5.)

17

Defendants cite no authority whatsoever that makes this distinction. Rather, the relevant

18

precedent repeatedly undermines their claim and finds good cause for including AEO

19

designations where one of the parties is an individual.3 For example, in Vardon Golf Co. Inc. v.

20

2

21
22
23
24
25
26
27

Defendants appear to argue that the Court should reject Palantir’s Proposed Protective Order
because there was no declaration offered in support of it. That is incorrect for a couple of
reasons. First, Defendants themselves have not provided a declaration to support their proposed
order, so it is perplexing that they should criticize Plaintiff for not providing one. Second, both
sides agree that a protective order is required in this case – there is simply a dispute as to the
contours of that order. Defendants have not cited any cases requiring a declaration when the
parties agree that a protective order is indicated. There is also no factual dispute that this is a
trade secrets case and that those cases trigger the types of protections Palantir seeks. Nonetheless,
for the avoidance of any doubt, Palantir concurrently submits a declaration of these undisputed
facts. (Declaration of Akash Jain Decl. ¶¶ 3-5.)
3 Although

Defendants deride the number of published California court opinions Palantir cites
permitting an AEO designation, Defendants do not cite even one published California case
rejecting an AEO designation. Conversely, Palantir relied on relevant cases from California and
other jurisdictions. (See Mot. at 10, 12.)

28
3
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

BBMG Golf, Ltd. (N.D. Ill. Oct. 24, 1991, No. 91 C 0349) 1991 WL 222258, plaintiff, “a one-

2

man company” argued its sole employee who served as president, engineer, and trial counsel,

3

needed access to discovery designated highly confidential. (Id. at *2.) The court balanced the

4

imposition on plaintiff in preventing access to the information against the potential prejudice to

5

defendant in having its confidential information disclosed to a competitor and found the

6

defendant’s “need for confidentiality outweighed” the plaintiff’s interest in accessing the

7

documents. (Id.) The court prevented plaintiff’s sole employee from viewing the highly

8

confidential documents, and held that if plaintiff wanted access to the documents at all, it would

9

need to retain outside trial counsel. (Id.; see also Voice Domain Techs., LLC v. Apple, Inc. (D.

10

Mass, Oct. 8, 2014, No. 13-cv-40138-TSH), 2014 WL 5106413 at *4, *5 [imposing AEO

11

designation even where employee who wore “many hats” at plaintiff company, including founder

12

and inventor who was “synonymous” with the company, argued that if he was not permitted to

13

access the information plaintiff could not “mak[e] sound litigation decisions” because the

14

employee “was especially situated to take positions directly harmful and antagonistic to

15

[defendant]” even where the “Court ha[d] no cause to doubt [employee]’s integrity”]; Gordon v.

16

Countryside Nursing & Rehab. Ctr., LLC (N.D. Ill. July 16, 2012, No. 11 C 2433) 2012 WL

17

2905607 at *2 [imposing a highly confidential designation on certain documents where individual

18

plaintiff argued access to such information was necessary for him to “properly assist in the

19

prosecution of his claims”].)

20

In opposition to this authority, Defendants rely on Nativi v. Deutsche Bank Nat’l Trust

21

Co. (2014) 223 Cal.App.4th 261, 318, which is unavailing. In that case, tenants evicted from a

22

foreclosed property sued banks and the mortgage services involved in the foreclosure for

23

wrongful eviction and related causes of action. (Id. at 270.) The tenants did not allege trade

24

secret causes of action and were not competitors with the banks and mortgage servicer. Unlike

25

here, the parties in that case did not agree that there was good cause for a general protective order.

26

Defendants also argue an AEO designation would prevent Abramowitz from meaningfully

27

participating in his defense. That is wrong. Palantir’s proposal gives Abramowitz access to the

28
4
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

same information Palantir employees can access4—all information that is either undesignated or

2

designated “Confidential.” Abramowitz is represented by counsel capable of evaluating any

3

information designated “Highly Confidential.” Courts routinely hold that a party’s interest in

4

protecting its highly confidential competitively sensitive information outweighs a competitor’s

5

interest in reviewing such information in connection with litigation. (See Brown Bag Software v.

6

Symantec Corp. (9th Cir. 1992) 960 F.2d 1465, 1471 [upholding AEO protective order in case

7

between competitors and noting that magistrate judge “weighed not only the risk of disclosure to

8

Symantec, but also the potential impairment of Brown Bag’s case against Symantec”]; Tailored

9

Lighting, Inc. v. Osram Sylvania Prods, Inc. (W.D.N.Y. 2006) 236 F.R.D. 146, 149 [“While the

10

additional cost to TLI that will result from the proposed order is a relevant consideration, the

11

burden of that cost simply does not outweigh the substantial risk of competitive injury that attends

12

disclosure of such trade secret information to the opposing party’s president and patent

13

inventor.”]; Quotron Sys., Inc. v. Automatic Data Processing, Inc. (S.D.N.Y. 1992) 141 F.R.D.

14

37, 40 [“Quotron has not demonstrated a need for Quotron employees’ access to the documents

15

sufficient to outweigh these concerns” of “potential commercial espionage”]; ST Sales Tech

16

Holdings, LLC v. Daimler Chrysler Co. (E.D. Tex. Mar. 14, 2008, No. 6:07–CV–346) 2008 WL

17

5634214 at *7 [ordering AEO designation in protective order after considering “whether there is a

18

demonstrated need for access to the documents sufficient to outweigh the concerns such access

19

gives rise to”]; Nutratech, Inc. v. Syntech (SSPF) Int’l, Inc. (C.D. Cal. 2007) 242 F.R.D. 552, 556

20

[issuing protective order with AEO designation and finding that President’s declaration that he

21

needed access to materials to “assist, advise and direct . . . counsel with the direction and conduct

22

of discovery, and with litigation strategy” did not outweigh legitimate fear of competitive harm];

23

Mot. at 8-9 [collecting cases].)5

24
25
26
27
28

Defendants’ assertions that the AEO designation “would not similarly bar Palantir” is incorrect
and his protest that “Abramowitz, unlike Palantir, does not have in-house counsel to manage the
litigation” (Opp. at 2, 6) is irrelevant because Palantir’s Proposed Protective Order applies to all
parties by its plain terms, and would prevent Palantir employees, including in-house counsel,
from reviewing AEO materials.
5 In light of this body of law, Defendants’ refusal to stipulate to an AEO designation may be
another delay tactic, which began with Defendants’ inappropriate removal of the case to federal
4

5
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1
2
3

B. An Attorneys’ Eyes Only Provision Will Not Create Unnecessary Collateral
Litigation Regarding Document Designations.
Defendants’ argument that an AEO designation would create needless collateral discovery

4

practice and that Defendants will be excluded from depositions without cause is a straw man.

5

(Opp. at 6.) Palantir’s Proposed Protective Order does not permit any party to designate material

6

as Highly Confidential without a good faith belief that the material satisfies the definition of

7

Highly Confidential included in the Order. (Declaration of Shira Liu filed in support of Mot.

8

(“Liu Decl.”), Ex. 1, ¶ 2.) To assume the parties will improperly apply the designation—without a

9

good faith belief it is appropriate and in violation of the clear terms of Palantir’s Proposed

10

Protective Order—is irrational, contrary to the parties’ obligations as officers of the Court, and

11

runs up against the Court’s authority to sanction parties for misuse of the discovery process under

12

Code of Civil Procedure § 2023.030. Defendants offer no support for their position. AEO

13

designations are commonplace, but they would not be if they are unworkable or if parties

14

routinely shirked their ethical obligations.

15

In a footnote, Defendants also complain the AEO designations could be used to exclude

16

Abramowitz from a deposition and create a 21-day window in which he could not read deposition

17

transcripts. (Opp. at 6, n.2.) Palantir’s Proposed Protective Order does not allow for such

18

pretextual invocations of the AEO designation and presumes the parties will act in good faith in

19

invoking the provision allowing counsel to request that individuals such as Abramowitz or

20

Palantir employees temporarily leave a deposition when AEO material is discussed. The

21

provision would not prevent the parties from attending any other portions of depositions,

22

including those portions concerning “Confidential” information. Palantir believes that allowing

23

21 days for designations provides for orderly designations during time periods when many

24
25
26
27
28

court. (Declaration of Shira Liu in support of Reply filed concurrently herewith (“Liu Reply
Decl.”) ¶ 3.) In addition, Defendants recently caused a further delay of discovery by rejecting
Palantir’s offer to produce its trade secret disclosure statement, subject to Defendants agreement
that Palantir may designate the disclosure as AEO pursuant to (and with the protections of)
Palantir’s Proposed Protective Order for the time being and would then re-designate it as
appropriate when the Court enters a protective order. (Id. ¶ 4.)
6
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1

depositions are scheduled together closely, but does not object to shortening this time period.

2

Palantir previously offered to shorten this time period in response to Defendants’ concern during

3

the meet and confer process. (Declaration of Shira Liu filed in support of Palantir’s Reply in

4

support of Motion for a Protective Order (“Liu Reply Decl.”), ¶ 5.)

5

II.

6
7

Expert Identification Provisions Are Appropriate In Cases Concerning Trade
Secrets.
Defendants argue, without citation to a single case, that the proposed expert identification

8

provisions – which are designed to protect both parties – should not apply in this case.

9

Defendants’ unsupported argument is wrong. Courts that have addressed the issue find such

10

safeguards appropriate in cases involving trade secrets or competitively sensitive information.

11

(See Wreal LLC v. Amazon.com, Inc. (S.D. Fla., Nov. 14, 2014, No. 14-21385-CIV) 2014 WL

12

12160650 at *1 [requiring expert identification]; A/R Roofing, L.L.C. v. CertainTeed Corp. (D.

13

Kan. Dec. 5, 2005, No. 05-1158-WEB) 2005 WL 6794228 at *3 [same]; Biovail Corp. Intern. v.

14

Hoechst Aktiengesellschaft (D.N.J., Nov. 12, 1999, No. CIV.A. 98-1434(MTB)) 1999 WL

15

33454801 at *7 [same].)

16

In Wreal, the party opposing an expert identification provision made the same arguments

17

Defendants make here – the expert identification provision would allow the opposing party to

18

“simply (for strategic reasons) object to a disclosed consulting expert and block [the other party]

19

from consulting with that expert until the Court rules otherwise.” (Wreal LLC, supra, 2014 WL

20

12160650, at *2.) The Court found that because the case concerned trade secret or other

21

confidential research, the expert identification provisions were appropriate despite the objection

22

and noted that “other courts have recognized the concerns advanced by [the party seeking the

23

expert identification provision] and have authorized protective orders designed to address them.”

24

(Id. at *3 [citing In re Neubauer (D. Md. 1994) 173 B.R. 505, 508].) The court also found it

25

“significant that the United States Patent and Trademark Office’s model protective order for

26

intellectual property cases . . . includes the very type of provision [the party] requests here. In

27

addition, several district courts, including the District of Columbia and the Southern District of

28

California, have similar models.” (Id.)
7
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

The expert disclosure provision applies equally to all parties and does not serve to give

1
2

either party an advantage—“[t]he desirability, if not necessity, of obtaining the identity of an

3

opponents’ consultants rests primarily on the need to ensure the confidentiality of the information

4

and not on an attempt to gain an unfair advantage.” (Biovail Corp. Intern., supra, 1999 WL

5

33454801, at *7.) The plain language of Palantir’s Proposed Protective Order shows Defendants’

6

claim that Palantir could “veto” any proposed expert Defendants seek to use after having spent

7

considerable time and money on the expert is incorrect. (Opp. at 8.) Palantir’s Proposed

8

Protective Order provides “[w]ithin five days of receipt of the disclosure of the outside expert or

9

expert consultant, the designating party or parties may object by electronic mail to the outside

10

expert for good cause” and may later object “to continued access by that Person [only] for good

11

cause.” (Liu Decl., Ex. 1, ¶¶ 9, 12 [emphases added].) The fact that Defendants are only able to

12

argue against Palantir’s Proposed Protective Order by exaggerating and misreading the terms is

13

evidence that they do not have valid criticisms of it.
Defendants’ only remaining argument is that Palantir agreed to a protective order without

14
15

this provision in another litigation pending in Delaware. (Opp. at 8.) First, whether or not

16

Palantir required such provisions in an unrelated litigation is irrelevant because protective orders

17

must be tailored to the facts of the case. (See e.g., United States v. Salgado (E.D. Wash. Mar. 24,

18

2017, No. 1:16-cv-03186-SMJ) 2017 WL 1365234 at * 2 [finding the protective order must

19

consider the interests “in a specific case to decide whether issuing a protective order is

20

appropriate and necessary.”].) Second, as Defendants well know, the Delaware case does not

21

involve trade secrets.

22

III.

23
24

Defendants’ Proposed Protective Order Does Not Even Attempt to Justify Its
Additional Provisions, Which Should Be Disregarded.
Defendants offer their own Proposed Protective Order in connection with their motion.

25

That draft order largely mirrors Palantir’s proposal, with the obvious exception that it omits

26

Palantir’s proposed AEO designation and expert identification provisions. Defendants’ proposal

27

also includes additional provisions to which the parties have not agreed and excludes other

28

provisions that are in Palantir’s Proposed Protective Order without any argument in support of
8
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22

David Boies (Pro Hac Vice appl. pending)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
333 Main Street
Armonk, NY 10504
Telephone: [phone]
Facsimile: [phone]
John T. Zach (Pro Hac Vice appl. pending)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
575 Lexington Avenue, 7th Floor
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Carlos M. Sires (Pro Hac Vice to be filed)
([e-mail])
BOIES, SCHILLER & FLEXNER LLP
401 East Las Olas Blvd., Suite 1200
Fort Lauderdale, FL 33301
Telephone: [phone]
Facsimile: [phone]
Kaitlyn Murphy (SBN 293309)
BOIES, SCHILLER & FLEXNER LLP
([e-mail])
1999 Harrison St., Suite 900
Oakland, CA 94612
Telephone: [phone]
Facsimile: [phone]
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
KIRKLAND & ELLIS LLP
601 Lexington Ave
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES
INC.

23
24
25
26
27
28
10
PALANTIR’S REPLY ISO MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER

1
2
3
4
5
6
7
SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

FOR THE COUNTY OF SANTA CLARA

10

UNLIMITED JURISDICTION

11
12

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

13

Plaintiff,

&

F L E X N E R

L L P

8

B O I E S ,

S C H I L L E R

14
15
16
17
18

v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Case No. 16CV299476
DECLARATION OF AKASH JAIN IN
SUPPORT OF PLAINTIFF PALANTIR
TECHNOLOGIES INC.’S REPLY IN
SUPPORT OF MOTION FOR A
PROTECTIVE ORDER AND
OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER
Date: June 13, 2017
Time: 9:00 a.m.
Dept.: 9
Judge: Hon. Mary E. Arand

19
20

Complaint Filed: September 1, 2016
Trial Date: Not set

21
22
23
24
25
26
27
28
AKASH JAIN DECL ISO MOTION FOR PROTECTIVE ORDER

CASE NO. 16CV299476

1
2
3
4
5
6
7
8
9
10
11
12

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]
David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]
KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]
Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

13
SUPERIOR COURT OF THE STATE OF CALIFORNIA

14

FOR THE COUNTY OF SANTA CLARA

15

UNLIMITED JURISDICTION

16
17

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

18
19
20
21
22
23
24

Plaintiff,
v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Case No. 16CV299476
DECLARATION OF SHIRA R. LIU IN
SUPPORT OF PALANTIR’S REPLY TO
MOTION FOR A PROTECTIVE ORDER
AND OPPOSITION TO DEFENDANTS’
MOTION FOR A PROTECTIVE ORDER
Date: June 13, 2017
Time: 9:00 a.m.
Dept.: 9
Judge: Hon. Mary E. Arand
Complaint Filed: September 1, 2016
Trial Date: Not set

25
26
27
28
DECLARATION OF SHIRA LIU ISO REPLY ISO MOTION FOR ENTRY OF PROTECTIVE ORDER

DECLARATION OF SHIRA R. LIU

1
2

I, Shira R. Liu, declare as follows:
1.

3

I am an attorney duly admitted to practice law in the State of California and am an

4

associate with the law firm of Boies Schiller Flexner LLP, counsel to Plaintiff Palantir

5

Technologies Inc. (“Plaintiff” or “Palantir”). I make this declaration in support of the Plaintiff’s

6

Reply to Motion for a Protective Order and Opposition to Defendants’ Motion for a Protective

7

Order. I have personal knowledge of the facts set forth herein, or am informed and believe them

8

to be true. If called as a witness, I could and would competently testify to the matters stated

9

herein.
2.

10
11

Attached as Exhibit A is a comparison of the additions to and deletions in

Defendants’ proposed Protective Order as compared to Palantir’s proposed Protective Order.
3.

12

On October 11, 2016, Defendants removed this case to federal court in the

13

Northern District of California. The district court judge granted Palantir’s motion to remand

14

almost five months later on March 9, 2017.
4.

15

On May 9, 2017, counsel for Palantir communicated with counsel for Defendants

16

offering to produce its trade secret disclosure statement, subject to Defendants’ agreement that

17

Palantir may designate the disclosure as “attorneys eyes only” pursuant to (and with the

18

protections of) Palantir’s proposed protective order for the time being and would then re-

19

designate it as appropriate when the court enters a protective order based on the pending motions.

20

Defendants rejected this offer. A true and correct copy of both communications is attached hereto

21

as Exhibit B.
5.

22

Counsel for Palantir and Defendants met and conferred regarding the terms of the

23

Protective Order. During those communications, counsel for Palantir offered to shorten the

24

proposed 21 day-period during which the parties are allowed to designate deposition transcripts.
///

25
26
27

///
///

28
1
DECLARATION OF SHIRA LIU ISO REPLY ISO MOTION FOR ENTRY OF PROTECTIVE ORDER

EXHIBIT A

1
2
3
4
5
6
7
8

SUPERIOR COURT OF THE STATE OF CALIFORNIA

9

FOR THE COUNTY OF SANTA CLARA

10

UNLIMITED JURISDICTION

11
12

15
16
17
18

[PROPOSED] PROTECTIVE ORDER
GOVERNING THE PROTECTION AND
EXCHANGE OF CONFIDENTIAL
MATERIAL

Plaintiffs,

13
14

Case No. 16CV299476

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

v.
MARC L. ABRAMOWITZ, in his individual
capacity and as trustee of the MARC
ABRAMOWITZ CHARITABLE TRUST NO.
2, KT4 PARTNERS LLC, a Delaware limited
liability company, and DOES 1 through 50,
inclusive,
Defendants.

Judge Mary E. Arand
Trial Date: Not Set
Dept.: 9

19
20
21

[PROPOSED] STIPULATED PROTECTIVE ORDER GOVERNING THE
PROTECTION AND EXCHANGE OF CONFIDENTIAL MATERIAL

22

IT IS HEREBY ORDERED that this Protective Order shall govern the handling of any

23

information produced or disclosed by any party named in the above captioned litigation or any

24
25

non-party (the "Producing Party") in connection with the above captioned litigation (hereinafter
"Litigation" or "Action"), including documents or electronic files exchanged, things viewed,

26
27

depositions, deposition exhibits, interrogatory responses, responses to requests for admission, and

28
1
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

pretrial and trial testimony, and all copies, extracts, summaries, compilations, designations and

2

portions of any of the foregoing (such information shall hereinafter be referred to as "Discovery

3

Material"). This Order is entered in the exercise of this Court's inherent power to manage

4

litigation for the express purpose of facilitating discovery and the exchange of documents. This

5

Order is made without prejudice to the right of any party to apply to the Court for modification of

6
this Order on good cause shown, or to challenge the application of this order to any particular
7
8
9

Discovery Material produced during the course of discoverydiscover in this case.
1. "Confidential" Information. Any Producing Party may designate any Discovery Material as

10

"Confidential" under the terms of this Protective Order if such Producing Party in good faith

11

believes that such Discovery Material contains "Confidential Information." The term

12

“Confidential Information” shall be interpreted to mean confidential, proprietary, and/or

13

commercially sensitive information or information entitled to confidential treatment under

14
applicable law.
15
16

2. "Highly Confidential-Attorneys' Eyes Only Software" Information. Any Producing Party may

17

designate any Discovery Material as "Highly-Confidential-Attorneys' Eyes Onlyinformation

18

"Highly Confidential Software" if such Producing Party in good faith believes that such

19

Discovery Material contains Highly Confidential Information. "Highly Confidential" means

20
21

those subsets of Confidential Information that a party believes would create a substantial risk of
serious financial or other injury if disclosed to another Party or non-Party, and that such risk

22
23
24

cannot be avoided by less restrictive means. The following information, if non-public, shall be
presumed to merit the "Highly Confidential-Attorneys' Eyes Only" designation: trade secrets,

25

pricing information, financial data, sales information, sales or marketing forecasts or plans,

26

business plans or strategy, sales or marketing plans or strategy, product and business development

27
28
2
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

information, engineering documents, testing documents, employee information, personal financial

2

information, offerings, sales or purchases of stock or securities, and other non-public information

3

of similar competitive and business sensitivity.3. "Highly Confidential Software" Information.

4

Any Producing Party may designate information "Highly Confidential Software" if such

5

Producing Party in good faith believes that such Discovery Material contains Highly Confidential

6
Software Information. "Highly Confidential Software" InformationSoftware Information.
7
8
9

"Highly Confidential Software" TnformationInformation means extremely sensitive highly
confidential information or items representing computer software or code and associated

10

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

11

or otherwise describe in detail the algorithms or structure of software or hardware designs,

12

disclosure of which to another Party or Non-Party would create a substantial risk of serious harm

13

that could not be avoided by less restrictive means.

14
4.3. Use of "Confidential" or "Highly Confidential-Attorneys' Eyes Only" or "Highly Confidential
15
16

Software" Discovery Material. "Confidential," "Highly Confidential-Attorneys' Eyes Only," or

17

"Highly Confidential Software" Discovery Material, and information derived therefrom, shall be

18

used solely for purposes of this Action and shall not be used for any other purpose, including,

19

without limitation, any business, proprietary, commercial or governmental purpose.

20
21

"Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"
Discovery Material shall not be given, shown, made available to or communicated in any way to

22
23
24

any person other than as permitted by this Protective Order.
5. 4. Manner of Designating Materials. The designation of Discovery Material as "Confidential,"

25

"Highly Confidential-Attorneys' Eyes Only," or "Highly Confidential Software" for purposes of

26

this Protective Order shall be made in the following manner by the Producing Party.

27
28
3
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

a. In the case of documents, including any and all exhibits, briefs, memoranda,

2

interrogatory responses, responses to request for admission, or other materials

3

(apart from transcripts or recordings of oral testimony from any deposition, pretrial

4

or trial proceedings, which isare subject to Paragraph 54(e) below), by affixing the

5

legend "Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly

6
Confidential Software" to all pages of any document containing "Confidential,"
7
8
9

"Highly Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"
Discovery Materials, respectively. The legend shall not obscure or interfere with

10

the legibility of the designated information.

11

b. In the case of documents produced electronically as a "TIF" or similar image

12

format, by affixing the legend "Confidential," "Highly Confidential-Attorneys'

13

Eyes Only," or "Highly Confidential Software" to all pages of the imaged

14
document containing any "Confidential," "Highly Confidential-Attorneys' Eyes
15
16

Only," or "Highly Confidential Software" Discovery Materials, respectively.

17

c. In the case of documents produced electronically in their native format, by

18

appending the legend "Confidential," "Highly Confidential-Attorneys' Eyes Only,"

19

or "Highly Confidential Software" to the Bates number associated with the

20
21

document. It is the responsibility of any person producing a hard copy or image of
a native file produced in this fashion to affix the Bates number and the legend

22
23
24
25

"Confidential" or "Highly Confidential" to the hard copy document or image.
d. In the case of video tapes, audio tapes, and electronic media such as computer
disks or compact discs (CD), which contain or include "Confidential," "Highly

26
27
28
4
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Confidential-Attorneys' Eyes Only," or "Highly Confidential Software" Discovery

2

Material, by affixing the required legend on the package thereof.

3

e. For deposition testimony, in one of the following manners:

4
5

i. At any deposition, counsel for the person providing testimony may
designate their entire transcript "Confidential," "Highly Confidential-

6
Attorneys' Eyes Only," or "Highly Confidential Software" at any time
7
8
9

during the proceeding, including at the outset. In addition, upon any
inquiry with regard to the content of Discovery Material marked

10

"Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly

11

Confidential Software" or when counsel for a person (party or nonparty)

12

deems that the answer to a question may result in the disclosure of

13

"Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly

14
Confidential Software" Information of his or her client within the meaning
15
16

of this Protective Order, counsel for the person whose information isif

17

involved, at his or her option, may state on the record before or during the

18

deposition that such testimony shall be treated as "Confidential," "Highly

19

Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"

20
21

Discovery Material, respectively, and, in lieu of taking other steps available
in such situation, may direct that the question and answer be transcribed

22
23
24

separately from the remainder of the deposition or proceeding and be filed
in a sealed envelope marked in the manner set forth in Paragraph 107

25

hereof. When such a direction has been given, the disclosure of the

26

testimony shall be limited in the manner specified within this Protective

27
28
5
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Order, and the information contained herein shall not be used for any

2

purpose other than for purposes of this suit. Counsel for the person whose

3

"Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly

4

Confidential Software" Information is involved may. also request that all

5

persons other than the reporter,; the Court and its personnel, counsel, and

6
authorized individuals leave the deposition during the confidential portion
7
8

of the deposition. The failure of such other persons to comply with a

9

request to leave the deposition, unless the Court orders the testimony to go

10

forward, shall constitute substantial justification for counsel to advise the

11

witness that he or she need not answer the question. If it is later

12

determined that a party was improperly excluded from part or all of a

13

deposition, in addition to any other remedy such party might seek, such

14
party shall have the right to re-depose the witness on the subject matter(s)
15
16

that was/were designated as "Highly Confidential Software."

17

ii.

18

the deposition, counsel of record may designate the testimony or portions

19

thereof as "Confidential," "Highly Confidential-Attorneys' Eyes Only," or

20
21

Within 21 days from the receipt of a final transcript or recording of

"Highly Confidential Software" Discovery Material and give written notice
to opposing counsel. The parties shall treat all depositions and rough

22
23
24

drafts, draft or other transcripts of depositions as "Confidential," "Highly
Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"

25

Discovery Material until 21 days after receiving a copy of a rough or draft

26

transcript thereof. After 21 days, only those portions of the transcript

27
28
6
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

designated in writing (or on the record at the deposition or proceeding) as

2

"Confidential," "Highly Confidential-Attorneys' Eyes Only," or "Highly

3

Confidential Software" shall be deemed "Confidential," "Highly

4

Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"

5

Discovery Material, respectively. Counsel for the party designating a

6
transcript, recording, or portions thereof "Confidential," "Highly
7
8
9

Confidential-Attorneys' Eyes Only," or "Highly Confidential Software"
shall be responsible for notifying the court reporter and opposing counsel

10

in writing of those portions of the transcript that are "Confidential,"

11

"Highly Confidential-Attorneys' Eyes Only," or "Highly Confidential

12

Software." The parties may modify this procedure for any other particular

13

deposition, through agreement on the record at such deposition or

14
proceeding or otherwise by written stipulation, without further order of the
15
16

Court.

17

f. In the case of documents and things being made available for inspection, at the

18

request of counsel for the Producing Party, all documents and things produced for

19

inspection during discovery shall initially be considered to contain, at a minimum,

20
21

wholly Confidential information, and shall be produced for inspection only to
persons representing the Receiving Party who fall within the category described in

22
23
24

Paragraph 6(a) of this Protective Order. At the initial (or any subsequent)
inspection of the original documents and things, if requested by the Producing

25

Party, the Receiving Party shall not make copies of the documents produced.

26

Copies of documents and copies or photographs of things requested by the

27
28
7
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Receiving Party shall be made, Bates-numbered and delivered to the Receiving

2

Party; such process shall be performed as promptly as reasonably practicable and

3

shall not await the production or inspection of other documents and things. After

4

the Receiving Party has designated documents or things for copying, and before

5

copies are transmitted to the Receiving Party, counsel for the Producing Party shall

6
designate and mark the documents and things, as appropriate, as "Confidential,"
7
8

"Highly Confidential-Attorneys' Eyes Only," or "Highly Confidential Software" in

9

accordance with Paragraphs 1-3 of this Order. Except as provided below in this

10

Paragraph, documents and things not so designated shall be considered thereafter

11

outside the provisions of this Protective Order. Failure to so designate and mark as

12

provided above in this Paragraph shall not preclude the Producing Party from

13

thereafter in good faith making such designation and requesting the Receiving

14
Party to so mark and treat such documents and things so designated. After such
15
16

designations, such documents and things shall be fully subject to this Protective

17

Order. The Receiving Party, however, shall incur no liability for disclosures made

18

prior to notice of such designations.

19
20
21

6. 5. Who May Access "Confidential" Information. Discovery Materials designated
"Confidential" may be disclosed, summarized, described, or otherwise communicated or made
available in whole or in part only to the following:

22
23
24

a. Outside counsel, together with secretaries, paralegals, document clerks, and
other support staff reporting directly to them and who are necessary to assist

25

counsel with the preparation or trial of this Action;

26

b.

For each party:

27
28
8
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

i. Any counsel who is a member of the party's respective in-house legal

1
2

staff, along with secretaries, paralegals and similar support staff assisting

3

in-house counsel with the management of files relating to this Action.

4

Each party hereto represents that such in-house counsel has been (or will

5

be prior to receiving Confidential Discovery Material) informed of the

6
terms of this Protective Order and has agreed to be bound by its terms and
7
conditions; and

8

ii. Those officers, directors, partners, members, or employees of all non-

9
10

designating Parties, such number which shall be limited to five individuals

11

(whose identities shall be disclosed to all designating parties prior to

12

disclosure), that counsel for such Parties deems reasonably necessary to aid

13

counsel in the prosecution and defense of this Action; provided, however,

14
that prior to the Disclosure of Confidential materials to any such officer,
15
director, partner, member, or employee, counsel for the Party making the

16
17

disclosure shall deliver a copy of this Protective Order to such person, shall

18

explain that such person is bound to follow the terms of such Order, and

19

shall secure the signature of such person on a statement in the form

20

attached hereto as Exhibit A; and witnesses and potential witnesses, subject

21

to and conditioned upon the witness's acceptance of and compliance with

22
the terms and conditions of this Protective Order; and

23
24
25

c. Consultants Subject to Paragraph 9, consultants or experts specifically retained
for this

26
27
28
9
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Action, together with their assistants; provided, however, that prior to the

2

Disclosure of Confidential materials to any such consultant or expert or any

3

assistant to any such consultant or expert, counsel for the Party making the

4

disclosure shall deliver a copy of this Protective Order to such person, shall

5

explain that such person is bound to follow the terms of such Order, and shall

6
secure the signature of such person on a statement in the form attached hereto as
7
8
9

Exhibit A; and
d.

The Court and its staff, the jury, any discovery referee or Special Master

10

appointed by the Court to assist in resolving discovery disputes, reporters retained

11

in connection with depositions, to the extent necessary to transcribe the testimony

12

and identify exhibits marked in the course of the testimony subject to Paragraph

13

54(e) of this Protective Order; and

14
e. Commercial copy services, translators, data entry and computer support
15
16

organizations, and graphics, translation, design and/or trial consulting services,

17

hired by and assisting outside counsel for a party, provided that outside counsel

18

shall secure the signature of a duly authorized representative of each such service

19

in the form attached hereto as Exhibit A and maintain the original of Exhibit A;

20
21

and
f. Court reporters in this Proceeding (whether at depositions, hearings, or any other

22
23
24

proceeding); and
g. Mock jury participants, provided, however, that prior to the Disclosure of

25

Confidential Materials to any such mock jury participant, counsel for the Party

26

making the disclosure shall deliver a copy of this Protective Order to such person,

27
28
10
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

shall explain that such person is bound to follow the terms of such Order, shall

2

secure the signature of such person on a statement in the form attached hereto as

3

Exhibit A, and shall maintain the original of Exhibit A; and

4

h. Any mediator who is assigned or retained to hear this matter, and his or her

5

staff; provided, however, that counsel for the Party making any Disclosure shall

6
deliver a copy of this Protective Order to such person, shall explain that such
7
8
9

person is bound to follow the terms of such Order, shall secure the signature of
such person on a statement in the form attached hereto as Exhibit A, shall maintain

10

the original of Exhibit A; and

11

i. Such other persons as hereafter may be designated by written agreement in this

12

Action or by order of the Court.

13

7. 6. Who May Access "Highly Confidential-Attorneys' Eyes Only" Information. Discovery

14
Materials Software" Information. To the extent production of software or source code becomes
15
16
17

necessary in this case, a Producing Party may designate source code as "Highly Confidential
Software" if it comprises or includes confidential, proprietary-or trade secret source code.

18

a. Protected Material designated as "Highly Confidential-Attorneys' Eyes Only

19

Software" may be disclosed, summarized, described, or otherwise communicated

20
21

or made available in whole or in part on the same terms as set forth only to the
individuals identified in Paragraphs 65(a), (c), (d), (e), (f), (g), (h), and (i) of this

22
23
24

Protective Order. Such Discovery Material may not be disclosed to persons
representing the Receiving Party who fall within the categories described in

25

Paragraph 6(b) of this Protective Order. Discovery Materials designated "Highly

26

Confidential-Attorneys' Eyes Only" may be disclosed, summarized, described, or

27
28
11
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

otherwise communicated or made available in whole or in part on the same terms

1
2

as set forth in Paragraphs 6(c) to consultants or experts specifically retained for

3

this Action, together with their assistants, provided that the notification procedures

4

described in Paragraph 9 have been complied with.

5

8. Access to "Highly Confidential Software" Information. Discovery Materials designated

6
"Highly Confidential Software" shall be subject to all of the protections afforded to "Highly
7
8
9

Confidential-Attorneys' Eyes Only" information, and may be disclosed only to the individuals to
whom "Highly Confidential-Attorneys' Eyes Only" information may be disclosed, and only on the

10

terms under which "Highly Confidential-Attorneys' Eyes Only" information may be disclosed to

11

those persons.

12
13

ab. Any software or source code to be disclosed in discovery shall be made
available for inspection, in a format allowing it to be reasonably reviewed and

14
searched, during normal business hours or at other mutually agreeable times, at an
15
16

office of the Producing Party's counsel or another mutually agreed upon location.

17

The software or source code shall be made available for inspection on a secured

18

computer in a secured room without Internet access or network access to other

19

computers, and the Receiving Party shall not copy, remove, or otherwise transfer

20
21

any portion of the software or source code onto any recordable media or
recordable device. The Producing Party may visually monitor the activities of the

22
23
24
25

Receiving Party's representatives during any software or source code review, but
only to ensure that there is no unauthorized recording, copying, or transmission of
the software or source code.

26
27
28
12
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

bc. The Receiving Party may request paper copies of limited portions of software

2

or source code that are reasonably necessary for the preparation of court filings,

3

pleadings, expert reports, or other papers, or for deposition or trial, but shall not

4

request paper copies for the purposes of reviewing the software or source code

5

other than electronically as set forth in Paragraph 8paragraph (ab) in the first

6
instance. The Producing Party shall provide all such software or source code in
7
8
9

paper form including bates numbers and the label "Highly Confidential Software."
The Producing Party may challenge the amount of software or source code

10

requested in hard copy. If the Producing Party makes such a challenge, it shall not

11

be required to produce the disputed hard copies until the Court resolves the

12

dispute.

13

c. The Receiving Party shall maintain a log indicating the names of any individual

14
who has inspected any portion of the software or source code in electronic or paper
15
16

form, the dates and times of inspection, and the names of any individuals to whom

17

paper copies of portions of software or source code were provided.

18

d. The Receiving Party shall maintain all paper copies of any printed portions of

19

the software or source code in a secured, locked area. The Receiving Party shall

20
21

not create any electronic or other images of the paper copies and shall not convert
any of the information contained in the paper copies into any electronic format.

22
23
24

The Receiving Party shall only make additional paper copies if such additional
copies are (1) necessary to prepare court filings, pleadings, or other papers

25

(including a testifying expert's expert report), provided that the Receiving Party

26

provides notice to the Producing Party before including "Highly Confidential

27
28
13
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

Software" information in a court filing, pleading, or expert report, (2) necessary

2

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

3

paper copies used during a deposition shall be retrieved by the Producing Party at

4

the end of each day and must not be given to or left with a court reporter or any

5

other individual.

6
9. Experts and Consultants. Prior to disclosing any "Highly Confidential Materials-Attorneys'
7
8
9

Eyes Only" or "Highly Confidential Software" Discovery Materials to any person under
Paragraph 6(c), the Party seeking to disclose such information shall provide the designating party

10

or parties written notice that includes (i) the name of the outside expert or expert consultant, (ii)

11

an up-to-date curriculum vitae of the outside expert or expert consultant; (iii) the present

12

employer and title of the outside expert or expert consultant; (iv) an identification of all of the

13

outside expert's or expert consultant's past and current employment and consulting relationships,

14
including direct relationships and relationships through entities owned or controlled by the
15
16

outside expert or expert consultant, including but not limited to an identification of any individual

17

or entity with or for whom the person is employed; and (v) a list of the cases in which the outside

18

expert or expert consultant has testified at deposition or trial within the last five years.

19
20
21

Within five days of receipt of the disclosure of the outside expert or expert consultant, the
designating party or parties may object by electronic mail to the outside expert for good cause. In
the absence of an objection at the end of the five-day period, the outside expert or expert

22
23
24

consultant shall be deemed approved under this Protective Order. There shall be no disclosure of
"Highly Confidential Materials-Attorneys' Eyes Only" or "Highly Confidential Software,"

25

Discovery Materials to the outside expert or expert consultant prior to expiration of this five-day

26

period. If the designating party objects to disclosure to the outside expert or expert consultant

27
28
14
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

within such five-day period, the Parties shall meet and confer via telephone or in person within

2

five days following the objection and attempt in good faith to resolve the dispute on an informal

3

basis. If the dispute is not resolved, the Party objecting to the disclosure will have five days from

4

the date of the meet and confer to seek relief from the Court. If relief is not sought from the

5

Court within that time, the objection shall be deemed withdrawn. If relief is sought, designated

6
materials shall not be disclosed to the person in question until the Court resolves the objection.
7
8
9

For purposes of this section, "good cause" shall include an objectively reasonable concern that
the outside expert or expert consultant will, intentionally or inadvertently, use or disclose "Highly

10

Confidential Materials-Attorneys' Eyes Only" or "Highly Confidential Software" materials in a

11

way or ways that are inconsistent with the provisions contained in this Protective Order.

12

a. An initial failure to object to a Person under this section shall not preclude a Party from later

13

objecting to continued access by that Person for good cause. If an objection is made, the Parties

14
shall meet and confer via telephone or in person within five days following the objection and
15
16

attempt in good faith to resolve the dispute on an informal basis. If the dispute is not resolved,

17

the Party objecting to the disclosure will have five days from the date of the meet and confer to

18

seek relief from the Court. The designated person may continue to have access to information

19

that was provided to that person prior to the date of the objection but no additional "Highly

20
21

Confidential Materials-Attorneys' Eyes Only" or "Highly Confidential Software" materials shall
be disclosed to that person until the Court resolves the matter or the objecting party withdraws its

22
23
24
25

objection. Notwithstanding the foregoing, if the objecting party fails to move for a protective
order within five days after the meet and confer, the objection shall be deemed withdrawn.
10. 7. Filings with the Court:

26
27
28
15
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

a. Discovery Motions. Any party that files or otherwise submits to the Court any

2

"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly

3

Confidential Software" material that is subject to this Protective Order, or includes

4

any portion of such material in any pleading, motion, exhibit or other paper filed

5

or submitted to the Court, in connection with a Discovery Motion, must file all

6
such documents in sealed envelopes or other appropriate sealed containers. On the
7
8
9

outside of the envelopes or other containers, a copy of the first page of the
documents shall be attached. If Confidential Material is included in the first page

10

of the attached to the outside of the envelopes or other containers, it may be

11

deleted from the outside copy. The words "CONFIDENTIAL," "HIGHLY

12

CONFIDENTIAL-ATTORNEYS' EYES ONLY," or "HIGHLY

13

CONFIDENTIAL SOFTWARE" shall be stamped on the envelopes or other

14
containers and a statement substantially similar to the following shall also be
15
16

clearly printed on the envelopes or other containers:

17

"This envelope [or other container] is sealed pursuant to Order of the Court,

18

contains Confidential Information, and is not to be opened or the contents

19

revealed, except by Order of the Court or agreement by the parties. The contents

20
21

of this envelope [or other container] are being submitted in connection with a
Discovery Motion or for a purpose other than the adjudication of a material

22
23
24

controversy or use at trial and, therefore, are not subject to the California Sealed
Records Rules, California Rule of Court 2.550, et seq."

25

The foregoing statement will provide a sufficient basis for filing the materials

26

under seal in the manner described above, with no need for further briefing or

27
28
16
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

motion practice. Any party objecting to maintaining any such materials under seal

2

shall present its arguments pursuant to duly noticed motion with the Court.

3

b.

4

motion, along with responsive briefing and supporting materials, directed at

5

For purposes of this Protective Order, a "Discovery Motion" is a

resolving a dispute concerning a party's rights or access to discovery in the

6
prosecution and/or defense of the claims in this Action, and includes, but is not
7
8

limited to, any motion or proceeding relating to a party's right to access

9

information in the custody or control of another person or entity, to take any

10

person's or entity's deposition, to compel any person's or entity's admission or

11

denial of an alleged fact or contention, to compel the testimony of any person or

12

entity, to compel the disclosure of any document or communication, or to use any

13

other tool or method of discovery allowed. A "Discovery Motion" excludes any

14
motion that seeks adjudication or resolution of any claim or defense or any portion
15
16

thereof, or any factual or legal issue; or seeks any substantive procedural change.

17

11.8. All Other Filings. With respect to all filings not categorized as "Discovery Motions" as

18

defineddescribed in Paragraph 10(bparagraph 7(a) above, any party that files or intends to file

19

"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential

20
21

Software" Discovery Material with the Court, regardless of whether that party intends to request
the Court to have material sealed, must comply with the requirements of California Rule of Court

22
23
24

2.551(b)(3) and: (i1) lodge the unredacted material subject to this Protective Order and any
pleadings, memorandums, declarations, and other documents that disclose the contents of such

25

material, in the manner stated in California Rule of Court 2.551(d); (ii) file copies of the

26

documents under (i) that are redacted so that they do not disclose the contents of the material

27
28
17
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

subject to this Protective Order; and (iii) give written notice to the Producing Party that the

2

records and other documents lodged under (i1) will be placed in the public court file unless that

3

party files a timely motion or application to seal the records pursuant to California Rule of Court

4

2.551(b)(1)-(2).

5

If the Producing Party was served with written notice as provided above and fails to file a

6
motion or an application to seal the records within 10 days or to obtain a Court order extending
7
8
9

the time to file such a motion or an application, the Court clerk will promptly remove all the
documents lodged conditionally under seal pursuant to (i) above (California Rule of Court

10

2.551(b)(3)(A)(i),(d)) from the envelope or container where they were located and place them in

11

the public file. If the Producing Party does file a motion or an application to seal within 10 days

12

or such later time as the Court has ordered, the records and other documents are to remain

13

"lodged" conditionally under seal until the Court rules on the motion or application and thereafter

14
are to be filed as ordered by the Court. The parties agree that prior to trial in this Action, they
15
16

will work together in good faith to propose, for the Court's consideration and approval,

17

mechanism(s) providing an opportunity for the reasonable advance notice and orderly resolution

18

of any disputed over the confidentiality of materials in advance of their use at trial.

19

9. Notwithstanding Paragraph 5(C) above, "Confidential" or "Highly Confidential Software"

20
21

Discovery Material may be provided to persons listed therein only to the extent necessary for
such expert or consultant to prepare a written opinion, to prepare to testify, or to assist counsel in

22
23
24

this Litigation, provided that such expert or consultant (i) is not currently an employee of, or
advising or discussing employment with, or a consultant to, any Party or any potential competitor

25

or transaction counterparty of any Party, as far as the expert or consultant can reasonably

26

determine, and (ii) is using said Discovery Material solely in connection with this Litigation, and

27
28
18
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

further provided that such expert or consultant agrees to be bound by the terms of this Stipulation

2

by signing an undertaking in the form attached as Exhibit A hereto. Counsel for the Party

3

showing, providing, or disclosing "Confidential" or "Highly Confidential Software" Discovery

4

Material to any person required to execute an undertaking pursuant to this Paragraph shall be

5

responsible for obtaining such signed undertaking and retaining the original, executed copy

6
thereof. Under no circumstances shall an expert or consultant who is a competitor or an employee
7
8
9

of a competitor of a Party, or who is providing services to any of the foregoing, be provided
access to "Confidential" or "Highly Confidential Software" Discovery Material absent further

10

order of the Court or consent of the Producing Party. "Competitors" are persons or entities

11

endeavoring to engage in the same or similar lines of business, provide the same or similar

12

services, sell the same or similar products, and/ or operate in the same markets, as well as any

13

persons who are actually engaged in any of these activities.

14
12. 10. No Admission or Prejudice. Producing or receiving "Confidential," "Highly Confidential
15
16

Materials-Attorneys' Eyes Only," or "Highly

17

Confidential Software" Discovery Material under, or otherwise acting in accordance with the

18

terms of this Protective Order, or failing to object thereto, shall not:

19
20
21

a. Operate as an admission by any party that any particular information does or
does not comprise or reflect trade secrets, proprietary or commercially sensitive
information or any other type of confidential information;

22
23
24

b. Operate as an admission by any party that the restrictions and procedures set
forth herein constitute adequate protection for any particular information deemed

25

by and party to be "Confidential," "Highly Confidential Materials-Attorneys' Eyes

26

Only," or "Highly Confidential Software" information;

27
28
19
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

c. Prejudice or waive in any way the rights of the parties to object to the

2

production of documents they consider not subject to discovery for any reason;

3

d. Prejudice or waive in any way the rights of any party to object to the

4

authenticity or admissibility into evidence of any documents, testimony or other

5

evidence subject to this Protective Order;

6
e. Prejudice or waive in any way the rights of a party of seek determination by the
7
8
9

Court whether any Discovery Material should or should not be subject to the terms
of this Protective Order;

10

f. Prejudice or waive in any way the rights of a party to petition the Court for a

11

further protective order relating to any purportedly confidential information;

12

g. Prejudice or waive in any way any claim, cross-claim or defense in this Action;

13

h. Prevent the parties to this Protective Order from agreeing in writing or on the

14
record during a deposition or hearing in this Action to alter or waive the provisions
15
16

or protections provided for herein with respect to any particular Discovery

17

Material;

18

i. Operate as a consent to any discovery; or

19

j. Prejudice or waive in any way the rights of any party to contestconsent, under

20
21

Paragraph 1816 of this Order, to the other party's designation of any material as
"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly

22
23
24

Confidential Software."
13. 11. Materials Which Are "Exempt". This Protective Order has no effect upon, and shall not

25

apply to, a Producing Party's use or disclosure of its own "Confidential," "Highly Confidential

26

Materials-Attorneys' Eyes Only," or "Highly Confidential Software" Discovery Material for any

27
28
20
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

purpose. Nothing contained herein shall impose any restrictions on the use or disclosure by a

2

Receiving Party of documents, materials or information designated as "Confidential" or "Highly

3

Confidential Materials-Attorneys' Eyes Only" obtained lawfully by such party independently of

4

any proceeding in this Action, or which:

5

a. Was already known or obtained by such Receiving Party by lawful means prior

6
to acquisition from, or disclosure by, another party in this Action;
7
8
9

b. Is or becomes publically known through no fault or act of the Receiving Party;
or

10

c. Is rightfully obtained by the Receiving Party from a third party which has

11

authority to provide such "Confidential" or "Highly Confidential Materials-

12

Attorneys' Eyes Only" information to the Receiving Party without restriction as to

13

disclosure by the Receiving Party.

14
14.12. Joinder of Parties. In the event additional parties join or are joined in this Action, each
15
16

additional partythey shall not have access to "Confidential," "Highly Confidential Materials-

17

Attorneys' Eyes Only," or "Highly Confidential Software" Discovery Material until the newly-

18

joined party or its counsel has executed and, at the request of any party, filed with the Court its

19

agreement to be fully bound by this Protective Order or an alternative protective order which is

20
21

satisfactory to all parties and the Court.
15.13. Applicability to Third Parties. The terms of this Protective Order shall apply to any third

22
23
24

party that produces Discovery Material that is designated by such third party as "Confidential,"
"Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential Software."

25

Nothing in this Paragraph permits a party to designate as "Confidential," "Highly Confidential

26

Materials-Attorneys' Eyes Only," or "Highly Confidential Software" any Discovery Materials

27
28
21
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

produced in this litigation by a third party which that third party did not itself designate as

2

"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential

3

Software," unless the third party has "Confidential," "Highly Confidential Materials-Attorneys'

4

Eyes Only," or "Highly Confidential Software" information of a party and it is demonstrated that

5

the third party is legally obligated to maintain the materials as confidential. If the parties dispute

6
whether a third party is legally obligated to maintain the materials as confidential, the materials in
7
8
9

question shall be deemed "Confidential," "Highly Confidential Materials-Attorneys' Eyes Only,"
or "Highly Confidential Software," as designated by the party seeking confidentiality protections,

10

until the Court resolves the dispute.

11

16.14. Governance of Action; Modification. The provisions of this Protective Order shall govern

12

discovery and all proceedings in this Action and any appeals therefrom. Each of the parties

13

hereto is entitled to seek modification of this Protective Order by application to the Court on

14
notice to the other parties thereto for good cause. '
15
16

17.15. Termination. The provisions of this Protective Order shall, absent written permission from

17

the Producing Party orof further order of the Court, continue to be binding throughout and after

18

the conclusion of this Action, including, without limitation, any appeals therefrom. Within 60

19

days after receiving notice of the entry of an order, judgment or decree finally disposing of this

20
21

Action, including any appeals therefrom, all persons having received "Confidential," "Highly
Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential Software" Discovery

22
23
24

Material shall, at the option of the Receiving Party, either destroy or return to counsel for the
Producing Party such information and all copies thereof (including summaries and excerpts) that

25

are .maintained in hard copy form or in any readily accessible data locations and all active media.

26

Nothing in this Protective Order will require the Receiving Party to search inactive media

27
28
22
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

(including, but not limited to, backup tapes and/or disaster-recovery tapes or media) to destroy

2

from such sources Discovery Material covered by this Order. Counsel shall make reasonable

3

efforts to ensure that any consultants it has retained abide by this provision. Counsel for the

4

Receiving Party shall provide a certification in writing to counsel for the Producing Party that all

5

"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential

6
Software" Discovery Materials in its possession has been destroyed or returned pursuant to this
7
8
9

Paragraph, or otherwise certify to the opposing party that reasonable efforts have been taken to
destroy or return the records. Outside counsel of record from the Receiving Party shall be entitled

10

to retain papers submitted by any other party to the Court, deposition and trial transcripts and

11

exhibits, and attorney work product (including filings, transcripts, and attorney work product that

12

contains "Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly

13

Confidential Software" Discovery Material), provided that such counsel, and employees of such

14
counsel, shall not disclose any such Discovery Material contained in such filings, transcripts, or
15
16

attorney work product to any person or entity except pursuant to a written agreement with the

17

Producing Party. All materials returned to the parties or their counsel by the Court likewise shall

18

be disposed of in accordance with this Paragraph.

19

18. 16. Disputing a Designation. If the Receiving Party disagrees with a "Confidential," "Highly

20
21

Confidential Materials-Attorneys' Eyes Only," or " or
"Highly Confidential Software" designation, it may notify the Producing Party in writing of such

22
23
24

disagreement, and both parties will thereupon confer in good faith as to the proper status of such
Discovery Material. If the parties are unable to reach agreement within 10 business days, the

25

parties shall file a Joint Statement with the Court setting forth their respective positions

26

concerning the disputed designation or designations. Upon receipt of the parties' Joint Statement,

27
28
23
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

the Court will set briefing schedules and/or schedule further proceedings relating to the disputed

2

designations as it deems appropriate. Pending resolution of the disputed designations by the

3

Court, the Receiving Party shall treat such Discovery Material as required under this Protective

4

Order. No party shall be obligated to challenge the propriety of a confidential designation, and a

5

failure to do so during or after this litigation shall not preclude a subsequent attack on the

6
propriety of such designation. The provisions of this Protective Order are not intended to shift the
7
8
9

burden of establishing confidentiality.
19. 17. Other Court Proceedings / Subpoena or Legal Process / Disclosure to Government

10

Agency. By entering this Order and limiting the disclosure of information in this case, the Court

11

does not intend to preclude another court from finding that information may be relevant and

12

subject to disclosure in another case. If any Receiving Party is (a) subpoenaed in another action,

13

(b) served with a legally binding demand in another action to which it is a party, (c) served with

14
any legal process by one not a party to this Action, or (d) legally obligated to disclose materials,
15
16

and if such subpoena or obligation would require the production of Discovery Material which was

17

produced or designated as "Confidential," "Highly Confidential Materials-Attorneys' Eyes Only,"

18

or "Highly Confidential Software" by someone other than the Receiving Party, the Receiving

19

Party, upon determining that such Discovery Materials are called for, shall (i) give actual written

20
21

notice, at the earliest practicable time, by hand or electronic mail transmission, of such subpoena,
demand or legal process, to those who produced or designated the material "Confidential,"

22
23
24

"Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential Software," and
(ii) set forth the existence of this Protective Order and request the highest form of confidentiality

25

treatment allowed for the Discovery Material produced. In the event the party that produced or

26

designated the material "Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or

27
28
24
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

"Highly Confidential Software" seeks, within ten (10) days of the actual notice discussed above,

2

to intervene in the action or proceeding in which the materials are sought for the purpose of

3

objecting to the production and, the Receiving Party shall, to the extent permissible, avoid

4

producing the materials until such objections are resolved. Nothing herein shall be construed as

5

requiring the Receiving Party of anyone else covered by this Protective Order to challenge or

6
appeal any order issued under the circumstances of this Paragraph requiring production of
7
8
9

"Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or "Highly Confidential
Software" Discovery Material covered by this Protective Order, or to subject itself to any

10

penalties for noncompliance with any legal process or order, or to seek any relief from this Court.

11

20.18. Rendering Legal Advice. Nothing herein shall bar or otherwise restrict an attorney who is

12

a qualified recipient of "Confidential," "Highly Confidential Materials-Attorneys' Eyes Only," or

13

"Highly Confidential Software" Discovery Material under the terms of Paragraphs 1-32 of this

14
Protective Order from rendering advice to his or her client with respect to this Action and, in the
15
16

course thereof, from generally relying upon his or her examination of such Discovery Material.

17

In rendering such advice or in otherwise communicating with the client, the attorney shall not

18

disclose the specific content of any such Discovery Material of another person or party, whether

19

specifically, generally, inferentially, in summary or otherwise, where such disclosure would not

20
21

otherwise be permitted under the terms of this Protective Order.
21.19. Inadvertent Production. The inadvertent production of any privileged or otherwise

22
23
24

protected exempted information, as well as the inadvertent production of information without an
appropriate designation of confidentiality, shall not be deemed a waiver of impairment of any

25

claim of privilege or protection, including, but not limited to, the attorney-client privilege, the

26

protection afforded to work-product materials, or the subject matter thereof or the confidential

27
28
25
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

nature of any such information, as to the inadvertently produced document and as to any related

2

material. The Producing Party must notify the Receiving Party promptly, in writing, upon

3

discovery that a document has been inadvertently produced. Upon receiving written notice from

4

the Producing Party that confidential information has been inadvertently produced with the

5

incorrect designation, the Receiving Party shall immediately treat the materials as if they bear the

6
corrected designation, and may dispute the corrected designation pursuant to the provisions of
7
8
9

this Protective Order. Upon receiving written notice from the Producing Party that privileged
and/or protected material has been inadvertently produced, all such information, and all copies

10

thereof, shall be returned to the Producing Party within five business days or receipt of such

11

notice and the Receiving Party shall not use such information for any purpose until further Order

12

of the Court. All copies of the documents in electronic format must also be returned or destroyed,

13

pursuant to the terms set forth in Paragraph 17. 15. If the Receiving Party contests that the

14
information is privileged or protected, the Receiving Party shall give the Producing Party written
15
16

notice of the reason for said disagreement and shall be entitled to retain one copy of the disputed

17

document for use in resolving the dispute. The Receiving party shall, within 20 business days

18

from the initial notice by the Producing Party, move the Court for an Order compelling the

19

production of the material. If no such motion if filed, upon expiration of the 20-day period all

20
21

copies of the disputed document shall be returned or destroyed in accordance with this Paragraph
and Paragraph 17. 15. Any analyses, memoranda or protected information shall immediately be

22
23
24
25

placed in sealed envelopes, and must be destroyed unless (a) the Producing Party agrees in
writing that the inadvertently-produced is not privileged or protected, or (b) the Court rules that
the inadvertently-produced information is not privileged or protected.

26
27
28
26
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1

22.20. Adequate Location of Materials. All Discovery Materials containing "Confidential" or

2

"Highly Confidential-Attorneys' Eyes Only" Information shall be maintained at a location and

3

under circumstances to ensure that access is limited to those persons entitled to have access under

4

the Protective Order. All Discovery Materials containing "Highly Confidential Software" shall be

5

maintained at a location and under circumstances set forth in Paragraph 8. 6.d.

6
23.21. Right to Seek Further Relief. Nothing in this Protective Order shall be deemed to preclude
7
8

any party from seeking and obtaining, on an appropriate showing, such additional protection with

9

respect to the confidentiality of documents or other Discovery Material as that party may consider

10

appropriate; nor shall any party be precluded from claiming that any matter designated hereunder

11

is not entitled to protection or is entitled to a more limited form of protection than designated.

12
13

IT IS SO ORDERED.

14
15

Dated: ____________, 2017

16

Judge Mary E. Arand

17
18
19
20
21
22
23
24
25
26
27
28
27
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1
2
3

EXHIBIT A
CERTIFICATION RE CONFIDENTIAL DISCOVERY MATERIALS
I hereby acknowledge that I, ______________________________ [NAME],

4

______________________________ [POSITION AND EMPLOYER], am about to receive

5

Confidential Materials and/or Highly

6

1.

7

Confidential Materials supplied in connection with the Action, Case No. 16CV299476. I

certify that I understand that the Confidential Materials and/or Highly Confidential Materials are

8
provided to me subject to the terms and restrictions of the Protective Order filed in this Action. I
9
10

have been given a copy of the Protective Order; I have read it, and I agree to be bound by its

11

terms.

12

2.

13

defined in the Protective Order, including any notes or other records that may be made regarding

14

any such materials, shall not be disclosed to anyone except as expressly permitted by the

15

I understand that the Confidential Materials and Highly Confidential Materials, as

Protective Order. I will not copy or use, except solely for the purposes of this Action, any

16
Confidential Materials or Highly Confidential Materials obtained pursuant to this Protective
17
18

Order, except as provided therein or otherwise ordered by the Court in the Action.

19

3.

20

Confidential Materials provided to me in the Action in a secure manner, and that all copies of

21

such materials are to remain in my personal custody until termination of my participation in this

22
23

I further understand that I am to retain all copies of all Confidential Material and Highly

Proceeding, whereupon the copies of such materials will be returned to counsel who provided me
with such materials.

24
25
26

4.

I declare under penalty of perjury, under the laws of the State of California, that

the foregoing is true and correct.

27
28
28
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

1
2
3

I declare under penalty of perjury, under the laws of the State of California, that the foregoing
is true and correct. Executed this ___ day of ___, 20___, at _______

4
5
6

Date

Signature

7
8
9
10

Printed Name

11
12
13

City and State where sworn and signed

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
[PROPOSED] PROTECTIVE ORDER

CASE NO. 16CV299476

EXHIBIT B

From:
Sent:
To:
Cc:
Subject:

Pitt, Jonathan <[e-mail]>
Tuesday, May 09, 2017 1:38 PM
John Zach; Simon, Barry
David Zifkin; Shira Liu
RE: Palantir/Abramowitz

John,
Thanks for your email. I tried your office after receiving your email, but did not hear back.
While we agree with the goal of expediting things, we cannot agree to accept documents or information from you—
particularly the trade-secret disclosure, which is at the heart of our defense of this case—with conditions that would
deprive our client, who has been sued as an individual, with the ability to confer with us regarding material issues in the
action, and to participate in his own defense. That is why we disagree with the imposition of an “attorneys’ eyes only”
protective order, and why we cannot agree to abide by an “attorneys’ eyes only” protective order while waiting for the
court to resolve that issue.
To be clear, we would gladly agree to accept the disclosure on terms that would require us to treat it as “Confidential”
under either of our proposed protective orders, which would require Mr. Abramowitz (who, as we have explained, has
not been, and is not, engaged in any active trade or business related to the matters at issue in this litigation) to use the
information solely for purposes of this litigation. We think such treatment would be appropriate, particularly given that
the disclosure by definition constitutes information that you claim Mr. Abramowitz already has.
We are glad to defer your deadline on moving to compel until after the court rules on our respective motions for
protective order. We would agree to hold that deadline in abeyance until 30 days after that ruling. I don’t think that
needs to be submitted to the Court as a stipulation, but if you disagree, we’d be glad to agree to one.
Best,
Jonathan

Jonathan B. Pitt
Williams & Connolly LLP
725 Twelfth Street, N.W., Washington, DC 20005
(P) 202-434-5341 | (F) 202-434-5029
[e-mail] | www.wc.com/jpitt
From: John Zach [mailto:[e-mail]]
Sent: Tuesday, May 09, 2017 2:09 PM
To: Pitt, Jonathan <[e-mail]>; Simon, Barry <[e-mail]>
Cc: David Zifkin <[e-mail]>; Shira Liu <[e-mail]>
Subject: Palantir/Abramowitz
Hi Jonathan:
Following up on our call last week about Palantir’s trade secret disclosure and motions relating to the pending discovery
requests. To reiterate our offer, we are prepared to serve you with Palantir’s trade secret disclosure prior to the Court
ruling on the parties’ respective motions for a protective order, subject to your agreement that we may designate the
disclosure as “attorneys eyes only” pursuant to (and with the protections of) Palantir’s proposed protective order for the
1

time being. Then, once the Court rules on the motions, we will re-designate it as appropriate under the Court-approved
protective order. The purpose of this proposal is to expedite the disclosure and avoid any unnecessary delay in
advancing the case.
In addition, please advise whether you agree to an extension the time to file any motion to compel with respect to the
pending discovery requests until after the Court’s hearing on the protective order motions.
Please call if you want to discuss further – I’m generally around today and tomorrow afternoon. Look forward to hearing
from you.
Best, John

John T. Zach
Boies, Schiller & Flexner LLP
575 Lexington Avenue
212.303.3648 (desk)
646.642.7183 (cell)
[e-mail]

The information contained in this electronic message is confidential information intended only for the use of the named recipient(s) and may contain information
that, among other protections, is the subject of attorney-client privilege, attorney work product or exempt from disclosure under applicable law. If the reader of this
electronic message is not the named recipient, or the employee or agent responsible to deliver it to the named recipient, you are hereby notified that any
dissemination, distribution, copying or other use of this communication is strictly prohibited and no privilege is waived. If you have received this communication in
error, please immediately notify the sender by replying to this electronic message and then deleting this electronic message from your computer. [v.1]

This message and any attachments are intended only for the addressee and may contain information that is privileged and
confidential. If you have received this message in error, please do not read, use, copy, distribute, or disclose the contents of the
message and any attachments. Instead, please delete the message and any attachments and notify the sender immediately. Thank
you.

2

1
2
3

BOIES, SCHILLER & FLEXNER LLP
David Boies (Pro Hac Vice appl. pending)
([e-mail])
333 Main Street
Armonk, NY 10504
Tel: [phone]; Fax: [phone]

4
5
6

David Zifkin (SBN 232845) ([e-mail])
Shira Liu (SBN 274158) ([e-mail])
401 Wilshire Boulevard, Suite 850
Santa Monica, CA 90401
Tel: [phone]; Fax: [phone]

7

11

KIRKLAND & ELLIS LLP
Jay P. Lefkowitz (Pro Hac Vice appl. pending)
([e-mail])
Nathaniel J. Kritzer (Pro Hac Vice appl. pending)
([e-mail])
601 Lexington Ave
New York, NY 10022
Tel: [phone]; Fax: [phone]

12

Attorneys for Plaintiff PALANTIR TECHNOLOGIES INC.

8
9
10

13

SUPERIOR COURT OF THE STATE OF CALIFORNIA

14

FOR THE COUNTY OF SANTA CLARA

15

UNLIMITED JURISDICTION

16
17
18
19
20
21
22
23
24

PALANTIR TECHNOLOGIES INC., a
Delaware corporation,

)
)
)
Plaintiff,
)
)
v.
)
)
MARC L. ABRAMOWITZ, in his individual )
capacity and as trustee of the MARC
)
ABRAMOWITZ CHARITABLE TRUST NO. )
2, KT4 PARTNERS LLC, a Delaware limited )
liability company, and DOES 1 through 50,
)
inclusive,
)
)
Defendants.
)

Case No. 16CV299476

PROOF OF SERVICE
Complaint Filed: September 1, 2016
Trial Date: Not set

25
26
27
28
PROOF OF SERVICE

PROOF OF SERVICE

1

I, the undersigned, declare as follows:

2
3
4

I am employed in the County of Los Angeles. At the time of service I was over 18 years
of age and not a party to this action. My business address is 401 Wilshire Blvd., Suite 850, Santa
Monica, CA 90401. On May 15, 2017 I served the following document(s):

5

1. PALANTIR’S REPLY IN SUPPORT OF MOTION FOR A PROTECTIVE ORDER
AND OPPOSITION TO DEFENDANTS’ MOTION FOR A PROTECTIVE
ORDER
2. DECLARATION OF SHIRA R. LIU IN SUPPORT OF PALANTIR’S REPLY TO
MOTION FOR A PROTECTIVE ORDER AND OPPOSITION TO
DEFENDANTS’ MOTION FOR A PROTECTIVE ORDER
3. DECLARATION OF AKASH JAIN IN SUPPORT OF PALANTIR
TECHNOLOGIES INC.’S REPLY IN SUPPORT OF MOTION FOR A
PROTECTIVE ORDER AND OPPOSITION TO DEFENDANTS’ MOTION FOR
A PROTECTIVE ORDER

6
7
8
9
10
11
12

I personally served the documents on the person/s below, as follows:

13

SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
Jack P. DiCanio
Ian Chen
525 University Avenue
Palo Alto, California 94301
Telephone: [phone]
[e-mail]
[e-mail]

14
15
16
17
18

23

WILLIAMS & CONNOLLY LLP
Barry S. Simon
Jonathan B. Pitt
Stephen L. Wohlgemuth
725 Twelfth Street, N.W.
Washington, D.C. 20005
[e-mail]
[e-mail]
[e-mail]

24

The documents were served by the following means:

19
20
21
22

25
26
27



By personal service. I caused to be personally delivered the documents to the
persons at the addresses listed above. (1) For a party represented by an
attorney, delivery was made to the attorney or at the attorney's office by
leaving the documents in an envelope or package clearly labeled to identify the
attorney being served with a receptionist or an individual in charge of the

28
1
PROOF OF SERVICE