ViaSat, Inc. v. Acacia Communications, Inc. et al

Filing 49

ORDER Denying 42 Joint MOTION for Discovery Dispute - Determination. Signed by Magistrate Judge Jan M. Adler on 3/2/2017. (jjg)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10
11

VIASAT, INC., etc.,

Case No.: 16cv463 BEN (JMA)
Plaintiff,

12
13
14

ORDER REGARDING JOINT
MOTION FOR DETERMINATION OF
DISCOVERY DISPUTE [ECF No. 42]

v.
ACACIA COMMUNICATIONS, INC.,
etc., et al.,

15

Defendants.

16
17
18

Presently before the Court is a Joint Motion for Determination of Discovery

19
20
21
22
23
24
25
26
27
28

Dispute in which Plaintiff/Counter-defendant ViaSat, Inc. (“ViaSat”) seeks to
disclose certain technical documents produced by Defendant/Counter-claimant
Acacia Communications, Inc. (“Acacia”) to its consulting experts, ViaSat
employees Sameep Dave and Fan Mo. [ECF No. 42.] As discussed further
below, ViaSat’s request is DENIED.
A.

Background
Under the terms of the Stipulated Protective Order (“Protective Order”)

entered by the Court on October 21, 2016, “[E]ach party may designate one
employee to serve as a consulting Expert, and that designated employee Expert
1
16cv463 BEN (JMA)

1

shall be bound by the same provisions governing Experts as set forth elsewhere

2

in this Order.” (Protective Order, § 2.6 [ECF No. 29].) The parties subsequently

3

stipulated to increase the number of designated employee experts to three.

4

(Joint Motion at 2, 10 n.1.) The Protective Order provides for two levels of

5

designated protected material: “Confidential” and “Highly Confidential−Attorneys’

6

Eyes Only” material. (Protective Order, § 2.13.) A designation that material is

7

“Confidential” requires that the disclosure of such information “would reasonably

8

risk harming the Designating Party’s competitive position, or that of any third

9

party that is not a party to this litigation.” (Id., § 2.2.) Material designated as

10

“Highly Confidential−Attorneys’ Eyes Only” (“AEO material”) is “extremely

11

sensitive” confidential information, the disclosure of which to another party or

12

non-party “would create a substantial risk of serious harm that could not be

13

avoided by less restrictive means.” (Id., § 2.7.)

14

Information designated as “Confidential” may be disclosed to experts of the

15

receiving party if (1) “disclosure is reasonably necessary for this litigation” and

16

(2) the expert has signed an “Acknowledgment and Agreement to Be Bound.”

17

(Id., § 7.2(c).) A receiving party may disclose AEO material to its experts only if

18

(1) and (2) above are satisfied, and if (3) the procedures set forth in section

19

7.4(a) have been followed. (Id., § 7.3(b).) Section 7.4(a) requires the receiving

20

party to make a written request to the designating party identifying the general

21

categories of AEO material sought to be disclosed to the expert, and to identify

22

the expert by providing the expert’s name, address, resume, employer, previous

23

clients, and other litigation in which the expert has offered testimony. (Id., §

24

7.4(a).) A party that makes a request to disclose AEO material and provides the

25

information specified in section 7.4(a) may disclose the subject material to the

26

identified designated expert unless, within sixteen (16) days of delivering the

27

request, the party receives a written objection from the designating party. (Id., §

28

7.4(b).)
2
16cv463 BEN (JMA)

1

On December 23, 2016, ViaSat made a written request to disclose Acacia’s

2

“Trade Secret Information” to employees Sameep Dave and Fan Mo, ViaSat’s

3

Chief Technology Officer and Technical Director, respectively, designated by

4

ViaSat as its employee consultant experts under Section 2.6 of the Protective

5

Order. (Joint Motion at 2, 11.) Acacia did not object to this disclosure “because

6

those individuals had already seen that information, inasmuch as it was in effect

7

a list of the trade secrets Acacia accused ViaSat of having already

8

misappropriated.” (Id. at 11.) On January 3, 2017, ViaSat made a written

9

request to disclose to Mr. Dave and Ms. Mo certain Acacia documents bearing

10

Production Nos. ACI000001-146. (Id.) The parties, after meeting and conferring,

11

reached an agreement regarding Production Nos. ACI000001-02, but Acacia

12

objected to the disclosure of Production Nos. ACI000003-146, Acacia’s

13

“Technical Specifications,” to Dave and Mo due to the “sensitive nature of this

14

material, the parties’ direct competitor status, and the cross allegations of trade

15

secret misappropriation.” (Id. at 2, 11.) Acacia offered to provide redacted

16

copies of the documents to be shown to Dave and Mo, but ViaSat was not

17

agreeable to Acacia’s proposed redactions. (Id. at 2-3, 7-9.) Under the terms of

18

the Protective Order, ViaSat’s counsel of record, in-house counsel, and outside

19

expert would have access to the documents in their entirety. (Id. at 2, 15.)

20

The Protective Order provides that any motion seeking to make a

21

disclosure to an identified designated expert over the other party’s objection must

22

“set forth in detail the reasons why the disclosure to the Designated Expert is

23

reasonably necessary, assess the risk of harm that the disclosure would entail,

24

and suggest any additional means that could be used to reduce that risk.”

25

(Protective Order, § 7.4(c).) “The Party opposing disclosure to the Expert shall

26

bear the burden of proving that the risk of harm that the disclosure would entail

27

(under the safeguards proposed) outweighs the Receiving Party’s need to

28

disclose the Protected Material to its Expert.” (Id.)
3
16cv463 BEN (JMA)

1
2

B.

Discussion
ViaSat argues that the parties agreed to each designate consulting

3

employee experts because those intimately familiar with the technology and

4

products in question are best suited to assess the “very technically complicated

5

evidence” in this litigation, and thus its designated employee experts must be

6

permitted to view the AEO documents in dispute. ViaSat further contends Acacia

7

cannot prohibit Dave and Mo from seeing the documents without identifying

8

reasons that specifically relate to these employees. (Joint Motion at 3.) Under

9

the Protective Order, Confidential or AEO materials may not be provided to any

10

expert unless (1) disclosure is reasonably necessary and (2) the expert has

11

signed the specified Acknowledgment. (Protective Order, §§ 7.2(c), 7.3(b).) The

12

disclosure of AEO materials requires additional steps: the procedures of Section

13

7.4(a), requiring information identifying and relating to the expert, must be

14

followed, and the designating party must not object to disclosure to the expert

15

within sixteen (16) days of the request. (Id., §§ 7.3(b), 7.4(b).) Here, Acacia

16

objected to the disclosure of the AEO materials to Dave and Mo, as it is

17

permitted to do under the Protective Order. Contrary to ViaSat’s assertions,

18

there is nothing in the Protective Order requiring objections to be based upon the

19

expert identification factors set forth in section 7.4(a), nor requiring them to be

20

employee-specific. In other words, Acacia’s objection to the AEO materials being

21

disclosed to Dave and Mo was permissible under the Protective Order even

22

though its objections would arguably apply to any employee of ViaSat. As

23

Acacia observes, “While the parties contemplated in [Protective Order] § 2.6 that

24

designated employees might see some AEO material, § 7.4 mandates that

25

requests for disclosure of AEO materials to designated employees be made and

26

assessed on a case-by-case basis, depending on the category of information

27

sought to be disclosed.” (Joint Motion at 12 (citing Protective Order, § 7.4).)

28

ViaSat further contends that Acacia should be estopped from objecting to
4
16cv463 BEN (JMA)

1

the disclosure of the disputed AEO materials to Dave and Mo, as doing so

2

conflicts with Acacia’s previous conduct. Specifically, ViaSat claims that Acacia

3

disclosed ViaSat’s AEO material to its own consultant employee experts without

4

ViaSat’s knowledge. (Joint Motion at 2, 5-6.) The exact circumstances of this

5

prior occurrence are not clear to the Court, but assuming arguendo ViaSat’s

6

rendition of events is accurate, this neither bears upon the present situation, nor

7

has ViaSat brought this matter before the Court. Moreover, that the parties

8

previously agreed to allow the disclosure of certain materials to each other’s

9

consulting experts does not constitute a waiver of either party’s right to object to

10

the disclosure of AEO material. The Court therefore finds that Acacia’s prior

11

conduct does not preclude it from objecting to the disclosure of its AEO

12

materials.

13

Having determined that Acacia could properly object to disclosure of its

14

AEO materials to Dave and Mo under the terms of the Protective Order, the

15

Court must consider whether Acacia’s objections should be sustained. The

16

terms of the Protective Order require the party seeking to disclose AEO material

17

to “set forth in detail the reasons why disclosure to the Designated Expert is

18

reasonably necessary.” (Protective Order, § 7.4(c)). ViaSat contends that

19

provision of the disputed AEO documents to its outside counsel, in-house

20

counsel, and retained expert, but not to its consultant employee experts, “misses

21

the point” because its counsel and retained expert lack the in-depth knowledge of

22

ViaSat’s “SDFEC1 Core” technology that Dave and Mo possess. (Joint Motion at

23

4-5.) ViaSat, however, has not provided an affidavit or any other support for this

24

assertion. Again, ViaSat has not provided an affidavit supporting its asserted

25

need to disclose the subject AEO materials to its designated employee experts.

26

Even if it had, the party opposing disclosure of AEO material can counter the

27
28

1

“SDFEC” stands for soft decision forward error correction.
5
16cv463 BEN (JMA)

1

other party’s stated need by demonstrating “the risk of harm that the disclosure

2

would entail . . . outweighs the Receiving Party’s needs to disclose the Protected

3

Material to its Expert.” (Protective Order, § 7.4(c); see also Fed. R. Civ. P.

4

26(b)(1) (setting forth factors to be considered in determining scope of discovery

5

permitted); Fed. R. Civ. P. 26(c)(1) (issuance of protective orders by court).)

6

Here, Acacia objects to the disclosure of its Technical Specifications to Dave and

7

Mo because “they are the very in-house engineers charged with developing

8

ViaSat’s competing products.” (Joint Motion at 14.) Acacia contends the risk

9

that Dave and Mo could, whether consciously or otherwise, implement changes

10

in ViaSat’s competing products suggested to them by Acacia’s trade secrets

11

substantially outweighs any arguable need for disclosure. (Id. at 15.) Acacia

12

supports its assertion with a declaration from Gary Martin, System Architect at

13

Acacia. According to Martin, Acacia’s Technical Specifications include

14

proprietary, confidential, and undisclosed trade secrets of designs independently

15

developed by Acacia and not known to ViaSat. (Martin Decl., ¶¶ 8-10.) ViaSat

16

provides no evidence to refute Martin’s assertions. “The disclosure of

17

confidential information on an ‘attorneys’ eyes only’ basis is a routine feature of

18

civil litigation involving trade secrets.” Paycom Payroll, LLC v. Richison, 758

19

F.3d 1198, 1202 (10th Cir. 2014) (citation omitted). “The purpose of this form of

20

limited disclosure is to prevent a party from viewing the sensitive information

21

while nevertheless allowing the party’s lawyers to litigate on the basis of that

22

information.” Id. at 1202-03.

23

C.

Conclusion

24

For the reasons set forth above, ViaSat’s request to disclose Acacia’s

25

Technical Specifications, Production Nos. ACI000003-146, to its consulting

26

//

27

//

28

//
6
16cv463 BEN (JMA)

1
2
3

experts, ViaSat employees Sameep Dave and Fan Mo, is DENIED.
IT IS SO ORDERED.
Dated: March 2, 2017

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
7
16cv463 BEN (JMA)