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)

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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)

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