Nokia Corporation v. Apple Inc.

Filing 321

NOTICE of Issuance of Subpoenas upon Carl I. Brundidge, Angus Gill, Walter G. Hanchuk, and Donald E. Stout by Apple Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(Moore, David)

AO 88A (Rev. 06/09) Subpoena to Testify at a Deposition in a Civil Action (Page 2)

Civil Action No. 09-cv-791-GMS
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
This subpoena for (name of individual and title, if any)
was received by me on (date)

.

u I served the subpoena by delivering a copy to the named individual as follows:
on (date)

; or

u I returned the subpoena unexecuted because:
.
Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
tendered to the witness fees for one day’s attendance, and the mileage allowed by law, in the amount of
$
My fees are $

.
for travel and $

for services, for a total of $

I declare under penalty of perjury that this information is true.

Date:
Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:

0.00

.

AO 88A (Rev. 06/09) Subpoena to Testify at a Deposition in a Civil Action (Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07)
(c) Protecting a Person Subject to a Subpoena.
(1) Avoiding Undue Burden or Expense; Sanctions. A party or
attorney responsible for issuing and serving a subpoena must take
reasonable steps to avoid imposing undue burden or expense on a
person subject to the subpoena. The issuing court must enforce this
duty and impose an appropriate sanction — which may include lost
earnings and reasonable attorney’s fees — on a party or attorney
who fails to comply.
(2) Command to Produce Materials or Permit Inspection.
(A) Appearance Not Required. A person commanded to produce
documents, electronically stored information, or tangible things, or
to permit the inspection of premises, need not appear in person at the
place of production or inspection unless also commanded to appear
for a deposition, hearing, or trial.
(B) Objections. A person commanded to produce documents or
tangible things or to permit inspection may serve on the party or
attorney designated in the subpoena a written objection to
inspecting, copying, testing or sampling any or all of the materials or
to inspecting the premises — or to producing electronically stored
information in the form or forms requested. The objection must be
served before the earlier of the time specified for compliance or 14
days after the subpoena is served. If an objection is made, the
following rules apply:
(i) At any time, on notice to the commanded person, the serving
party may move the issuing court for an order compelling production
or inspection.
(ii) These acts may be required only as directed in the order, and
the order must protect a person who is neither a party nor a party’s
officer from significant expense resulting from compliance.
(3) Quashing or Modifying a Subpoena.
(A) When Required. On timely motion, the issuing court must
quash or modify a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person who is neither a party nor a party’s officer
to travel more than 100 miles from where that person resides, is
employed, or regularly transacts business in person — except that,
subject to Rule 45(c)(3)(B)(iii), the person may be commanded to
attend a trial by traveling from any such place within the state where
the trial is held;
(iii) requires disclosure of privileged or other protected matter, if
no exception or waiver applies; or
(iv) subjects a person to undue burden.
(B) When Permitted. To protect a person subject to or affected by
a subpoena, the issuing court may, on motion, quash or modify the
subpoena if it requires:
(i) disclosing a trade secret or other confidential research,
development, or commercial information;
(ii) disclosing an unretained expert’s opinion or information that
does not describe specific occurrences in dispute and results from
the expert’s study that was not requested by a party; or
(iii) a person who is neither a party nor a party’s officer to incur
substantial expense to travel more than 100 miles to attend trial.
(C) Specifying Conditions as an Alternative. In the circumstances
described in Rule 45(c)(3)(B), the court may, instead of quashing or
modifying a subpoena, order appearance or production under
specified conditions if the serving party:
(i) shows a substantial need for the testimony or material that
cannot be otherwise met without undue hardship; and
(ii) ensures that the subpoenaed person will be reasonably
compensated.

(d) Duties in Responding to a Subpoena.
(1) Producing Documents or Electronically Stored Information.
These procedures apply to producing documents or electronically
stored information:
(A) Documents. A person responding to a subpoena to produce
documents must produce them as they are kept in the ordinary
course of business or must organize and label them to correspond to
the categories in the demand.
(B) Form for Producing Electronically Stored Information Not
Specified. If a subpoena does not specify a form for producing
electronically stored information, the person responding must
produce it in a form or forms in which it is ordinarily maintained or
in a reasonably usable form or forms.
(C) Electronically Stored Information Produced in Only One
Form. The person responding need not produce the same
electronically stored information in more than one form.
(D) Inaccessible Electronically Stored Information. The person
responding need not provide discovery of electronically stored
information from sources that the person identifies as not reasonably
accessible because of undue burden or cost. On motion to compel
discovery or for a protective order, the person responding must show
that the information is not reasonably accessible because of undue
burden or cost. If that showing is made, the court may nonetheless
order discovery from such sources if the requesting party shows
good cause, considering the limitations of Rule 26(b)(2)(C). The
court may specify conditions for the discovery.
(2) Claiming Privilege or Protection.
(A) Information Withheld. A person withholding subpoenaed
information under a claim that it is privileged or subject to
protection as trial-preparation material must:
(i) expressly make the claim; and
(ii) describe the nature of the withheld documents,
communications, or tangible things in a manner that, without
revealing information itself privileged or protected, will enable the
parties to assess the claim.
(B) Information Produced. If information produced in response to a
subpoena is subject to a claim of privilege or of protection as trialpreparation material, the person 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, sequester, or
destroy the specified information and any copies it has; must not use
or disclose the information until the claim is resolved; must take
reasonable steps to retrieve the information if the party disclosed it
before being notified; and may promptly present the information to
the court under seal for a determination of the claim. The person
who produced the information must preserve the information until
the claim is resolved.
(e) Contempt. The issuing court may hold in contempt a person
who, having been served, fails without adequate excuse to obey the
subpoena. A nonparty’s failure to obey must be excused if the
subpoena purports to require the nonparty to attend or produce at a
place outside the limits of Rule 45(c)(3)(A)(ii).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
)
NOKIA CORPORATION,
)
)
Plaintiff,
)
)
v.
)
)
APPLE, INC.,
)
)
Defendant.
)
__________________________________________)
)
APPLE INC.
)
)
Counterclaim-Plaintiff,
)
)
v.
)
)
NOKIA CORPORATION AND NOKIA INC.
)
)
Counterclaim-Defendants.
)
__________________________________________)

C.A. 09-791-GMS
JURY TRIAL DEMANDED

COUNTERCLAIM PLAINTIFF APPLE INC.’S
NOTICE OF DEPOSITION OF ANGUS GIL
PLEASE TAKE NOTICE THAT, on May 23, 2011 at 9:00 a.m., at the offices of
Wilmer Cutler Pickering Hale and Dorr LLP, 950 Page Mill Road, Palo Alto, California 94304,
and continuing day-to-day until completed or adjourned, Counterclaim Plaintiff, Apple Inc. by
and through its undersigned counsel, will proceed to take the testimony upon oral examination of
Angus Gill.
The examination will be taken before a Notary Public or other person authorized to
administer oaths and will be recorded stenographically and by video. Real-time transcription
(e.g., LiveNote) may be used as well. Testimony derived pursuant to this Notice of Deposition
shall be used for any and all appropriate purposes permitted by the Federal Rules of Evidence.

You are invited to attend and cross-examine.

OF COUNSEL:
William F. Lee
WILMERHALE
60 State Street
Boston, MA 02109
Tel: [phone]
Mark D. Selwyn
WILMERHALE
950 Page Mill Road
Palo Alto, CA 94304
Tel: [phone]
Kenneth H. Bridges
Michael T. Pieja
WONG CABELLO
540 Cowper Street
Suite 100
Palo Alto, CA
Tel: [phone]

POTTER ANDERSON & CORROON LLP

By: /s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19899
Tel: [phone]
[e-mail]
[e-mail]
Attorneys for Defendant/Counterclaim-Plaintiff
Apple Inc.

Dated: April 20, 2011

-2-

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

CERTIFICATE OF SERVICE
I, David E. Moore, hereby certify that on April 20, 2011, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to the
registered attorney(s) of record that the document has been filed and is available for viewing and
downloading.
I hereby certify that on April 20, 2011, the attached document was electronically mailed
to the following person(s):
Jack B. Blumenfeld
Rodger D. Smith II
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street
Wilmington, DE 19899
[e-mail]
[e-mail]

Adam J. Biegel
Patrick J. Flinn
John D. Haynes
Keith E. Broyles
Mark A. McCarty
Ryan W. Koppelman
Peter Kontio
Alston & Bird LLP
One Atlantic Center
1201 West Peachtree Street
Atlanta, GA 30309
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Alan L. Whitehurst
Alston & Bird LLP
The Atlantic Building
950 F Street, NW
Washington, DC 20004-1404
[e-mail]

By:

April 20, 2011

-2-

/s/ David E. Moore
Richard L. Horwitz (#2246)
David E. Moore (#3983)
POTTER ANDERSON & CORROON LLP
[phone]
[e-mail]
[e-mail]

ATTACHMENT A
DEFINITIONS
The following definitions are applicable herein, regardless of whether upper or lower
case letters are used:
1.

“You” or “your” refers to Angus Gill, his partners, former partners, associates,

former associates, agents, or any other person who acted on or purported to act on his behalf.
“You” or “your” also refers to Locke Lord Bissell & Liddell LLP. To the extent its files are in
your possession, “you” or “your” also refers to Morgan & Finnegan LLP.
2.

“Apple” means and refers to defendant and counterclaim plaintiff Apple Inc., its

officers, directors, employees, partners, corporate parent, subsidiaries, affiliates, divisions,
attorneys, and agents.
3.

“Nokia” collectively means and refers to plaintiff and counterclaim defendants

Nokia Corporation and Nokia Inc. and includes, without limitation, each of its predecessors,
present or former parents, subsidiaries, affiliated or controlled companies or joint ventures, its
respective current or former directors, officers, employees, agents, attorneys, accountants and
any other person who acted on or purported to act on their or any of their behalf.
4.

“This Litigation” means and refers to the above-referenced action, entitled Nokia

Corporation v. Apple Inc., et al., C.A. 09-791-GMS.
5.

“‘878 Patent” means and refers to U.S. Patent No. 7,123,878 issued on October

17, 2006 and entitled “Apparatus, Method and System for a Connectivity Tool in Bluetooth
Devices,” and any foreign counterparts.
6.

“‘878 Inventor” means and refers to Tomi Heinonen, Timo M. Laitinen, Tommy

Ginman, and Timo K. Perälä.

-1-

7.

“‘878 Related Patents” means any patent or patent application that concern the

same or similar subject matter as the ‘878 Patent, as well as any continuation, continuation in
part, divisional, or any other patent or patent application (including rejected, abandoned, or
pending applications) derived in whole or in part from said application, and all foreign
counterpart patents or patent application (including rejected, abandoned, or pending
applications).
8.

“‘878 Prior art” means all publications, patents, physical devices, prototypes,

uses, sales, offers for sale or other activity concerning the subject matter claimed in the ‘878
Patent and existing on, or occurring at, a date such as to be relevant under any subdivision of 35
U.S.C. §§ 102 or 103.
9.

The term “communication” means the transmittal of information (in the form of

facts, ideas, inquiries or otherwise).
10.

The term “document” is used in its normally broad sense as defined in Rule 34(a)

of the Federal Rules of Civil Procedure, and includes, without limitation: originals, final
versions, drafts and every copy of writings and printed, handwritten, typed, and other graphic or
photographic matter, including microfilm of any kind or nature, recordings (tape, disk, or other)
of oral communications, electronic mail, and other data compilations from which information
can be obtained, in the possession, custody, or control of Locke Lord Bissell & Liddell LLP
and/or Angus Gill.
11.

The term “identify,” when referring to a person, means to give, to the extent

known, the person’s full name, present or last known address and when referring to a natural
person, additionally, the present or last known place of employment. The term “identify,” when
referring to documents, means to give, to the extent known, the (i) type of document, (ii) general

-2-

subject matter; (iii) date of the document, (iv) author(s), addressee(s), and recipient(s).
12.

The term “concerning” means relating to, referring to, regarding, describing,

discussing, evidencing, or constituting.
13.

The term “relating to” means, without limitation, concerning, alluding to,

referring to, constituting, describing, discussing, evidencing, or regarding.
14.

The words “and” and “or” shall be construed conjunctively or disjunctively,

whichever makes this subpoena more inclusive.
15.

The words “any,” “all” and “each” shall be construed as each and every.

16.

The use of the singular form of any word includes the plural, and the use of the

plural form of any word includes the singular.

-3-

INSTRUCTIONS
The following instructions are applicable herein:
1.

Produce all responsive documents and things in your possession, custody, or

control.
2.

Produce all documents and things requested in the same file or manner in which

they are kept in the usual course of business.
3.

Provide the following information for any responsive document or thing withheld

from production on the grounds that it is protected from disclosure by the attorney-client
privilege, the work product doctrine, or any other relevant privilege:
a.

The author of the document;

b.

The person(s) for whom the document was prepared, to whom it was sent,
or who received copies;

c.
d.

The subject matter of the document;

e.

The type of document (e.g., letter, memorandum, note, report, etc.)

f.

The number of pages and attachments; and

g.
4.

The date of the document;

The nature and the basis for the claim of privilege.

This subpoena includes documents that exist in electronic form (including

electronic mail, back-up tapes, magnetic tapes, and diskettes).
5.

More than one paragraph of this request may ask for the same documents. The

presence of such duplication is not to be interpreted to narrow or limit the normal interpretation
placed upon each individual request. Where a writing is requested in more than one numbered
paragraph, only one copy of it need be produced.
6.

If you object to a request, or any part of a request, produce all documents to which

-4-

your objection does not apply.
7.

In the event that multiple copies of a document exist, produce every copy on

which appear any notations or marking of any sort not appearing on any other copy.
8.

If you are aware of a document or thing, or group of documents or things, that

once existed but has been destroyed or discarded since January 1994, you are requested to state
the type of document or thing or group of documents or things, the date it was created, the date it
was destroyed or discarded, and the identity of the persons having knowledge of the contents of
the document or thing, or group of documents and things.
9.

A copy of the Protective Order entered in this case is attached.

-5-

DOCUMENT REQUESTS
Document Request No. 1
All documents concerning the conception or reduction to practice—whether actual or
constructive—of the subject matter of each claim of the ‘878 Patent. This includes, without
limitation, invention disclosures, notebooks, memoranda, reports, journals, drawings, schematics,
specifications, diagrams, computer records, diaries, calendars, test results, or patent prosecution
records.
Document Request No. 2
All documents relating to any work, research, tests, experiments, studies, or prototypes,
whether complete, incomplete, or prematurely terminated, undertaken by any person, relating to
the alleged invention disclosed or claimed in the ‘878 Patent.
Document Request No. 3
All documents concerning information received by You from—or given by You to—a
‘878 Inventor, or Nokia concerning the subject matter of the ‘878 Patent or any ‘878 Related
Patent.
Document Request No. 4
All documents concerning communications between or among any combination of the
following: You, a ‘878 Inventor, and/or Nokia concerning: (a) the ‘878 Patent or any ‘878
Related Patent, (b) the application for the ‘878 Patent or any ‘878 Related Patent, (c) the subject
matter of the ‘878 Patent or any ‘878 Related Patent.
Document Request No. 5
All documents concerning communications between You and any other person
concerning (a) the ‘878 Patent or any ‘878 Related Patent, (b) the application for the ‘878 Patent

-6-

or any ‘878 Related Patent, (c) the subject matter of the ‘878 Patent or any ‘878 Related Patent.
Document Request No. 6
All documents concerning the preparation, filing, or prosecution of the applications for
the ‘878 Patent or ‘878 Related Patents. This includes, but is not limited to (a) the prosecution
history file for the ‘878 Patent and each patent and/or application in the ‘878 Related Patents; (b)
all references cited during the prosecution of such patent applications; (c) every Office Action
and paper filed or served in the course of the prosecution thereof; (d) all correspondence,
memoranda, notes and/or other documents relating to the prosecution thereof; (e) all prior art
cited; and (f) all inventions disclosures, engineering/lab notebooks, journals, declarations,
correspondence, notes, testing results, and/or other documents relating to any work underlying
the alleged inventions claimed in the ‘878 Patent or ‘878 Related Patents.
Document Request No. 7
All documents concerning any communications, meeting, or contact with the United
States Patent and Trademark Office, or any foreign patent office, concerning the ‘878 Patent or
any ‘878 Related Patent.
Document Request No. 8
All documents concerning the identification or determination of the inventor for the ‘878
Patent.
Document Request No. 9
All documents concerning any ownership, right, title, or interest to the ‘878 Patent,
including without limitation any transfer or assignment thereof.
Document Request No. 10
All documents concerning Nokia’s decision to seek patent protection for the subject

-7-

matter of any claim of the ‘878 Patent or any ‘878 Related Patent.
Document Request No. 11
All documents relating to any mode of practicing any claim of the ‘878 Patent, including
without limitation the best mode. This includes without limitation modes contemplated by a
‘878 Inventor at or before the time of filing the patent application that led to the ‘878 Patent or
any ‘878 Related Patent.
Document Request No. 12
All documents relating to the first disclosure to any person of the subject matter of any
claim of the ‘878 Patent.
Document Request No. 13
All documents relating to the first public disclosure to any person of the subject matter of
any claim of the ‘878 Patent.
Document Request No. 14
All documents relating to the first public written description, first public use, first public
demonstration, first offer to sell, or first sale of the invention(s) claimed in the ‘878 Patent, or of
any embodiment thereof.
Document Request No. 15
All documents concerning any analysis, opinion, or inquiry regarding the ‘878 Patent.
This includes without limitation all documents concerning the ownership, inventorship,
patentability, validity, enforceability, or infringement of the ‘878 Patent, including but not
limited to any documents created or discovered in connection with any prior art search and/or
relating to pre-litigation investigations performed by or on behalf of Nokia or a ‘878 Inventor.

-8-

Document Request No. 16
All prior art or potential prior art to the ‘878 Patent. This includes without limitation all
prior art or potential prior art obtained, reviewed, or considered by you before, during, or after
the prosecution of the ‘878 Patent or any ‘878 Related Patent, including but not limited to any
prior art asserted against the ‘878 Patent in any proceeding or brought to your attention by any
person.
Document Request No. 17
All documents concerning any effort to search for, identify, locate, collect, review,
analyze or otherwise obtain evidence of prior art with respect to the ‘878 Patent or any ‘878
Related Patent, including any literature, patent, publication, or prior art searches.
Document Request No. 18
All documents concerning any alleged or potential secondary considerations or other
objective evidence of non-obviousness concerning the ‘878 Patent (e.g., commercial success,
long-felt need, commercial acquiescence, expressions of skepticism, copying, teaching away,
successful or failed attempts by others, and/or simultaneous development).
Document Request No. 19
All documents concerning any decision as to what prior art to cite, or not to cite, during
the prosecution of the ‘878 Patent. This includes without limitation any decision by any
applicant or any other person to disclose, to withhold, and/or otherwise not to disclose (to the
U.S. or any foreign patent examiner or office) any reference or any other document during the
prosecution of any patent application resulting in the ‘878 Patent, including without limitation:
(a) any opinions or advice of counsel concerning the same; and (b) any document concerning the
applicant, licensee, or assignee’s knowledge or understanding of disclosure obligations.

-9-

Document Request No. 20
All documents concerning funding for the work underlying the ‘878 Patent, including
without limitation all communications, agreements, proposals, status reports, test results,
research reports, literature reviews, requests for funding, and funding documentation
Document Request No. 21
Any article, scholarly work, publication, lecture, or presentation authored in whole or part
by the ‘878 Inventor.
Document Request No. 22
All documents authored, presented, or published (in whole or part) by or on behalf of the
‘878 Inventor that concern the ‘878 Patent or any ‘878 Related Patent, or the subject matter of
the ‘878 Patent or any ‘878 Related Patent, including but not limited to articles, publications,
internal memoranda, and reports.
Document Request No. 23
All documents concerning any unique or specialized meaning (different from its
everyday common use) of any word or phrase contained in any of the claims of the ‘878 Patent.
Document Request No. 24
All documents concerning any other lawsuits or legal or administrative proceedings of
any kind involving the ‘878 Patent or any ‘878 Related Patent, including but not limited to
depositions, briefs, affidavits motions/briefs, affidavits/declarations, deposition/hearing
transcripts, privilege logs, witness statements, exhibits, expert reports, or discovery requests and
responses thereto.
Document Request No. 25
All documents concerning the research, design, development, operation, manufacture,

- 10 -

assembly, testing, marketing, offer for sale, or sale of any product that allegedly embodies—or
whose use allegedly embodies—any claim of the ‘878 Patent.
Document Request No. 26
All documents concerning notice of the ‘878 Patent to Apple or any other alleged or
potential infringer.
Document Request No. 27
All documents concerning any decision or opinion of Nokia to file suit, not to file suit, or
to delay filing suit against Apple for alleged infringement of any patent, including without
limitation the ‘878 Patent.
Document Request No. 28
All documents concerning any product, instrumentality, or process accused of infringing
the ‘878 Patent, including without limitation all documents constituting or concerning: (a) the
infringement or non-infringement of the ‘878 Patent by Apple or any other Person; (b) any
investigation, examination, study, report, reverse engineering, examination, inspection, survey,
critique or analysis; and (c) how and when you, the ‘878 Inventor, or Nokia first became aware
of the existence of said product, instrumentality, or process.
Document Request No. 29
All documents concerning communications between Nokia or the ‘878 Inventor on the
one hand, and Apple on the other hand.
Document Request No. 30
To the extent not duplicative of previous requests, all documents concerning the ‘878
Patent.

- 11 -

Document Request No. 31
All documents concerning Apple or any Apple product.
Document Request No. 32
All documents concerning any and all licensing customs, practices or policies of Nokia.
Document Request No. 33
All documents concerning any valuation of the ‘878 Patent or any ‘878 Related Patent, or
any attempt to assign a value to the ‘878 Patent, any ‘878 Related Patent, or any combination of
patents that include the ‘878 Patent.
Document Request No. 34
All documents concerning agreements or negotiations relating to the ‘878 Patent or any
‘878 Related Patent, including but not limited to licenses, license negotiations, draft license
agreements, licensing correspondence, sublicenses, offers for licenses or sublicenses, demand
letters, covenants not to sue, or settlement agreements, whether ultimately consummated or not.
Document Request No. 35
Any documents concerning communications between you and Alston & Bird LLP,
Morris, Nichols, Arsht & Tunnell LLP, any other counsel for Nokia, or the ‘878 Inventor
concerning this Litigation, the ‘878 Patent.
Document Request No. 36
All documents concerning the transfer or destruction of any of the documents requested
by any of the foregoing requests.
Document Request No. 37
All documents concerning the document retention or document destruction policies of
Morgan & Finnegan LLP or Locke Lord Bissell & Liddell LLP, whether formal or informal.

- 12 -

Document Request No. 38
To the extent documents related to the prosecution of the ’878 patent are not in your
possession, documents sufficient to show where documents related to the prosecution of the ’878
patent are located.

- 13 US1DOCS 7904666v1

Case 1:09-cv-00791-GMS Document 51

Filed 06/01/10 Page 1 of 37

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NOKIA CORPORATION
Plaintiff,
C.A. No. 09-791-GMS

v.
APPLE INC.
Defendant.
APPLE INC.
Counterclaim-Plaintiff,
v.
NOKIA CORPORATION and NOKIA INC.,
Counterclaim-Defendants.

[PROPOSED] JOINT PROTECTIVE ORDER
1.

PURPOSES AND LIMITATIONS

This Protective Order (the “Order”) governs the production or exchange of documents
and other discovery materials in connection with the above-captioned action (the “Action”) by or
between the Parties and any third parties, either through the formal discovery process or
informally. If discovery is sought from third parties in connection with this litigation between
the Parties, and this discovery would require a third party to disclose and/or produce Confidential
or Highly Confidential Information, that third party may gain the protections of this Order
through a written agreement by that third party to produce documents or information pursuant to
this Order and to be bound by it. Under such agreement, the Parties hereto will be bound by this
Order with respect to all Confidential or Highly Confidential Information produced by that third
party.
-1US1DOCS 7550444v2

Case 1:09-cv-00791-GMS Document 51

2.

Filed 06/01/10 Page 2 of 37

DEFINITIONS
2.1

Party: any party to this Action, including all of its officers, directors,

employees, consultants, retained experts, and in-house counsel (and their support staff).
2.2

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

manner generated, stored, or maintained (including, among other things, testimony, transcripts,
or tangible things) that are produced in discovery in this Action.
2.3

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

generated, stored or maintained) or tangible things the Designating Party believes in good faith is
not generally known to others, and that the Designating Party (i) would not normally reveal to
third parties except in confidence, or has undertaken with others to maintain in confidence; or (ii)
believes in good faith is protected by a right to privacy under federal or state law, or any other
applicable privilege or right related to confidentiality or privacy.
2.4

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY”

Information or Items: highly sensitive “Confidential Information or Items,” the disclosure of
which to another Party or non-party would create a risk of competitive injury to the Producing
Party. Highly Confidential Information designations should be used only for sensitive technical,
financial, competitive, or personnel information, which is not generally known by third parties
and that the Producing Party would not normally reveal to third parties or would require third
parties to maintain in confidence either by agreements, policies, or procedures. For example,
Highly Confidential Information may include, but is not limited to, materials such as design files,
design drawings, design specifications, manufacturing techniques, laboratory notebooks,
prototypes, materials submitted to regulatory agencies, financial and accounting information that
is not made publicly available, business and marketing plans or analyses, licenses, surveys,

-2US1DOCS 7550444v2

Case 1:09-cv-00791-GMS Document 51

Filed 06/01/10 Page 3 of 37

customer communications, meeting minutes, employment records, training materials,
information obtained from a third party pursuant to a current Non-Disclosure Agreement, and
similar information provided that the materials meet the foregoing requirements.
2.5

“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items:

include human-readable programming language text that defines software, firmware, or
electronic hardware descriptions. HIGHLY CONFIDENTIAL – SOURCE CODE includes,
without limitation, computer code; scripts; assembly; object code; source code listings and
descriptions of source code; object code listings and descriptions of object code; Hardware
Description Language (HDL); Register Transfer Level (RTL) files that describe the hardware
design of any ASIC or other chip; similarly sensitive implementation details; files containing
text written in “C,” “C++,” assembler, VHDL, Verilog, and digital signal processor (DSP)
programming languages; “.include files;” “make” files; link files; and other human-readable text
files used in the generation and/or building of software directly executed on a microprocessor,
microcontroller, or DSP. The restrictions herein on HIGHLY CONFIDENTIAL – SOURCE
CODE do not apply to publicly-available source code available as open source source code.
2.6

Receiving Party: a Party that receives Discovery Material from a

Producing Party.
2.7

Producing Party: a Party or non-party that produces Discovery Material in

2.8

Designating Party: a Party or non-party that designates information or

this Action.

items that is produced in disclosures or in responses to discovery as “CONFIDENTIAL,”
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL
– SOURCE CODE.”

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2.9

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Challenging Party: a Party that elects to initiate a challenge to a

Designating Party’s confidentiality designation.
2.10

Protected Material: any Discovery Material that is designated as

“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE.”
2.11

Outside Counsel: attorneys who are not employees of a Party, but who are

retained to represent or advise a Party in this Action.
2.12

In-house Counsel: attorneys who are employees of a Party.

2.13

Counsel (without qualifier): Outside Counsel and In-house Counsel (as

well as their necessary support staff).
2.14

Outside Consultant: a person with specialized knowledge or experience in

a matter pertinent to the Action who has been retained by, or at the direction of, a Party or its
Counsel to serve as an expert witness or as a consultant in this Action, and who is not a current
employee or non-litigation consultant of a Party or of a competitor of a Party and who, at the
time of retention, is not anticipated to become an employee or non-litigation consultant of a Party
or of a competitor of a Party.
2.15

Professional Vendors: persons or entities that provide litigation support

services (e.g., photocopying, videotaping, translating, preparing exhibits or demonstrations,
organizing, storing, retrieving data in any form or medium etc.) and their employees and
subcontractors., and who are not current employees of a Party or of a competitor of a Party, and
who, at the time of retention, are not anticipated to become employees of a Party or of a
competitor of a Party. This definition includes ESI vendors, professional jury or trial consultants
retained in connection with this Action, and mock jurors retained by such consultants to assist

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them in their work. Professional Vendors do not include consultants who fall within the
definition of Outside Consultant.
3.

SCOPE AND APPLICABILITY

All documents, materials, items, testimony or information designated as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” and
“HIGHLY CONFIDENTIAL – SOURCE CODE,” regardless of whether stored in electronic or
paper form, produced or filed with the Court, submitted to the Court in connection with a hearing
or trial, or produced or served either by a Party or a third party, to or for any of the other Parties,
shall be governed by this Protective Order and used only for the purposes of this Action and not
for any business, patent prosecution, competitive or governmental purpose or function, and shall
not be disclosed to anyone except as provided in this Protective Order, absent a specific order by
the Court.
The protections conferred by this Order cover not only Protected Material (as defined
above), but also any information copied or extracted therefrom, as well as all copies, excerpts,
summaries, or compilations thereof. Nothing herein shall alter or change in any way the
discovery provisions of the Federal Rules of Civil Procedure. Identification of any individual
pursuant to this Protective Order does not make that individual available for deposition or any
other form of discovery outside of the restrictions and procedures of the Federal Rules of Civil
Procedure or the Local Rules of the United States District Court for the District of Delaware.
4.

DURATION

The confidentiality obligations imposed by this Order shall remain in effect until a
Designating Party agrees otherwise in writing or a court order otherwise directs.

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5.

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DESIGNATING PROTECTED MATERIAL
5.1

Manner and Timing of Designations. Except as otherwise provided in this

Order, or as otherwise stipulated or ordered, Discovery Material that qualifies for protection
under this Order must be clearly so designated before being disclosed or produced. Designation
in conformity with this Order:
(a)

for information in documentary form (apart from transcripts of

depositions or other pretrial or trial proceedings), the Producing Party shall affix the legend
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” on each document that contains Protected
Material. Unless otherwise indicated, the designation of confidentiality shall apply to the entire
document. If only a portion or portions of the document qualifies for protection, the Producing
Party also must clearly identify the protected portion(s) and must specify, for each portion, the
level of protection being asserted “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE”.
(b)

for testimony given in deposition or in other pretrial or trial

proceedings, the Party or non-party offering or sponsoring the testimony shall identify on the
record all Protected Material and further specify any portions of the testimony that qualify as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE.” When impractical to identify separately each
portion of testimony that is entitled to protection, and when substantial portions of the testimony
may qualify for protection, the Party or non-party that sponsors, offers, or gives the testimony
may invoke on the record a right to designate the entire testimony or particular topic thereof
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or

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“HIGHLY CONFIDENTIAL – SOURCE CODE.” Testimony in a deposition may also be
designated “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,”
or “HIGHLY CONFIDENTIAL – SOURCE CODE” by notifying the deposing party in writing
within fourteen (14) calendar days of the conclusion of the deposition. No deposition may be
read or produced to anyone other than the deponent, Outside Counsel, and those qualified to see
“HIGHLY CONFIDENTIAL – SOURCE CODE” material under Paragraph 7 during the
fourteen (14) calendar day period following a deposition unless otherwise agreed upon among
the Outside Counsel. Upon being informed that certain portions of a deposition disclose either
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” information, each party must cause each copy
of the transcript in its custody or control to promptly be marked with the appropriate designation.
Transcript pages containing Protected Material must contain on each page
the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,”
or “HIGHLY CONFIDENTIAL – SOURCE CODE,” as instructed by the Party or non-party
offering or sponsoring the witness or presenting the testimony.
(c)

for electronic documents and other electronic files, the Producing

Party shall affix the legend “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’
EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” as appropriate to the media
containing the documents, or by indicating in writing those documents designated as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE.”
(d)

for information produced in some form other than documentary,

and for any other tangible items, the Producing Party shall affix in a prominent place on the

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exterior of the container or containers in which the information or item is stored the legend
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE.” If only portions of the information or item
warrant protection, the Producing Party, to the extent practicable, shall identify the protected
portions, specifying whether they qualify as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL
– ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE.”
5.2

Inadvertent Failure to Designate. The inadvertent or unintentional

production by the Producing Party, or any third party subject to an obligation of confidentiality,
of confidential material or information without designating such material or information as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” shall not be deemed a waiver in whole or in
part of a party’s claim of confidentiality, either as to that specific information or as to any other
information. In the event that the Producing Party discovers that it or a third party subject to an
obligation of confidentiality inadvertently or unintentionally provided Confidential Information
without designation or with an improper designation, that party shall, within ten (10) business
days of learning of the disclosure, by letter sent to opposing counsel, designate all documents or
portions thereto containing such information “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL
– ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE” subject
to the protections of this Order, and the Receiving Party shall make all reasonable efforts to
assure that the material is treated in accordance with the provisions of this Order. If
inadvertently or unintentionally provided Confidential Information has been disclosed by a
Receiving Party in any filing, motion, hearing, trial or proceeding, then the Receiving Party, after
being duly notified by letter, shall, to the extent necessary, designate all documents or portions

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containing such information as “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE.” To the
extent this Confidential Information was submitted in a filing or motion, the party submitting the
filing shall cooperate in any motion or request to the Court to seal such information, in
accordance with the Court’s rules and procedures. If inadvertently or unintentionally provided
Confidential Information has been disclosed by the Receiving Party to any person (including
employees of the Receiving Party) that would not be entitled pursuant to Paragraph 7 to receive
the Confidential Information as designated pursuant to this Paragraph, the Requesting Party shall
(a) use its best efforts to retrieve all copies of the Confidential Information; (b) inform the person
or persons to whom the disclosures were made of all the terms of this Order, and (c) request that
such person or persons execute the “Acknowledgment and Agreement to Be Bound By
Protective Order” that is attached hereto as Exhibit A. Nothing herein shall prevent the
Receiving Party from challenging the propriety of the designation of the documents by
submitting a written challenge to the Court.
5.3

Inadvertent Production of Work Product or Privileged Information. Any

inadvertent disclosure or production of document(s) shall not be deemed a waiver of, nor
prejudice to, any privilege or immunity with respect to such information or document(s) or of
any work product doctrine or other immunity that may attach thereto, including without
limitation the attorney-client privilege, the joint defense privilege, and the work product doctrine,
provided that the producing party notifies the receiving party in writing promptly after discovery
of such inadvertent production. All copies of such document(s) shall be returned to the
Producing Party or destroyed within five (5) calendar days of such notice. Also within five (5)
calendar days of such notice, the Producing Party shall serve a privilege log for the document(s).

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The Producing Party shall maintain the referenced document(s) until the parties resolve any
dispute concerning the privileged nature of such documents or the Court rules on any motion to
compel such documents. If a dispute arises concerning the privileged nature of the document(s)
demanded or returned, the parties shall meet and confer in good faith in an effort to resolve the
dispute. If the parties are unable to resolve the dispute, the receiving party may file a motion to
compel the production of such document(s). In the event of such a motion to compel, the
Producing Party shall have the burden to demonstrate the claimed privilege, work product
immunity or other immunity. However, in no case will the return of any demanded document be
delayed or refused by reason of a party’s objection to the demand or by the filing of a motion to
compel, nor may a party assert the fact of the inadvertent production as a ground for any such
motion. The responding party shall not use or refer to any information contained within the
document(s) at issue, including in deposition or at trial or in any Court filing, unless and until
such a motion to compel that document is granted by a Court, except as such information may
appear in any applicable privilege log.
6.

CHALLENGING CONFIDENTIALITY DESIGNATIONS
6.1

Objections to Confidentiality Designations and Judicial Intervention. Any

party may object to the designation of particular “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” information by identifying the information to which the objection is made in a
written notice to the party designating the disputed information. However, a Party shall not be
obligated to challenge the propriety of such designations at the time made, and the failure to do
so shall not preclude a subsequent challenge thereto. If the parties cannot resolve the objection,
it shall be the obligation of the party challenging the “CONFIDENTIAL,” “HIGHLY

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CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” designation to file and serve a motion in compliance with Local Rule 5.1.3, if
applicable, that identifies the challenged material and sets forth in detail the basis for the
challenge.
6.2

Meet and Confer. A Party that elects to initiate a challenge to a

Designating Party’s confidentiality designation, or Challenging Party, must do so in good faith
and must begin the process by conferring with the Designating Party. In conferring, the
Challenging Party must explain the basis for its belief that the confidentiality designation was not
proper and must give the Designating Party an opportunity to review the designated material, to
reconsider the circumstances, and, if no change in designation is offered, to explain the basis for
the chosen designation. The Designating Party must cooperate in scheduling such conference. If
the Designating Party is unavailable to meet and confer within a reasonable amount of time or
fails to cooperate in scheduling the conference, the Challenging Party may proceed to file its
motion with the Court.
6.3

Judicial Intervention. A Party that elects to initiate a challenge to a

confidentiality designation after considering the justification offered by the Designating Party
may file and serve a motion in compliance with Local Rule 5.1.3, if applicable, that identifies the
challenged material and sets forth in detail the basis for the challenge. Each such motion must be
accompanied by a competent declaration that affirms that the movant has complied with the meet
and confer requirements imposed in the preceding paragraph and that sets forth with specificity
the justification for the confidentiality designation that was given by the Designating Party in the
meet and confer dialogue. The burden of persuasion in any such challenge proceeding shall be
on the Designating Party to establish that the information is, in fact, properly designated . Until

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the Court rules on the challenge, all parties shall continue to afford the material in question the
level of protection to which it is entitled under the Designating Party’s designation.
7.

PRESERVATION AND USE OF PROTECTED MATERIAL
7.1

Basic Principles. A Receiving Party may use Protected Material that is

disclosed or produced by another Party or by a non-party in connection with this case only for
the purposes of this Action and not for any business, patent prosecution, competitive or
governmental purpose or function, and shall not be disclosed to anyone except as provided in this
Order absent a specific order by the Court. When the Action has been terminated, a Receiving
Party must comply with the provisions of Section 12 below (FINAL DISPOSITION).
Except as otherwise provided in Paragraph 8, all “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” material or information shall be maintained under the control of Outside
Counsel, who shall make best efforts to prevent any disclosure thereof except in accordance with
the terms of this Order.
7.2

Disclosure of “CONFIDENTIAL” Information or Items. Unless

otherwise ordered by the Court or permitted in writing by the Designating Party, a Receiving
Party may disclose information or items designated “CONFIDENTIAL” only to:
(a)

the Receiving Party’s Outside Counsel, as well as employees of

said Outside Counsel to whom it is reasonably necessary to disclose the information for this
Action;
(b)

In-house Counsel of the Receiving Party to whom disclosure is

reasonably necessary for this Action, who have signed the “Agreement To Be Bound By
Protective Order” (Exhibit A);

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(c)

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Outside Consultants (as defined in this Order) (1) to whom

disclosure is reasonably necessary for this Action, (2) who have signed the “Agreement to Be
Bound by Protective Order” (Exhibit A), and (3) as to whom the procedures set forth in Section
7.6 below, have been followed;
(d)

the Court and its personnel;

(e)

court reporters, their staffs, and Professional Vendors to whom

disclosure is reasonably necessary for this Action;
(f)

any designated mediator who is assigned to hear this matter, or

who has been selected by the Parties, and his or her staff, who have signed the “Agreement To
Be Bound by Protective Order” (Exhibit A);
(g)

during their depositions, witnesses in the Action who are current

officers or employees of the Producing Party and to whom disclosure is reasonably necessary for
this Action;
(h)

each person the document or information identifies as an author,

source or recipient of such document or information; and
(i)

any person that evidence demonstrates to have already viewed the

information or document or been told of its content, provided that the party desiring such
disclosure first provides five (5) calendar days advanced written notice to the Designating Party
of the planned disclosure describing precisely what is to be disclosed, to whom it will be
disclosed, and the evidentiary basis for believing the document or information has already been
disclosed to such person. Should the Designating Party object to such disclosure within the five
(5) calendar days, disclosure shall not be made under this provision.

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7.3

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Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES

ONLY” Information or Items. Unless otherwise ordered by the Court or permitted in writing by
the Designating Party, a Receiving Party may disclose information or items designated
“HIGHLY CONFIDENTIAL — ATTORNEYS’ EYES ONLY” only to:
(a)

The Receiving Party’s Outside Counsel, as well as employees of

said Outside Counsel to whom it is reasonably necessary to disclose the information for this
Action;
(b)

Outside Consultants (as defined in this Order) (1) to whom

disclosure is reasonably necessary for this Action, (2) who have signed the “Agreement to Be
Bound by Protective Order” (Exhibit A), and (3) as to whom the procedures set forth in Section
7.6 below, have been followed;
(c)

the Court and its personnel;

(d)

court reporters, their staffs, and Professional Vendors to whom

disclosure is reasonably necessary for this Action;
(e)

any designated mediator who is assigned to hear this matter, or

who has been selected by the Parties, and his or her staff, who have signed the “Agreement To
Be Bound by Protective Order” (Exhibit A);
(f)

each person the document or information identifies as an author,

source or recipient of such document or information; and
(g)

any person that evidence demonstrates to have already viewed the

information or document or been told of its content, provided that the party desiring such
disclosure first provides five (5) calendar days advanced written notice to the Designating Party
of the planned disclosure describing precisely what is to be disclosed, to whom it will be

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disclosed, and the evidentiary basis for believing the document or information has already been
disclosed to such person. Should the Designating Party object to such disclosure within the five
(5) calendar days, disclosure shall not be made under this provision.
7.4

Disclosure of “HIGHLY CONFIDENTIAL – SOURCE CODE”

Information and Items. Unless otherwise ordered by the Court or permitted in writing by the
Designating Party, a Receiving Party may disclose, subject to the provisions of Paragraph 7.5
and 8, information or items designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” only to:
(a)

Outside Counsel for the Receiving Party, as well as employees of

said Outside Counsel to whom it is reasonably necessary to disclose the information for this
Action, except that, unless otherwise agreed, no outside counsel who is involved in competitive
decision-making, as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir.
1984), shall have access to “HIGHLY CONFIDENTIAL – SOURCE CODE” Information or
Items;
(b)

Outside Consultants (as defined in this Order) retained by the

Receiving Party for purposes of this Action who (a) have signed the “Agreement to Be Bound by
Protective Order” (Exhibit A), and (b) as to whom the procedures set forth in Section 7.6 below,
have been followed, provided that disclosure is only to the extent necessary to perform that
consultant’s work in this Action and such expert or consultant is not involved in competitive
decision-making, as defined by U.S. Steel v. United States, 730 F.2d 1465, 1468 n.3 (Fed. Cir.
1984), on behalf of a party or a competitor of a party in the technical subject matter of the
“HIGHLY CONFIDENTIAL – SOURCE CODE” Information or Items;
(c)

the Court and its personnel;

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(d)

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court reporters, stenographers, and videographers retained to

record testimony taken in this Action;
(e)

any persons who are witnesses during a deposition, court hearing,

or trial where specific documentary or testimonial evidence establishes that the “HIGHLY
CONFIDENTIAL – SOURCE CODE” Information or Items or portion of the “HIGHLY
CONFIDENTIAL – SOURCE CODE” Information or Items was authored or received by the
witness;
(f)

any mediator who is assigned to hear this matter, and his or her

staff, subject to their agreement to maintain confidentiality to the same degree as required by this
Order;
(g)

any other person with the prior written consent of the Producing

Party.
7.5

Limits on Disclosure of “HIGHLY CONFIDENTIAL – ATTORNEYS’

EYES ONLY” and “HIGHLY CONFIDENTIAL – SOURCE CODE” Material, Information or
Items.
(a)

For avoidance of doubt, Receiving Parties shall not disclose

“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL
– SOURCE CODE” Material, Information or Items to any of its In-house attorneys or
employees. Outside Counsel for the Receiving Party may give advice and opinions to his or her
client regarding this litigation based on his or her evaluation of designated “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL – SOURCE
CODE” Material, Information or Items – provided that such rendering of advice and opinions

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shall not reveal the content of such Protected Material or any information contained therein
except by prior written agreement with Outside Counsel for the Producing Party.
(b)

Each person to whom Protected Material may be disclosed, and

who is required to sign the “Agreement To Be Bound By Protective Order” attached hereto as
Exhibit A, shall do so prior to the time such Protected Material is disclosed to him or her.
Outside Counsel for a Party who makes any disclosure of Protected Material shall retain each
original executed agreement and, upon written request, shall provide copies to counsel to all
other Parties at the termination of this action.
(c)

At the request of the Designating Party, persons not permitted

access to Protected Material under the terms of this Protective Order shall not be present at
depositions while the Designating Party’s Protected Material is discussed or otherwise disclosed.
Pre-trial and trial proceedings shall be conducted in a manner, subject to the supervision of the
Court, to protect Protected Material from disclosure to persons not authorized to have access to
such Material. Any Party intending to disclose or discuss Protected Material at pretrial or trial
proceedings must give advance notice to assure the implementation of the terms of this
Protective Order.
(d)

Any consultant or expert retained on behalf of a Receiving Party

who is to be given access to a Producing Party’s “HIGHLY CONFIDENTIAL – SOURCE
CODE” Material, Information or Items — whether in electronic form or otherwise — must agree
in writing not to use the accessed code to write source code directly intended for commercial
purposes relating to wireless communications and user interface technology for a period of six
(6) months after the issuance of a final, non-appealable decision resolving all issues in this
Action. This shall not preclude such consultants and experts from any academic work or

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consulting in future litigation, so long as such consulting does not involve writing source code
directly intended for commercial purposes relating to the technology at issue in this Action.
(e)

Absent the written consent of the Disclosing Party, any person who

receives access to Protected Material shall not be involved in the prosecution of patents or patent
applications relating to the subject matter of the patents-in-suit, before any foreign or domestic
agency, including the United States Patent and Trademark Office. For purposes of this
paragraph, “prosecution” includes, without limitation: (i) the drafting or amending of patent
claims, or the supervising of the drafting or amending of patent claims; (ii) participating in or
advising on any reexamination or reissue proceeding; and (iii) advising any client concerning
strategies for obtaining or preserving patent rights in the above-listed field before the United
States Patent and Trademark Office or other similar foreign government or agency.
Notwithstanding the preceding, for purposes of this paragraph, “prosecution” does not include (i)
any acts taken to discharge the duty of candor and good faith in any proceeding related to the
asserted patents or the technical subject matter of the asserted patents; (ii) participating in or
advising on any reexamination or reissue proceeding by Nokia’s lawyers with respect to any
patents in which Apple has any interest, or participating in or advising on any reexamination or
reissue proceeding (except for participating in or advising on, directly or indirectly, claim
drafting or amending claims) by Apple’s lawyers with respect to any patents in which Apple has
any interest; (iii) participating in or advising on any reexamination or reissue proceeding by
Apple’s lawyers with respect to any patents in which Nokia has any interest, or participating in
or advising on any reexamination or reissue proceeding (except for participating in or advising
on, directly or indirectly, claim drafting or amending claims) by Nokia’s lawyers with respect to
any patents in which Nokia has any interest. This prohibition on patent prosecution shall begin

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when an individual obtains access to the Protective Material and shall end two (2) years after the
final resolution of this Action, including all appeals. This prosecution bar is personal to the
person receiving Protected Material in this Action and shall not be imputed to any other person
or entity.
7.6

Procedures for Approving Disclosure of “CONFIDENTIAL,” “HIGHLY

CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” and “HIGHLY CONFIDENTIAL –
SOURCE CODE” Information or Items to “Outside Consultants”
(a)

Unless otherwise ordered by the Court or agreed in writing by the

Designating Party, a Receiving Party that seeks to disclose to an Outside Consultant (as defined
in this Order) any Protected Material first must notify the Designating Party at least ten (10)
business days before the first of such disclosure. The notification must include: (i) the name of
the Outside Consultant, (ii) and the name of his or her employer(s) during the last five (5) years,
(iii) a current copy of the Outside Consultant’s resume or CV, (iv) if an Outside Consultant for
Nokia, whether he or she has done any work for, or been adverse to, Apple, Inc. in the last five
(5) years, and if an Outside Consultant for Apple, whether he or she has done any work for, or
been adverse to, Nokia, Inc., Nokia, Corp. or Nokia Seimens Network in the last five (5) years,
and (v) a list of any clients for whom the Outside Consultant has done any consulting in the area
of wireless telecommunications during the last five (5) years. If any Outside Consultant is
unable to comply fully with the requirements of this paragraph due to confidentiality restrictions,
the Receiving Party must so state in the notification, and the parties must confer in good faith to
address any reasonable concerns of the Designating Party.
(b)

A Receiving Party that makes a request and provides to the

Designating Party the information specified in Section 7.4 (a) above may disclose Protected

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Material to the identified Outside Consultant unless, within ten (10) business days of making the
notification, the Receiving Party receives a written objection from the Designating Party. Any
such objection must be made for good cause and set forth in detail the grounds on which it is
based.
(c)

A Receiving Party that receives a timely written objection must

meet and confer with the Designating Party to try to resolve the matter by agreement. If no
agreement is reached within five (5) business days, the Party challenging the disclosure to the
Outside Consultant may file a motion in compliance with Local Rule 5.1.3, if applicable, seeking
a Protective Order from the Court to prohibit the disclosure to the Outside Consultant. Any such
notice must describe the circumstances with specificity, set forth in detail the reasons for the
challenge, assess the risk of harm from the use of the Designating Party’s Protected Material for
purposes other than this Action, and may suggest any additional means that might be used to
reduce that risk. In addition, any such motion must be accompanied by a competent declaration
in which the movant describes the Parties’ efforts to resolve the matter by agreement. The
Designating Party shall have the burden of proof by a preponderance of the evidence on the issue
of the sufficiency of the objection(s). If the Party challenging the disclosure files a timely
motion for Protective Order, Protected Material shall not be disclosed to the challenged
individual until and unless a final ruling allowing such disclosure is made by this Court, or by the
consent of the Producing Party, whichever occurs first. If the Party challenging the disclosure
fails to file a proper motion within five (5) business days of having met and conferred, the
Receiving Party may disclose the Protected Material to the Outside Consultant. Disagreement by
the Designating Party that the Outside Consultant is competent to render an admissible opinion
in this Action is not a valid basis for refusing disclosure. Likewise, the disclosure of designated

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material to an Outside Consultant under the terms of this Order may not be used as evidence that
the Producing Party acquiesced to the expertise or qualifications of the Outside Consultant.
8.

PRODUCTION OF HIGHLY CONFIDENTIAL – SOURCE CODE

MATERIALS.
8.1

To the extent that a party wishes to obtain access to HIGHLY

CONFIDENTIAL – SOURCE CODE, the following procedures may apply at the option of the
Producing Party. Nothing in this Order shall be construed as a representation or admission by a
party that HIGHLY CONFIDENTIAL – SOURCE CODE is properly discoverable in this
Action, or to obligate any party to produce HIGHLY CONFIDENTIAL – SOURCE CODE.
8.2

The following provisions apply to the production of HIGHLY

CONFIDENTIAL – SOURCE CODE unless otherwise agreed by the Producing Party:
(a)

All HIGHLY CONFIDENTIAL – SOURCE CODE shall be made

available by the Producing Party to the Receiving Party in a secure room, the domestic location
and facility of which the Producing Party shall select, on at least two secured, stand-alone
computers (running a reasonably current version of the Microsoft Windows operating system)
per software platform produced (in the case of Nokia HIGHLY CONFIDENTIAL – SOURCE
CODE, for example, produced software platforms may include S60, S40, Qt, and Maemo),
without Internet access or network access to other computers, as necessary and appropriate to
prevent and protect against any unauthorized copying, transmission, removal, or other transfer of
any HIGHLY CONFIDENTIAL – SOURCE CODE outside or away from the computer on
which the HIGHLY CONFIDENTIAL – SOURCE CODE is provided for inspection (hereinafter
“HIGHLY CONFIDENTIAL – SOURCE CODE Computer”). If it should be necessary, the
HIGHLY CONFIDENTIAL – SOURCE CODE Computer may be configured by the Producing

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Party to run other mutually agreed upon operating systems. No more than a total of 25
individuals indentified by the receiving party shall have access to the secure room in which the
Producing Party produces its HIGHLY CONFIDENTIAL – SOURCE CODE.
(b)

The Producing shall install tools that are sufficient for viewing and

searching the code produced, on the platform produced, if such tools exist and are presently used
in the ordinary course of the Producing Party’s business. The Receiving Party’s Outside Counsel
and/or Outside Consultants may request that commercially available software tools for viewing
and searching HIGHLY CONFIDENTIAL – SOURCE CODE be installed on the secured
computer, provided, however, that such other software tools are reasonably necessary for the
Receiving Party to perform its review of the HIGHLY CONFIDENTIAL – SOURCE CODE
consistent with all of the protections herein. Specific tools may include — but are not limited to:
Visual Slick Edit, Source-Navigator, PowerGrep, and ExamDiff Pro, or other similar programs.
The Receiving Party must provide the Producing Party with the CD or DVD containing such
licensed software tool(s) at least five (5) days in advance of the date upon which the receiving
party wishes to have the additional software tools available for use on the HIGHLY
CONFIDENTIAL – SOURCE CODE Computer. The Receiving Party shall not at any time use
any compilers, interpreters or simulators in connection with the Producing Party’s HIGHLY
CONFIDENTIAL – SOURCE CODE.
(c)

The Producing Party shall make the HIGHLY CONFIDENTIAL –

SOURCE CODE available electronically and in text searchable form in a secure room at the
offices of the Producing Party’s Outside Counsel or any other location mutually agreed by the
parties.

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(d)

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In order to verify that its HIGHLY CONFIDENTIAL – SOURCE CODE

has not later been altered, the Producing Party may benchmark the materials before and after
they are provided but shall not install any keystroke or other monitoring software on the
HIGHLY CONFIDENTIAL – SOURCE CODE Computer.
(e)

The HIGHLY CONFIDENTIAL – SOURCE CODE Computer shall be

made available from 9 am to 7 pm local time, Monday through Friday (excluding holidays), and
other days and/or times, including weekends, upon reasonable request until the close of
discovery in this Action. Access on weekends or after hours shall be permitted only on three
days advanced written notice.
(f)

Prior to the first inspection of any requested piece of HIGHLY

CONFIDENTIAL – SOURCE CODE, the Requesting Party shall provide fourteen (14) days
notice of the HIGHLY CONFIDENTIAL – SOURCE CODE that it wishes to inspect. The
requesting party shall provide two (2) days notice prior to any additional inspections of the same
HIGHLY CONFIDENTIAL – SOURCE CODE, although the parties will be reasonable in
accommodating requests of less than two (2) days. The Receiving Party shall identify any
individual who will be given access to the HIGHLY CONFIDENTIAL – SOURCE CODE at
least ten (10) days prior to the first time any such individual is given access to the HIGHLY
CONFIDENTIAL – SOURCE CODE, after which time the Producing Party may object to
providing access to any persons so identified. The Receiving Party shall provide two (2) days
notice any time each such individual is given access to the HIGHLY CONFIDENTIAL –
SOURCE CODE after the first time, although the parties will be reasonable in accommodating
notice of less than two (2) days. If an objection to an individual is made by the Producing Party,

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it will be the burden of the Producing Party to prove that the individual should not be authorized
to inspect the Producing Party’s HIGHLY CONFIDENTIAL – SOURCE CODE.
(g)

Proper identification of all authorized persons shall be provided prior to

any access to the secure room or the HIGHLY CONFIDENTIAL – SOURCE CODE Computer.
Proper identification requires showing, at a minimum, a photo identification card sanctioned by
the government of any State of the United States, by the government of the United States, or by
the nation state of the authorized person’s current citizenship. Access to the secure room or the
HIGHLY CONFIDENTIAL – SOURCE CODE Computer may be denied, at the discretion of
the Producing Party, to any individual who fails to provide proper identification.
(h)

The HIGHLY CONFIDENTIAL – SOURCE CODE Computer shall be

equipped with a printer (with commercially reasonable printing speeds) to print copies of the
HIGHLY CONFIDENTIAL – SOURCE CODE on watermarked pre-Bates numbered paper,
which shall be provided by the Producing Party. The Receiving Party may print limited portions
of the HIGHLY CONFIDENTIAL – SOURCE CODE only when reasonably necessary to
facilitate the Receiving Party’s preparation of court filings, expert reports, and trial exhibits, and
shall print only such portions as are relevant to the claims and defenses in the case and are
reasonably necessary for such purpose. The Receiving Party shall not print HIGHLY
CONFIDENTIAL – SOURCE CODE in order to review blocks of HIGHLY CONFIDENTIAL –
SOURCE CODE elsewhere in the first instance, i.e., as an alternative to reviewing that HIGHLY
CONFIDENTIAL – SOURCE CODE electronically on the HIGHLY CONFIDENTIAL –
SOURCE CODE Computer, as the parties acknowledge and agree that the purpose of the
protections herein would be frustrated by printing portions of code for review and analysis
elsewhere. If the Producing Party objects that the printed portions are excessive and/or not done

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for a permitted purpose, the Producing Party shall make such objection known to the receiving
party within five (5) days. Printed portions which exceed 50 continuous pages or 10% or more
of a specific software release shall be presumed excessive and not done for a permitted purpose.
If, after meeting and conferring, the Producing Party and the Receiving Party cannot resolve the
objection, the Producing Party shall be entitled to seek the Court’s resolution of whether the
printed HIGHLY CONFIDENTIAL – SOURCE CODE in question is narrowly tailored and was
printed for a permitted purpose. The burden shall be on the Receiving Party to demonstrate that
such printed portions are no more than is reasonably necessary for a permitted purpose and not
merely printed for the purposes of review and analysis elsewhere. No more than a total of 30
individuals indentified by the receiving party shall have access to the printed portions of
HIGHLY CONFIDENTIAL – SOURCE CODE (except insofar as such code appears in any
filing with the Court or expert report in this Action).
(i)

The printed HIGHLY CONFIDENTIAL – SOURCE CODE shall be

labeled with “[PRODUCING PARTY’S NAME] HIGHLY CONFIDENTIAL – SOURCE
CODE – SUBJECT TO PROTECTIVE ORDER.” Outside Counsel for the Producing Party will
keep the originals of these printed documents, and copies shall be made for Outside Counsel for
the Receiving Party on watermarked paper within 48 hours. The Receiving Party’s Outside
Counsel may make no more than ten (10) additional paper copies of any portions of the
HIGHLY CONFIDENTIAL – SOURCE CODE received from a Producing Party, not including
copies attached to court filings or used at depositions.
(j)

In addition to other reasonable steps to maintain the security and

confidentiality of the Producing Party’s HIGHLY CONFIDENTIAL – SOURCE CODE, printed
copies of the HIGHLY CONFIDENTIAL – SOURCE CODE maintained by the Receiving Party

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must be kept in a locked storage container when not in use. No electronic copies of the
HIGHLY CONFIDENTIAL – SOURCE CODE shall be provided by the Producing Party
beyond the HIGHLY CONFIDENTIAL – SOURCE CODE Computer.
(k)

Except as provided herein, absent express written permission from the

Producing Party, the Receiving Party may not create electronic images, or any other images, or
make electronic copies, of the HIGHLY CONFIDENTIAL – SOURCE CODE from any paper
copy of HIGHLY CONFIDENTIAL – SOURCE CODE for use in any manner (including, by
way of example only, the Receiving Party may not scan the HIGHLY CONFIDENTIAL –
SOURCE CODE to a PDF or photograph the code). Images or copies of HIGHLY
CONFIDENTIAL – SOURCE CODE shall not be included in correspondence between the
parties (references to production numbers shall be used instead), and shall be omitted from
pleadings and other papers whenever possible. If a party reasonably believes that it needs to
submit a portion of HIGHLY CONFIDENTIAL – SOURCE CODE as part of a filing with the
Court, the Parties shall meet and confer as to how to make such a filing while protecting the
confidentiality of the HIGHLY CONFIDENTIAL – SOURCE CODE and such filing will not be
made absent agreement from the Producing Party that the confidentiality protections will be
adequate. If a Producing Party agrees to produce an electronic copy of all or any portion of its
HIGHLY CONFIDENTIAL – SOURCE CODE or provide written permission to the receiving
party that an electronic or any other copy needs to be made for a Court filing, the Receiving
Party’s communication and/or disclosure of electronic files or other materials containing any
portion of HIGHLY CONFIDENTIAL – SOURCE CODE (paper or electronic) shall at all times
be limited to solely individuals who are expressly authorized to view HIGHLY
CONFIDENTIAL – SOURCE CODE under the provisions of this Order, and all such individuals

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must be identified on the log as reviewers and/or recipients of paper copies in accordance with
paragraph 8.2(p). In the case where the Producing Party has provided the express written
permission required under this provision for a receiving party to create electronic copies of
HIGHLY CONFIDENTIAL – SOURCE CODE, the electronic copies shall be included on the
log required by paragraph 8.2(p) and any other information required by paragraph 8.2(p) shall be
included on the log. Additionally, any such electronic copies must be labeled “[PRODUCING
PARTY’S NAME] HIGHLY CONFIDENTIAL – SOURCE CODE – SUBJECT TO
PROTECTIVE ORDER” as provided for in this Order.
(l)

For depositions, the Receiving Party shall not bring copies of any printed

HIGHLY CONFIDENTIAL – SOURCE CODE. Rather, at least five (5) days before the date of
the deposition, the Receiving Party shall notify the Producing Party about the specific portions of
HIGHLY CONFIDENTIAL – SOURCE CODE it wishes to use at the deposition, and the
Producing Party shall bring printed copies of those portions to the deposition for use by the
receiving party. Copies of HIGHLY CONFIDENTIAL – SOURCE CODE that are marked as
deposition exhibits shall not be provided to the court reporter or attached to deposition
transcripts; rather, the deposition record will identify the exhibit by its production numbers. All
paper copies of HIGHLY CONFIDENTIAL – SOURCE CODE brought to the deposition shall
be securely destroyed in a timely manner following the deposition.
(m)

Other than the HIGHLY CONFIDENTIAL – SOURCE CODE Computer

and printer provided by the Producing Party, no electronic devices, including but not limited to
laptops, floppy drives, zip drives, or other hardware shall be permitted in the secure room. Nor
shall any cellular telephones, personal digital assistants, Blackberries, cameras, voice recorders,
Dictaphones, telephone jacks, or other devices be permitted inside the secure room. No non-

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electronic devices capable of similar functionality shall be permitted in the secure room. The
Receiving Party shall be entitled to take notes relating to the HIGHLY CONFIDENTIAL –
SOURCE CODE but may not copy the HIGHLY CONFIDENTIAL – SOURCE CODE into the
notes and may not take such notes electronically on the HIGHLY CONFIDENTIAL – SOURCE
CODE Computer itself or any other computer. No copies of all or any portion of the HIGHLY
CONFIDENTIAL – SOURCE CODE may leave the room in which the HIGHLY
CONFIDENTIAL – SOURCE CODE is inspected except as otherwise provided herein. Further,
no other written or electronic record of the HIGHLY CONFIDENTIAL – SOURCE CODE is
permitted except as otherwise provided herein. The Producing Party may visually monitor the
activities of the Receiving Party’s representatives during any HIGHLY CONFIDENTIAL –
SOURCE CODE review, but only to ensure that no unauthorized electronic records of the
HIGHLY CONFIDENTIAL – SOURCE CODE and that no information concerning the
HIGHLY CONFIDENTIAL – SOURCE CODE are being created or transmitted in any way.
(n)

Other than as provided 8.1(i), the Receiving Party will not copy, remove,

or otherwise transfer any HIGHLY CONFIDENTIAL – SOURCE CODE from the HIGHLY
CONFIDENTIAL – SOURCE CODE Computer including, without limitation, copying,
removing, or transferring the HIGHLY CONFIDENTIAL – SOURCE CODE onto any
recordable media or recordable device, including without limitation sound recorders, computers,
cellular telephones, peripheral equipment, cameras, CDs, DVDs, or drives of any kind. The
Receiving Party will not transmit any HIGHLY CONFIDENTIAL – SOURCE CODE in any
way from the Producing Party’s facilities or the offices of its outside counsel.
(o)

Unless otherwise agreed in advance by the parties in writing, following

each day on which inspection is done under this Order, the Receiving Party’s Outside Counsel

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and/or Outside Consultants shall remove all notes, documents, and all other materials from the
secure room. The Producing Party shall not be responsible for any items left in the room
following each inspection session, and the receiving party shall have no expectation of
confidentiality for any items left in the room following each inspection session without a
prior agreement to that effect.
(p)

The Receiving Party shall maintain a HIGHLY CONFIDENTIAL –

SOURCE CODE Access Log identifying each hard copy (or electronic copy as permitted by
paragraph 8.2(k)) of HIGHLY CONFIDENTIAL – SOURCE CODE that it has in its possession
and, for each and every time the hard copy (or electronic copy as permitted by paragraph 8.2(k))
of the HIGHLY CONFIDENTIAL – SOURCE CODE is viewed: (i) the name of each person
who viewed the HIGHLY CONFIDENTIAL – SOURCE CODE; (ii) the date and time of access;
(iii) the length of time of access; and (iv) whether any, and if so what, portion of the HIGHLY
CONFIDENTIAL – SOURCE CODE was copied. The Producing Party shall be entitled to a
copy of the log upon one (1) day’s advance notice to the receiving party. Within thirty (30) days
after the issuance of a final, non-appealable decision resolving all issues in the Action, the
Receiving Party must serve upon the Producing Party the HIGHLY CONFIDENTIAL –
SOURCE CODE Access Log. All persons to whom the paper copies of the HIGHLY
CONFIDENTIAL – SOURCE CODE were provided must certify in writing that all copies of the
HIGHLY CONFIDENTIAL – SOURCE CODE were returned to Outside Counsel for the
Producing Party and that they will make no use of the HIGHLY CONFIDENTIAL – SOURCE
CODE or of any knowledge gained from the HIGHLY CONFIDENTIAL – SOURCE CODE in
any future endeavor.

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8.3.

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Access to and review of the HIGHLY CONFIDENTIAL – SOURCE

CODE shall be strictly for the purpose of investigating the claims and defenses at issue in this
Action. No person shall review or analyze any HIGHLY CONFIDENTIAL – SOURCE CODE
for purposes unrelated to this Action, nor may any person use any knowledge gained as a result
of reviewing HIGHLY CONFIDENTIAL – SOURCE CODE in this Action in any other
pending or future dispute, proceeding, patent prosecution, or litigation.
8.4.

Nothing herein shall be deemed a waiver of a party’s right to object to the

production of HIGHLY CONFIDENTIAL – SOURCE CODE. Absent a subsequent and
specific court or agency order, nothing herein shall obligate a party to breach any non-party
license agreement relating to such HIGHLY CONFIDENTIAL – SOURCE CODE.
8.5.

The parties further acknowledge that some or all of the HIGHLY

CONFIDENTIAL – SOURCE CODE may be owned by non-parties and outside a party’s
possession, custody or control. Nothing herein shall be deemed a waiver of any non-party’s
right to object to the production of HIGHLY CONFIDENTIAL – SOURCE CODE or object to
the manner of any such production.
9.

PROTECTED MATERIAL SUBPOENAED OR ORDERED PRODUCED IN

OTHER LITIGATION
9.1

If a Receiving Party is served with a subpoena or an order issued in other

litigation that would compel disclosure of any information or items designated in this action as
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE,” the Receiving Party must so notify the
Designating Party, in writing, promptly and in no event more than ten (10) business days after

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receiving the subpoena or order. Such notification must include a copy of the subpoena or court
order.
9.2

The Receiving Party also must immediately inform in writing the party

who caused the subpoena or order to issue in the other litigation that some or all the material
covered by the subpoena or order is the subject of this Order. In addition, the Receiving Party
must deliver a copy of this Order promptly to the party in the other action that caused the
subpoena or order to issue.
9.3

The purpose of imposing these duties is to alert the interested parties to the

existence of this 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. The
Designating Party shall bear the burdens and the expenses of seeking protection in that court of
its confidential material, and nothing in these provisions should be construed as authorizing or
encouraging a Receiving Party in this action to disobey a lawful directive from another court.
10.

UNAUTHORIZED DISCLOSURE OF PROTECTED MATERIAL

If a Receiving Party learns that, by inadvertence or otherwise, it has disclosed Protected
Material to any person or in any circumstance not authorized under this Order, the Receiving
Party must immediately (a) notify in writing the Designating Party of the unauthorized
disclosures, (b) use its best efforts to retrieve all copies of the Protected Material, (c) inform the
person or persons to whom unauthorized disclosures were made of all the terms of this Order,
and (d) request that such person or persons execute the “Acknowledgment and Agreement to Be
Bound By Protective Order” that is attached hereto as Exhibit A.

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11.

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FILING PROTECTED MATERIAL

Without written permission from the Designating Party or a court order secured after
appropriate notice to all interested persons, a Party may not publicly file in this Action any
Protected Material. With regard to filing Protected Material under seal in accordance with Local
Rule 5.1.3, the parties submit and the Court finds that there will be documents filed in this case
that include confidential, proprietary and commercially sensitive information that can only be
protected by sealing the documents and those portions of the memoranda that discuss the
documents. The Court finds that this information is of a private business nature and is not of
great public interest.
In the event that any “CONFIDENTIAL,” “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL – SOURCE CODE”
information is included with, or the contents thereof are in any way disclosed in any pleading,
motion, deposition, transcript or other paper filed with the Clerk of this Court, such information
shall be filed with the Clerk of the Court, without need of a motion, in sealed envelopes or
containers marked with the caption of the case, a general description of the contents of the
envelope or container and a legend substantially in the following form:
“UNDER SEAL – SUBJECT TO PROTECTIVE ORDER –
CONTAINS CONFIDENTIAL OR HIGHLY CONFIDENTIAL
MATERIAL – TO BE OPENED ONLY BY OR AS DIRECTED
BY THE COURT.”
Notwithstanding the foregoing, however, “CONFIDENTIAL,” “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or “HIGHLY CONFIDENTIAL –
SOURCE CODE” documents or testimony introduced into evidence at trial shall not be sealed or
otherwise treated as confidential by the Court except pursuant to a further order of the Court at
the request of either party during pretrial proceedings or at trial.

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12.

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DISCOVERY FROM OUTSIDE CONSULTANTS
(a).

The Parties agree that they will not seek drafts of expert reports,

declarations, affidavits, or notes taken by experts retained to testify in this Investigation, whether
those reports, declarations, affidavits, or notes relate to this Action, to any prior investigation,
litigation or proceeding which was disclosed to the parties under paragraph 7.6 of the Protective
Order, or to any currently pending investigation, litigation or proceeding involving any of the
Parties to this Action.1 The Parties further agree that they will not seek documents relating to
communications between such experts and counsel, including e-mail communications, whether
generated in connection with this Action, a prior litigation, or any currently pending
investigation, litigation or proceeding involving any of the Parties to this Action, except for
documents, information and things included in or attached to such communications that are
directly relied upon by the expert in his or her expert report, declaration, affidavit, or testimony.
(b).

The Parties agree not to inquire at deposition or trial as to the contents of

drafts of expert reports, declarations or affidavits, nor notes pertaining thereto, whether drafted in
connection with this Action, a prior litigation, or any currently pending investigation, litigation
or proceeding involving two or more of the Parties to this Action, and that the Parties will not
inquire at deposition or at trial as to the expert’s communications, written or oral, with counsel,
whether generated in connection with this Action, a prior litigation, or any currently pending
investigation, litigation or proceeding involving two or more of the Parties to this Action, except

1

For purposes of this Paragraph, “any currently pending investigation, litigation or
proceeding involving two or more of the Parties in this Action” includes: In the Matter of
Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers,
337-TA-701; In the Matter of Certain Mobile Communications and Computer Devices and
Components Thereof, 337-TA-704; Nokia v. Apple, Case No. 10-cv-00249 (W.D. Wis.) Nokia v.
Apple, Case No. 09-cv-791 (D. Del.); and Nokia v. Apple, Case No. 09-cv-1002 (D. Del.).
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to the extent that the expert explicitly references or cites information from counsel in his or her
expert report, declaration, affidavit, or testimony.
(c).

The Parties will, however, identify and produce copies of any documents

referenced or cited by the expert in his or her expert report. Furthermore, nothing in this
Paragraph is intended to restrict the Parties’ ability to (i) inquire into the basis of any of the
opinions expressed by any experts in his or her report, declaration, or affidavit, including the
manner by which such opinions were reached, and information considered in reaching such
opinions; (ii) otherwise inquire into the process by which an expert report, affidavit or
declaration was drafted, provided that, in so doing, the Parties may not discover the contents of
any such drafts of expert reports, declarations or affidavits, nor notes pertaining thereto; or (iii)
obtain reports, testimony, or other discovery or evidence produced in any prior litigation or any
currently pending investigation, litigation or proceeding involving two or more of the Parties to
this Investigation.
13.

COMMUNICATIONS BETWEEN PARTY AND COUNSEL

The parties agree that privileged or protected communications occurring on or after
October 22, 2009 need not be recorded on the Party’s privilege log in this case.
14.

FINAL DISPOSITION

Unless otherwise ordered or agreed in writing by the Producing Party, within 90 calendar
days after the final termination of this Action, each Receiving Party must return all Protected
Material to the Producing Party. As used in this subdivision, “all Protected Material” includes
all copies, abstracts, compilations, summaries or any other form of reproducing or capturing any
of the Protected Material. In lieu of returning to the Producing Party, counsel for a Receiving
Party may destroy any Protected Material that is intertwined with attorney work product or

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privileged communications. With permission in writing from the Designating Party, the
Receiving Party may destroy some or all of the remaining Protected Material instead of returning
it. Whether the Protected Material is returned or destroyed, the Receiving Party must submit a
written certification to the Producing Party (and, if not the same person or entity, to the
Designating Party) by the 90 calendar day deadline that verifies all the Protected Material was
returned or destroyed and that affirms that the Receiving Party has not retained any copies,
abstracts, compilations, summaries or other forms of reproducing or capturing any of the
Protected Material. Notwithstanding this provision, Counsel are entitled to retain an archival
copy of all pleadings, expert reports, motion papers, deposition and hearing transcripts, legal
memoranda, correspondence and attorney work product, even if such materials contain Protected
Material. Any such archival copies that contain or constitute Protected Material remain subject
to this Order as set forth in Section 4 (DURATION) above.
15.

MISCELLANEOUS
15.1

Right to Further Relief. Nothing in this Order abridges the right of any

person to seek its modification by the Court in the future. The Parties may by stipulation provide
for exceptions to this Order, provided that such stipulation is presented to the Court as a Consent
Order, and any Party may seek an order of this Court modifying or interpreting this Order.
15.2

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

no Party waives any right it otherwise would have to object to disclosing or producing any
information or item on any ground not addressed in this Order or from asserting that certain
discovery materials should receive greater confidentiality protection than that provided herein, in
accordance with Rule 26(c) of the Federal Rules of Civil Procedure. Similarly, no Party waives
any right to object on any ground to use in evidence of any of the material covered by this Order.

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Case 1:09-cv-00791-GMS Document 51

15.3

Filed 06/01/10 Page 36 of 37

Waiver of Notice. Any of the notice requirements herein may be waived,

in whole or in part, but only by a writing signed by Counsel for the Party against whom such
waiver will be effective.
15.4

Enforcement. The United States District Court for the District of

Delaware is responsible for the interpretation and enforcement of this Order. All disputes
concerning Protected Material produced under the protection of this Order shall be resolved by
this Court. In the event anyone shall violate or threaten to violate the terms of this Order, subject
to meet and confer obligations in the Court’s Local Rules, the aggrieved party may apply to
obtain injunctive relief against any such person, and in such event, the respondent, subject to the
terms of this Order, shall not employ as a defense thereto the claim that the aggrieved party
possesses an adequate remedy at law. The parties and any other person subject to the terms of
this Order agree that they will subject themselves to the jurisdiction of this Court for the purpose
of any proceedings related to performance under, compliance with, or violation of this Order.
15.5

No Waiver. Nothing in this Order, or the taking of any action in

accordance with the provisions of this Order, or the failure to object thereto, shall be construed as
a waiver or admission of any claim or defense in the Action. The failure to object to a
designation shall not constitute an admission by the Receiving Party that the designated
information is in fact trade secret or proprietary information. This Order shall not in any way
limit what a party may do or disclose with its own documents or information. Nothing in this
Order shall be deemed to preclude a party from seeking and obtaining, on an appropriate
showing, different or additional protections or relief regarding matter designated as containing
“CONFIDENTIAL,” “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY,” or
“HIGHLY CONFIDENTIAL – SOURCE CODE” information.

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MORRIS, NICHOLS, ARSHT & TUNNELL LLP

POTTER, ANDERSON & CORROON LLP

/s/ Jack B. Blumenfeld

/s/ David E. Moore

____________________________________
Jack B. Blumenfeld (#1014)
Rodger D. Smith II (#3778)
1201 North Market Street
P.O. Box 1347
Wilmington, DE 19899
[phone]
[e-mail]
[e-mail]

____________________________________
Richard L. Horwitz (#2246)
David E. Moore (#3983)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19899
[phone]
[e-mail]
[e-mail]

Attorneys for Nokia Corporation and Nokia
Inc.

Attorneys for Apple Inc.

Dated: June 1, 2010

SO ORDERED this ___ day of _______ 2010.

_________________________________________
United States District Court Judge

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Case 1:09-cv-00791-GMS Document 51-1

Filed 06/01/10 Page 1 of 3

EXHIBIT A

Case 1:09-cv-00791-GMS Document 51-1

Filed 06/01/10 Page 2 of 3

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
NOKIA CORPORATION
Plaintiff,
v.

C.A. No. 09-791-GMS

APPLE INC.
Defendant.

APPLE INC.
Counterclaim-Plaintiff,
v.
NOKIA CORPORATION and NOKIA INC.,
Counterclaim-Defendants.

Agreement To Be Bound By Protective Order
I have read and understand the terms and restrictions of the Joint Protective Order
entered in the above-captioned action by the Court. I understand the provisions of the
Joint Protective Order, and I understand the responsibilities and obligations the Joint
Protective Order imposes on persons viewing the litigation material which is subject to
the Joint Protective Order (the “Protected Material”). I understand that any violation of
the terms of the Joint Protective Order may constitute contempt of a court order. In
accordance with the Joint Protective Order, so as to permit me to view the Protected
Material, or produce the Protected Material, which is subject to the Joint Protective
Order, I hereby agree to be bound by all of its provisions and terms, and I hereby submit
to the jurisdiction of the District Court for the District of Delaware for the purposes of
enforcement of the Joint Protective Order.
I shall not use or disclose to others, except in accordance with the Joint Protective
Order, any Protected Material. I understand that, if I fail to abide by the terms of the
Joint Protective Order, I may be subject to sanctions by way of contempt of Court,
separate legal and equitable recourse by the adversely affected Producing Party, or other
appropriate relief.

Case 1:09-cv-00791-GMS Document 51-1

Dated: ______________________

Filed 06/01/10 Page 3 of 3

By:
__________________________
Name: __________________________
Title: __________________________