National Institute for Strategic Technology Acquisition and Commercialization (NISTAC) v. Nissan North America, Inc. et al

Filing 28

PROTECTIVE ORDER per agreed motion 27 . Signed by District Judge George Caram Steeh. (MBea)

UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
)
)
)
) Case No. 2:11-cv-11039-GCS-LJM
Plaintiff/Counter-Defendant,
)
) HON. GEORGE C. STEEH
)
v.
)
NISSAN NORTH AMERICA, INC.,
)
NISSAN MOTOR CO. LTD.,
)
)
FUJI HEAVY INDUSTRIES, LTD.,
)
SUBARU OF AMERICA, INC.,
)
TOYOTA MOTOR SALES, U.S.A. INC.,
)
TOYOTA MOTOR ENGINEERING &
MANUFACTURING NORTH AMERICA, INC., )
)
and
)
AMERICAN HONDA MOTOR CO., INC.,
)
)
Defendants
NATIONAL INSTITUTE FOR STRATEGIC
TECHNOLOGY ACQUISITION AND
COMMERCIALIZATION (NISTAC)

PROTECTIVE ORDER
This Protective Order is issued to facilitate document disclosure and production under the
Local Rules of this Court and the Federal Rules of Civil Procedure. Unless modified pursuant to
the terms contained in this Order, this Order shall remain in effect through the conclusion of this
litigation.
In support of this order, the Court finds that:
1.

Documents and information containing confidential, proprietary, and business
information and/or trade secrets (“Confidential Information”) that bear significantly on
the parties’ claims or defenses is likely to be disclosed or produced during the course of
discovery in this litigation;

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2.

The parties to this litigation1 as well as any third parties involved in this litigation2 may
assert that dissemination and disclosure of Confidential Information could severely injure
or damage the party disclosing or producing the Confidential Information and could place
that party at a competitive disadvantage; and

3.

To protect the respective interests of the parties and to facilitate the progress of disclosure
and discovery in this case, the following Order should issue:

IT IS THEREFORE ORDERED THAT:
1.

Confidential Designations. Documents or discovery responses containing Confidential

Information disclosed or produced by any party in this litigation (“Producing Party”), or
testimony given in this litigation disclosing Confidential Information, may be designated as
“CONFIDENTIAL.” Any Confidential Information which would likely harm the competitive
position of the Producing Party if disclosed publicly, or to any employees of the parties to this
litigation, may be designated by the Producing Party as “CONFIDENTIAL—OUTSIDE
COUNSELS’ EYES ONLY.” Such Confidential Information disclosed or produced in this
litigation is entitled to confidential treatment as described below.
Confidential Information shall not include materials that on their face show that they
have been published to the general public or documents that have been submitted to any
governmental entity without request for confidential treatment.

1

The Defendants in this action are organized into four Defendant Groups. Defendants Nissan North America, Inc.
and Nissan Motor Co. Ltd. comprise the “Nissan Defendant Group.” Defendants Fuji Heavy Industries Ltd. and
Subaru of America, Inc. comprise the “Subaru Defendant Group.” Defendants Toyota Motor Sales, U.S.A. Inc. and
Toyota Motor Engineering & Manufacturing North America, Inc. comprise the “Toyota Defendant Group.”
American Honda Motor Co., Inc. comprises the “Honda Defendant Group.” Unless otherwise noted, members of
the Defendant Groups shall be considered “parties” for purposes of this Order. 
2

Unless otherwise noted, the terms of this Protective Order shall apply equally to parties and third parties and this
Protective Order shall not distinguish a party to this litigation and a third party. 

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2.

Challenging Confidential Designations. At any time after the delivery of Confidential

Information designated as “CONFIDENTIAL” or “CONFIDENTIAL—OUTSIDE COUNSELS’
EYES ONLY,” counsel for the party or parties receiving the Confidential Information
(“Receiving Party”) may challenge the confidential designation of all or any portion thereof by
providing written notice thereof to counsel for the Producing Party. If the parties are unable to
agree as to whether the confidential designation of Confidential Information is appropriate, the
Receiving Party shall certify to the Court that the parties cannot reach an agreement as to the
confidential nature of all or a portion of the designated Confidential Information and shall
specifically identify those portions thereof which the Receiving Party contends are not entitled to
confidential treatment. Thereafter, the Receiving Party shall have ten (10) business days from
the date of certification to file a motion with the Court challenging the designation of any
designated Confidential Information in dispute. The Producing Party shall have the burden, in
response to such motion by the Receiving Party, of establishing that the designated Confidential
Information in dispute is entitled to confidential treatment. If the Receiving Party does not
timely file a motion as described herein, then the designated Confidential Information in dispute
shall remain subject to confidential treatment as provided in this Order.
All designated Confidential Information is entitled to confidential treatment pursuant to
the terms of this Order until and unless the parties formally agree in writing to the contrary, or a
contrary determination is made by the Court as to whether all or a portion of the designated
Confidential Information is entitled to confidential treatment.
3.

Use of Confidential Information. Confidential Information received by a Receiving

Party shall not be used or shown, disseminated, copied, or in any way communicated to anyone

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for any purpose whatsoever, except for purposes of this civil action in the manner provided for
below.
Confidential Information received by a Receiving Party shall be used solely for the
prosecution or defense of this litigation, and for no other purpose.
A Receiving Party shall not under any circumstances sell, offer for sale, advertise, or
publicize a Producing Party’s Confidential Information.
Nothing in this Protective Order shall limit any Producing Party’s use of its own
Confidential Information, nor shall prevent the Producing Party from disclosing its own
Confidential Information to any person. Such disclosure shall not affect any designations made
pursuant to the terms of this Protective Order, so long as the disclosure is made in a manner
which is reasonably calculated to maintain the confidentiality of the information.
Nothing in this Protective Order shall prevent or otherwise restrict counsel from
rendering advice to their clients and, in the course of rendering such advice, relying upon the
examination of Confidential Information of other parties.

In rendering such advice and

otherwise communicating with the client, however, counsel shall not disclose the contents,
substance or source of other parties’ Confidential Information, except as permitted by this
Protective Order.
The restrictions on a Receiving Party’s use of Confidential Information set forth in this
Protective Order shall not apply to information which (a) was or became public knowledge, not
in violation of this Protective Order, (b) was or is acquired in good faith from another party, not
in violation of this Protective Order and who has the right to disclose such information, (c) was
or is discovered independently by the Receiving Party without any violation of this Protective

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Order having occurred, or (d) was disclosed by the Producing Party to a third party in the
absence of any understanding or expectation that the information would be kept confidential.
Confidential Information filed with the Court (as exhibits to briefs and for other similar
purposes) shall be filed under seal according to the Eastern District of Michigan’s ECF policies
and pursuant to E.D. Mich. L.R. 5.3.
4.

Disclosure of Confidential Information. Confidential Information shall be disclosed

only to the following persons (“Qualified Persons”):
a)

Confidential Information designated and marked “CONFIDENTIAL—OUTSIDE

COUNSELS’ EYES ONLY” may be disclosed only to:
i.

any person who appears as an author, recipient, or addressee on the face of

the document;
ii.

any officer, director, executive, managing agent, or attorney of the

Producing Party, and such disclosure is limited to Confidential Information
produced by that Party;
iii.

any person who was an officer, director, executive, managing agent, or

attorney of the Producing Party at the time the Confidential Information was
originally created or transmitted, and such disclosure is limited to Confidential
Information produced by that Party;
iv.

former employees of the Producing Party who have created, received, or

reviewed the information or document in the course and scope of their
employment with the Producing Party;

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v.

outside counsel of record in this action for the Receiving Parties, and
associates, employees, and contractors of such counsel assigned to and necessary
to assist such counsel in the preparation and trial of this action;

vi.

independent technical experts or consultants and their support staff who

have been retained by the Receiving Parties and designated pursuant to the
provisions of paragraph 5 below;
vii.

Court reporters, videographers, and third-party vendors that have signed

the “Agreement to Be Bound by Protective Order” (Exhibit A); and
viii.
b)

the Court and its personnel.

In addition to the persons identified in (a) above, Confidential Information

designated and marked as “CONFIDENTIAL” may be disclosed to the Designated
Persons identified in Exhibit B hereto. Only in-house counsel of a party or employees of
a party responsible for legal matters for the party are eligible to be designated as a
Designated Person for a party or Defendant Group.
Before any disclosure of Confidential Information is made to any Designated
Person hereunder, each of the Designated Persons shall be identified in Exhibit B and
shall complete and sign a copy of the acknowledgement form annexed hereto as Exhibit
A, and each such completed and signed form shall be transmitted to outside counsel for
all other parties prior to disclosure of any Confidential Information.

A party then has

ten (10) business days from receipt of same to object to the disclosure of Confidential
Information to the Designated Person. Any objection must be lodged by sending written
notice to the party identifying the Designated Person, setting forth the basis for such
objection. The parties are then required to meet and confer on the objection to the
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proposed Designated Person within five (5) business days of the notice of objection.
Such “meet and confer” may be conducted via telephone. In the event the parties are
unable to reach agreement on the matter, the objecting party must file a Motion for
Protective Order with the Court within ten (10) business days of the notice of objection.
Confidential Information shall not be disclosed to any Designated Person for ten
(10) business days after the disclosure of the Designated Person to allow for time for
objection, and in the event an objection is properly lodged as described above,
Confidential Information shall not be disclosed to the Designated Person until the Court
rules on the objection.
Each party or Defendant Group is limited to no more than two (2) Designated
Persons. Substitution of Designated Persons may occur only upon written agreement by
the parties.
5.

Independent Experts or Consultants.

Before any disclosure of Confidential

Information is made to any independent expert or consultant pursuant to paragraph 4 above, the
following must occur:
a)

The proposed expert or consultant to whom disclosure is to be made must be

given a copy of this Order;
b)

The proposed expert or consultant to whom disclosure is to be made must sign an

undertaking in the form of the attached Exhibit A;
c)

The signed Exhibit A and a current copy of the proposed expert’s or consultant’s

Curriculum Vitae or resume must be provided to all other outside counsel of record for
all other parties, along with the following information about the proposed expert or
consultant:
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i.

business address;

ii.

business title;

iii.

business or profession;

iv.

any previous, current, or anticipated relationship (personal or professional)

with any of the parties;
v.

a listing of all other cases in which, during the previous four (4) years, the
proposed expert or consultant has testified at trial or by deposition; and

vi.

a listing of all companies with which the proposed expert or consultant has

consulted or by which the proposed expert or consultant has been employed,
within the last four (4) years. (In the case of any outside attorney hired as an
independent expert or consultant, the attorney is not required to disclose all clients
whom that attorney has represented within the last four years, except for those
clients who are direct competitors of one or more of the parties in this case.)
A party who has designated or may designate Confidential Information as
“CONFIDENTIAL” or “CONFIDENTIAL—OUTSIDE COUNSELS’ EYES ONLY”
then has ten (10) business days from receipt of the disclosures listed in Paragraph 5(c)(i)(vi) above to object to the disclosure of Confidential Information to the proposed expert
or consultant. Any objection must be lodged by sending written notice to the party
identifying the proposed expert or consultant, setting forth the basis for such objection.
The parties are then required to meet and confer on the objection to the proposed expert
or consultant within five (5) business days of the notice of objection. Such “meet and
confer” may be conducted via telephone. In the event the parties are unable to reach

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agreement on the matter, the objecting party must file a Motion for Protective Order with
the Court within ten (10) business days of the notice of objection.
Confidential Information shall not be disclosed to the proposed expert or
consultant for ten (10) business days after the disclosure of the proposed expert or
consultant to allow for time for objection, and in the event an objection is properly lodged
as described above, Confidential Information shall not be disclosed to the proposed
expert or consultant until the Court rules on the objection.
6.

Definition of “Copy.”

The term “copy” as used herein means any photographic,

mechanical or computerized copy or reproduction of any document or thing, or any verbatim
transcript, in whole or in part, of such document or thing.
7.

Use of Confidential Information with Testimony. To the extent that Confidential

Information is used in depositions, at hearings, or at trial, such Confidential Information shall
remain subject to the provisions of this Order, along with the transcript of the proceeding
referring to the Confidential Information.
A party may designate all or a portion of any transcript of testimony or hearing as
“CONFIDENTIAL” or “CONFIDENTIAL—OUTSIDE COUNSELS’ EYES ONLY” if the
transcript contains or refers to Confidential Information. A party may so designate a transcript
by making a request on the record during the proceeding reflected by the transcript.
Where testimony is designated at a deposition, the designating party shall have the right
to exclude at those portions of the deposition all persons not authorized by the terms of this
Protective Order to receive such Confidential Information.
Any party may, within ten (10) business days after receiving a final deposition transcript,
designate pages of the transcript and/or its exhibits as Confidential Information. If any party so
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designates such material, the parties or deponents shall provide written notice of such
designation to all parties within the ten (10) business day period. Confidential Information
within the final deposition transcript or the exhibits thereto may be identified in writing or by
underlining the relevant portions and marking such portions “CONFIDENTIAL” or
“CONFIDENTIAL—OUTSIDE COUNSELS’ EYES ONLY.” Until the expiration of the ten
(10) business day period, any portion of the deposition not previously designated shall be treated
as “CONFIDENTIAL—OUTSIDE COUNSELS’ EYES ONLY” and subject to protection as
provided by this Protective Order.
Any court reporter or transcriber who reports or transcribes testimony in this action shall
agree that all information designated “CONFIDENTIAL” or “CONFIDENTIAL—OUTSIDE
COUNSELS’ EYES ONLY” under this Order shall remain confidential and shall not be
disclosed by them, except pursuant to the terms of this Order, and that any notes or transcriptions
of such testimony (and any accompanying exhibits) will be retained by the reporter or delivered
to outside counsel of record. The court reporter or transcriber shall include the appropriate
confidentiality legend on a transcript if such a request is made by a party on the record during the
proceeding reflected by the transcript.
8.

Non-Waivers. Inadvertent or unintentional disclosure or production of documents or

information containing Confidential Information which are not designated “CONFIDENTIAL”
or “CONFIDENTIAL—OUTSIDE COUNSELS’ EYES ONLY” shall not be deemed a waiver
in whole or in part of a claim for confidential treatment, so long as such claim is asserted within
fifteen (15) business days of the discovery of the inadvertent failure to so designate such
documents or information. At such time, arrangements shall be made for the Producing Party to
appropriately designate the information in accordance with this Order. The Receiving Party shall
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have no liability, under this Order or otherwise, for any disclosure of information contained in
documents or things not bearing a confidentiality legend occurring before the Receiving Party
was placed on notice of the claims of confidentiality.
9.

Inadvertent Disclosure of Work Product or Privileged Information. Inadvertent

production of documents or things subject to work-product immunity or the attorney-client
privilege shall not constitute a waiver of the immunity or privilege, provided that the Producing
Party shall notify the Receiving Party in writing of such inadvertent production within ten (10)
business days after the earlier of (a) the Producing Party’s discovery of the inadvertent
production or (b) its use in pleadings, motions, or deposition testimony by the Receiving Party.
Upon a request from a party that has inadvertently disclosed or produced a document or thing
that it believes should be subject to the attorney-client privilege, work-product immunity, or any
other applicable privilege or immunity, each party receiving said document or thing shall
immediately either (1) return the document and all copies to counsel for the Producing Party; or
(2) certify in writing that the document and all copies have been destroyed. Nothing herein shall
prevent the Receiving Party from preparing a record for its own use containing the date, author,
addresses, and topic of the document or thing and such other information as is reasonably
necessary to identify the document or thing and describe its nature to the Court in any motion to
compel production of the document or thing.
If the Receiving Party contends that the privilege is improperly asserted and that the
document or information is not privileged, the Receiving Party shall so notify the Producing
Party. The parties shall meet and confer in an attempt to resolve the disagreement, and if after
meet and conferring, the parties are unable to reach a satisfactory agreement, the Receiving Party

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may move this Court to compel the production of the document or thing and must do so within
ten (10) business days after conferring with the Producing Party.
10.

Post-Litigation Disposition of Confidential Information. In the event that any person

or party ceases to be engaged in the conduct of this litigation, such person’s or party’s access to
any and all Confidential Information shall be terminated. In addition, within sixty (60) days of
its ceasing to be engaged in the conduct of this litigation, the person or party shall either: (1)
return all Confidential Information to the counsel for the Producing Party of the Confidential
Information; or (2) certify in writing that such Confidential Information has been destroyed.
In the case of a party ceasing to be engaged in the conduct of this litigation, the remaining
persons and parties shall either: (1) return all Confidential Information disclosed or produced by
the person or party ceasing to be engaged in the conduct of this litigation; or (2) certify in writing
that such Confidential Information has been destroyed.

If, however, one or more of the

remaining persons or parties asserts that certain Confidential Information disclosed or produced
by the party ceasing to be engaged in the conduct of this litigation remains relevant to this
litigation, the parties shall meet and confer with respect to such Confidential Information and, if
relevant, such Confidential Information will not be returned or destroyed until either (1) the
person or party receiving such Confidential Information ceases to be engaged in the conduct of
this litigation or (2) this litigation is terminated by dismissal, judgment, or settlement, including
all appeals, with respect to all Defendants.
The outside counsel for any party may keep their attorney work product which refers or
relates to any Confidential Information, and may retain archive copies of all pleadings (and
exhibits), attorney correspondence, discovery requests and responses (and exhibits), deposition

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transcripts (and exhibits), and trial transcripts (and exhibits offered), including those that contain
or reference Confidential Information.
Notwithstanding this provision, persons identified in paragraphs 4(a) and 4(b) are not
required to delete Confidential Information that may reside on their respective company’s or
firm’s electronic backup systems that are routinely over-written in the normal course of business.
However, these persons agree that after the conclusion of this action, no Confidential
Information shall be retrieved from their backup systems without written consent from the
Producing Party or an order from this Court granting leave for the retrieval.
11.

Continuing Effect After Litigation. After termination of this litigation with respect to

any defendant, the provisions of this Order shall continue to be binding, except with respect to
those documents and information that become a matter of public record. This Court retains and
shall have continuing jurisdiction over the parties and recipients of Confidential Information for
enforcement of the provisions of this Order following termination of this litigation.
12.

Binding Upon Successors. This Order shall be binding upon the parties and their

attorneys, successors, executors, personal representatives, administrators, heirs, legal
representatives, assigns, subsidiaries, divisions, employees, agents, independent contractors, or
other persons or organizations over which they have control.
13.

Modification. The Parties may agree to amend this Protective Order in the event that

modifications become necessary during the course of the litigation. Any proposed modification
requires the agreement of all parties in order to be incorporated in this Protective Order. One or
more parties may move the Court to modify the Protective Order if an agreement on proposed
modifications cannot be reached among all Parties. The Court may modify the terms and

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conditions of this Protective Order for good cause, or in the interest of justice, or on its own
order at any time in these proceedings.

s/George Caram Steeh
United States District Judge
Dated: June 6, 2011

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EXHIBIT A
CONFIDENTIALITY AND UNDERTAKING
FOR RECEIVING CONFIDENTIAL INFORMATION

I, ____________________________, acknowledge and declare that I have received a
copy of the Protective Order (“Order”) in NISTAC v. Nissan North America, Inc., et al; United
States District Court, Eastern District of Michigan, Southern Division, Civil Action No.
2:11cv11039-GSC-LJM. Having read and understood the terms of the Order, I agree to be
bound by the terms of the Order and consent to the jurisdiction of said Court for the purpose of
any proceeding to enforce the terms of the Order.
Name of individual: ____________________________________________________________
Present occupation/job description: ________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
Name of Company or Firm: ______________________________________________________
Address: ______________________________________________________________________
_____________________________________________________________________________
Dated: _____________ __, 201_
___________________________________
[Signature]

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EXHIBIT B

Designated Persons
For NISTAC
1. Name:
Title:
2. Name:
Title:
For the Nissan Defendant Group
1. Name:
Title:
2. Name:
Title:
For the Subaru Defendant Group
1. Name:
Title:
2. Name:
Title:
For the Toyota Defendant Group
1. Name:
Title:
2. Name:
Title:
For the Honda Defendant Group
1. Name:
Title:
2. Name:
Title:

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