Golden Rule Fasteners, Inc. v. The Neverleak Company, LP

Filing 36

PROTECTIVE ORDER. Signed by Magistrate Judge Jane M. Virden on 9/19/18. (bfg)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF MISSISSIPPI
GOLDEN RULE FASTENERS INC.,
Plaintiffs,
vs.
THE NEVERLEAK COMPANY, LP.,
Defendant.

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Civil Action No.:
3:17-cv-249-MPM-JMV

PROTECTIVE ORDER
WHEREAS, Plaintiff GOLDEN RULE FASTENERS INC. (hereinafter,
“Golden Rule”) and Defendant THE NEVERLEAK COMPANY, LP (hereinafter,
“Neverleak”) (hereinafter all together the “Parties”) believe that certain information
produced by the Parties in this Action involves the production or disclosure of trade
secrets, confidential business information, or other proprietary information;
WHEREAS, the Parties seek a protective order limiting disclosure thereof in
accordance with Federal Rule of Civil Procedure 26(c):
THEREFORE, it is hereby stipulated among the Parties and ORDERED that:
1.

Each Party may designate as confidential for protection under this

Order, in whole or in part, any document, electronically stored information, or thing
that constitutes or includes, in whole or in part, confidential or proprietary
information or trade secrets of the Party or a Third Party to whom the Party

reasonably believes it owes an obligation of confidentiality with respect to such
document, information or material (“Protected Material”).
2.

Limited Use of Protected Material. Documents, electronically stored

information, or things produced in this Action, including but not limited to Protected
Material designated “CONFIDENTIAL” or “RESTRICTED - ATTORNEYS’
EYES ONLY” (“DESIGNATED MATERIAL1”), shall be used by the Parties only
in the litigation of this Action and shall not be used for any other purpose. Any
person or entity who obtains access to DESIGNATED MATERIAL or the contents
thereof pursuant to this Order shall not make any copies, duplicates, extracts,
summaries or descriptions of such DESIGNATED MATERIAL or any portion
thereof except as may be reasonably necessary in the litigation of this Action. Any
such copies, duplicates, extracts, summaries or descriptions shall be classified
DESIGNATED MATERIALS and subject to all of the terms and conditions of this
Order.
3.

Limited Access to Protected Material. There shall be no disclosure of

any DESIGNATED MATERIAL by any person authorized to have access thereto

term DESIGNATED MATERIAL is used throughout this Protective Order to
refer to the class of materials designated as “CONFIDENTIAL,” or
“RESTRICTED - ATTORNEYS’ EYES ONLY,” both individually and
collectively. 

1

 The

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PROTECTIVE ORDER

Page |2

to any person who is not authorized for such access under this Order. The Parties
are hereby ORDERED to safeguard all such documents, information and material
to protect against disclosure to any unauthorized persons or entities.
4.

Undertaking. Each person to whom DESIGNATED MATERIAL is

disclosed in accordance with the terms of this Order shall be advised by counsel of
the terms of this Order, shall be informed that he or she is subject to the terms and
conditions of this Order, and shall sign an acknowledgment that he or she has
received a copy of, has read, and has agreed to be bound by this Order. A copy of
the acknowledgment form is attached as Appendix A.
5.

Violations of Protective Order. Any Party knowing or reasonably

believing that any other party is in violation of or intends to violate this Order and
who has raised the question of violation or potential violation with the opposing
party and has been unable to resolve the matter by agreement, may move the Court
for such relief as may be appropriate. Pending disposition of the motion by the
Court, the Party alleged to be in violation of or intending to violate this Order shall
discontinue the performance of and/or shall not undertake the further performance
of any action alleged to constitute a violation of this Order.
6.

Treatment of Designated Material Before Entry of Protective Order.

Any document, electronically stored information, or thing produced before issuance
N.D. Miss. No. 3:17-cv-249-MPM-JMV
PROTECTIVE ORDER

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of this Order with the designation “CONFIDENTIAL” or “RESTRICTED ATTORNEYS’ EYES ONLY” shall receive the same treatment as if so designated
under this Order, unless and until such document is redesignated to have a different
classification under this Order.
7.

Scope of Protective Order. With respect to documents, electronically

stored information or things designated “CONFIDENTIAL” or “RESTRICTED ATTORNEYS’ EYES ONLY” subject to the provisions herein and unless otherwise
stated, this Order governs, without limitation: (a) all documents, electronically
stored information, and/or things as defined by the Federal Rules of Civil Procedure;
(b) all pretrial, hearing or deposition testimony, or documents marked as exhibits or
for identification in depositions and hearings; (c) motions, exhibits to such motions
and other court filings; (d) affidavits; and (e) stipulations. All copies, reproductions,
extracts, digests and complete or partial summaries prepared from any
DESIGNATED

MATERIALS

shall

also

be

considered

DESIGNATED

MATERIAL and treated as such under this Order.
8.

Manner of Designations. Protected Material shall be designated by the

Party producing it by affixing a legend or stamp on such document, information or
material as follows: “CONFIDENTIAL” or “RESTRICTED – ATTORNEYS’
EYES ONLY.” These designations shall be placed clearly on each page of the
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PROTECTIVE ORDER

Page |4

Protected Material (except deposition and hearing transcripts) for which such
protection is sought. If only a portion of the material on a page qualifies for
protection, the designating party shall clearly identify the protected portion and
specify for each portion the level of protection being asserted. For deposition and
hearing transcripts, the word “CONFIDENTIAL” or “RESTRICTED –
ATTORNEYS’ EYES ONLY” shall be placed on the cover page of the transcript (if
not already present on the cover page of the transcript when received from the court
reporter) by each attorney receiving a copy of the transcript after that attorney
receives notice of the designation of some or all of that transcript as
“CONFIDENTIAL” or “RESTRICTED – ATTORNEYS’ EYES ONLY.”
9.

Timing of Designations. A designation of Protected Material (i.e.,

“CONFIDENTIAL” or “RESTRICTED - ATTORNEYS’ EYES ONLY”) must be
made before such Protected Material is disclosed or produced.2

During the

inspection and before the designation, all of the documents, electronically stored
information, and/or things made available for inspection shall be deemed
“RESTRICTED – ATTORNEYS’ EYES ONLY.”

in this Protective Order should be construed to require that the party
making documents, electronically stored information, or things available for
physical inspection is required to print out, make copies of, or otherwise produce
such things in whatever manner requested by another party. The parties shall
separately confer on any protocol related to inspections. 

2

 Nothing

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PROTECTIVE ORDER

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10.

Inadvertent Failures to Designate.

Inadvertent or unintentional

production of documents, electronically stored information or things that has not
been designated as DESIGNATED MATERIAL shall not be deemed a waiver in
whole or in part of a claim for confidential treatment if timely corrected. Upon
timely correction of a designation, the receiving party must make reasonable efforts
to assure that the material is treated in accordance with this Order.
11.

Access to Protected Material.
(a)

A Party shall designate documents, electronically stored information or

things as “CONFIDENTIAL” only upon a good faith belief that such
materials contain confidential or proprietary information or trade secrets of
the Party or a Third Party to whom the Party reasonably believes it owes an
obligation of confidentiality with respect to such documents, information or
material.
(b)

“CONFIDENTIAL” documents, electronically stored information or

things may be disclosed only to the following persons, except upon receipt of
the prior written consent of the designating party or upon order of the Court:
i.
ii.
iii.

outside counsel of record in this Action for the Parties;
employees of such counsel assigned to and reasonably necessary
to assist such counsel in the litigation of this Action;
in-house counsel for the Parties who either have responsibility
for making decisions dealing directly with the litigation of this
Action, or who are assisting outside counsel in the litigation of

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iv.

v.

vi.

this Action;
up to and including three (3) designated representatives of each
of the Parties to the extent reasonably necessary for the litigation
of this Action, except that either party may in good faith request
the other party’s consent to designate one or more additional
representatives, the other party shall not unreasonably withhold
such consent, and the requesting party may seek leave of Court
to designate such additional representative(s) if the requesting
party believes the other party has unreasonably withheld such
consent;
outside consultants or experts (i.e., not existing employees or
affiliates of a Party or an affiliate of a Party) retained for the
purpose of this litigation, provided that: (1) such consultants or
experts are not presently employed by the Parties hereto for
purposes other than this Action; (2) before access is given, the
consultant or expert has completed the Undertaking attached as
Exhibit A hereto and the same is served upon the producing Party
with a current curriculum vitae of the consultant or expert and
list of cases in which such consultant or expert has offered
testimony in the preceding five (5) years at least ten (10) days
before access to the Protected Material is to be given to that
consultant or Undertaking. During this period, the designating
party may object to and notify the receiving Party in writing that
it objects to disclosure of Protected Material to the consultant or
expert. The Parties agree to promptly confer and use good faith
to resolve any such objection. If the Parties are unable to resolve
any objection, the objecting Party may file a motion with the
Court within fifteen (15) days of the notice, or within such other
time as the Parties may agree, seeking a protective order with
respect to the proposed disclosure. The objecting Party shall have
the burden of proving the need for a protective order. No
disclosure shall occur until all such objections are resolved by
agreement or Court order;
independent litigation support services, including persons
working for or as court reporters, graphics or design services,
jury or trial consulting services, and photocopy, document
imaging, and database services retained by counsel and
reasonably necessary to assist counsel with the litigation of this

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vii.
viii.
ix.
(c)

Action;
The parties’ insurers and its counsel;
Any other persons to whom the parties mutually agree in writing;
and
the Court and its personnel.

To the extent a producing Party believes that certain Protected Material
qualifying to be designated CONFIDENTIAL is so sensitive that its
dissemination deserves even further limitation, the producing Party
may

designate

such

Protected

Material

“RESTRICTED

-

ATTORNEYS’ EYES ONLY.”
(d)

“RESTRICTED - ATTORNEYS’ EYES ONLY” documents,
electronically stored information or things may be disclosed only to the
following persons, except upon receipt of the prior written consent of
the designating party or upon order of the Court: individuals listed in
paragraphs 11(b)(i) and 11(b)(v-ix).

12.

Challenges to Designations. A Party may request in writing to the

other Party that the designation given to any DESIGNATED MATERIAL be
modified or withdrawn. If the designating Party does not agree to re-designation
within ten (10) days of receipt of the written request and after meetings and
conferring with the challenging party in good faith, the requesting Party may apply
to the Court for relief. Upon any such application to the Court, the burden shall be
N.D. Miss. No. 3:17-cv-249-MPM-JMV
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on the designating Party to show why its classification is proper. Such application
shall be treated procedurally as a motion to compel pursuant to Federal Rules of
Civil Procedure 37, subject to the Rule’s provisions relating to sanctions. In making
such application, the requirements of the Federal Rules of Civil Procedure and the
Local Rules of the Court including Local Uniform Civil Rules 7 and 79 shall be
met. Pending the Court’s determination of the application, the designation of the
designating Party shall be maintained.
13.

Any attorney representing a Party, whether in-house or outside counsel,

and any person associated with a Party and permitted to receive the other Party’s
Protected Material that is designated RESTRICTED - ATTORNEYS’ EYES
ONLY, who obtains, receives, has access to, or otherwise learns, in whole or in part,
the other Party’s RESTRICTED - ATTORNEYS’ EYES ONLY under this Order
shall not prepare, prosecute, supervise, or assist in the preparation or prosecution of
any patent application pertaining to the field of the invention of the patents-in-suit
on behalf of the receiving Party or its acquirer, successor, predecessor, or other
affiliate during the pendency of this Action and for one year after its conclusion,
including any appeals. To ensure compliance with the purpose of this provision,
each Party shall create an “Ethical Wall” between those persons with access to
RESTRICTED - ATTORNEYS’ EYES ONLY and any individuals who, on behalf
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of the Party or its acquirer, successor, predecessor, or other affiliate, prepare,
prosecute, supervise or assist in the preparation or prosecution of any patent
application pertaining to the field of invention of the patent-in-suit.
14.

Privileged Information. Nothing in this Order shall require production

of documents, information or other material that a Party contends is protected from
disclosure by the attorney-client privilege, the work product doctrine, or other
privilege, doctrine, or immunity. If documents, information or other material
subject to a claim of attorney-client privilege, work product doctrine, or other
privilege, doctrine, or immunity is inadvertently or unintentionally produced, such
production shall in no way prejudice or otherwise constitute a waiver of, or estoppel
as to, any such privilege, doctrine, or immunity. Any Party that inadvertently or
unintentionally produces documents, information or other material it reasonably
believes are protected under the attorney-client privilege, work product doctrine, or
other privilege, doctrine, or immunity may obtain the return of such documents,
information or other material by promptly notifying the recipient(s) and providing
a privilege log for the inadvertently or unintentionally produced documents,
information or other material. The recipient(s) shall gather and return all copies of
such documents, information or other material to the producing Party, except for
any pages containing privileged or otherwise protected markings by the recipient(s),
N.D. Miss. No. 3:17-cv-249-MPM-JMV
PROTECTIVE ORDER

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which pages shall instead be destroyed and certified as such to the producing Party.
15.

Use of Designated Material in Depositions.
(a)

Nothing contained herein shall be construed to prejudice any Party’s

right to use any DESIGNATED MATERIAL in taking testimony at any
deposition or hearing in this Action provided that the DESIGNATED
MATERIAL is only disclosed to a person(s) who is: (i) eligible to have access
to the DESIGNATED MATERIAL by virtue of his or her employment with
the designating party, (ii) identified in the DESIGNATED MATERIAL as an
author, addressee, or copy recipient of such information, (iii) although not
identified as an author, addressee, or copy recipient of such DESIGNATED
MATERIAL, has, in the ordinary course of business, seen such
DESIGNATED MATERIAL, (iv) a current or former officer, director or
employee of the producing Party or a current or former officer, director or
employee of a company affiliated with the producing Party; (v) counsel for a
Party, including outside counsel and in-house counsel (subject to paragraph
11 of this Order); (vi) an independent contractor, consultant, and/or expert
retained for the purpose of this litigation; (vii) court reporters and
videographers; (viii) the Court; or (ix) other persons entitled hereunder to
access to DESIGNATED MATERIAL under Paragraphs 11(b) and (d).
N.D. Miss. No. 3:17-cv-249-MPM-JMV
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(b)

Parties may, at deposition or within thirty (30) days after receipt of a

deposition transcript, designate the deposition or any portion thereof as
“CONFIDENTIAL” or “RESTRICTED - ATTORNEY’ EYES ONLY”
pursuant to this Order. Access to the deposition or hearing transcript so
designated shall be limited in accordance with the terms of this Order. Until
expiration of the 30-day period, the entire deposition transcript shall be
treated as confidential.
16.

Filing of Designated Materials. In the event any party wishes to file

any DESIGNATED MATERIAL under seal, it shall be filed in accordance with
Local Uniform Civil Rule 79 and all of its requirements shall be followed in all
respects.
17.

Use of Designated Material at Trial or Hearings. The Order applies to

all pretrial activities, including without limitation discovery and motions
(dispositive and non-dispositive) practice. Nothing in this Order shall be deemed to
prevent the Parties from introducing any DESIGNATED MATERIAL into
evidence at the trial of this Action, or from using any information contained in
DESIGNATED MATERIAL at the trial of this Action, subject to requests to seal
under Local Uniform Civil Rule 79 and any pretrial order or other order issued by
this Court.
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18.

Application of Protective Order to Third-Parties.
(a)

To the extent that any discovery is taken of persons who are not Parties

to this Action (“Third Parties”) and in the event that such Third Parties
contend the discovery sought involves trade secrets, confidential business
information, or other proprietary information, then such Third Parties may
agree to be bound by this Order.
(b)

To the extent that discovery or testimony is taken of Third Parties, the

Third Parties may designate as “CONFIDENTIAL” or “RESTRICTED ATTORNEYS’ EYES ONLY” any documents, information or other
material, in whole or in part, produced or given by such Third Parties. The
Third Parties shall have ten (10) days after production of such documents,
information or other materials to make such a designation. Until that time
period lapses or until such a designation has been made, whichever occurs
sooner, all documents, information or other material so produced or given
shall be treated as “CONFIDENTIAL” in accordance with this Order.
19.

Termination of Action. Within thirty (30) days of final termination of

this Action, including any appeals, all DESIGNATED MATERIAL, including all
copies, duplicates, abstracts, indexes, summaries, descriptions, and excerpts or
extracts thereof (excluding excerpts or extracts incorporated into any privileged
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memoranda of the Parties and materials which have been admitted into evidence in
this Action), shall at the producing Party’s election either be returned to the
producing Party or be deleted from any electronic media upon which that
DESIGNATED MATERIAL was stored using standard methods for deleting files
from media. The receiving Party shall verify compliance with this paragraph in
writing to the producing Party, upon the producing Party’s request. This Court shall
retain jurisdiction to resolve any dispute concerning the use of information disclosed
under this Protective Order during the pendency of this Action.
20.

Production of DESIGNATED MATERIAL by each of the Parties shall

not be deemed a publication of the documents, information and material (or the
contents thereof) produced so as to void or make voidable whatever claim the Parties
may have as to the proprietary and confidential nature of the documents, information
or other material or its contents.
21.

Each of the Parties shall also retain the right to file a motion with the

Court (a) to modify this Order to allow disclosure of DESIGNATED MATERIAL
to additional persons or entities if reasonably necessary to prepare and present this
Action and (b) to apply for additional protection of DESIGNATED MATERIAL.
22.

Notwithstanding any of the forgoing, the Court retains the right to

amend or revise this Order at its discretion.
N.D. Miss. No. 3:17-cv-249-MPM-JMV
PROTECTIVE ORDER

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SO ORDERED THIS 19th day of September, 2018.

/s/ Jane M. Virden
U.S. MAGISTRATE JUDGE

N.D. Miss. No. 3:17-cv-249-MPM-JMV
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Respectfully submitted: August 30, 2018.
/s/ Erik S. Heninger (MSB #100951)
ERIK S. HENINGER
/s/ James F. McDonough, III
JAMES F. MCDONOUGH, III
ATTORNEYS FOR PLAINTIFFS
Of Counsel:
HENINGER GARRISON & DAVIS, LLC
2224 1st Avenue North
Birmingham, Alabama 35203
[phone] (phone)
[phone] (facsimile)
HENINGER GARRISON & DAVIS, LLC
3621 Vinings Slope, Suite 4320
Atlanta, GA 30339-3372
[phone] (telephone)
[phone] (facsimile)

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Respectfully submitted: August 30, 2018.
/s/ Kate M. Embry
J. CAL MAYO, JR. (MB No. 8492)
KATE M. EMBRY (MB No. 102731)
ATTORNEYS FOR DEFENDANT
Of Counsel:
MAYO MALLETTE PLLC
2094 Old Taylor Road
5 University Office Park
Post Office Box 1456
Oxford, Mississippi 38655
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
KILPATRICK TOWNSEND & STOCKTON LLP
Megan M. Chung (Admitted Pro Hac Vice)
Erwin L. Cena (Admitted Pro Hac Vice)
12255 El Camino Real, Suite 250
San Diego, California 92130
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

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CERTIFICATE OF SERVICE
I hereby certify that on August 30, 2018, the foregoing document(s) was
filed with the Court using the Court’s electronic filing system, emailed, and/or
mailed via U.S. Mail, postage pre-paid, to the following party or parties of record:
MAYO MALLETTE PLLC
J. Cal Mayo, Jr.
Kate M. Embry
2094 Old Taylor Road
5 University Office Park
Post Office Box 1456
Oxford, Mississippi 38655
KILPATRICK TOWNSEND & STOCKTON LLP
Megan M. Chung (Admitted Pro Hac Vice)
Erwin L. Cena (Admitted Pro Hac Vice)
12255 El Camino Real, Suite 250
San Diego, California 92130
/s/ Erik S. Heninger (MSB #100951)
ERIK S. HENINGER
/s/ James F. McDonough, III
JAMES F. MCDONOUGH, III
ATTORNEYS FOR PLAINTIFFS

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF MISSISSIPPI
GOLDEN RULE FASTENERS INC.,
Plaintiffs,
vs.
THE NEVERLEAK COMPANY, LP.,
Defendant.

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Civil Action No.:
3:17-cv-249-MPM-JMV

APPENDIX A
UNDERTAKING OF EXPERTS OR CONSULTANTS REGARDING
PROTECTIVE ORDER
I, ___________________________________________, declare that:
1.

My address is _________________________________________________.
My current employer is _________________________________________.
My current occupation is ________________________________________.

2.
3.

4.

5.

I have received a copy of the Protective Order in this action. I have carefully
read and understand the provisions of the Protective Order.
I will comply with all of the provisions of the Protective Order. I will hold in
confidence, will not disclose to anyone not qualified under the Protective
Order, and will use only for purposes of this action any information designated
as “CONFIDENTIAL” or “RESTRICTED - ATTORNEYS’ EYES ONLY”
that is disclosed to me.
Promptly upon termination of this action, I will return all documents and
things designated as “CONFIDENTIAL” or “RESTRICTED ATTORNEYS’ EYES ONLY” that came into my possession, and all
documents and things that I have prepared relating thereto, to the outside
counsel for the party by whom I am employed.
I hereby submit to the jurisdiction of this Court for the purpose of enforcement
of the Protective Order in this action.
I declare under penalty of perjury that the foregoing is true and correct.

Signature

Date

N.D. Miss. No. 3:17-cv-249-MPM-JMV
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