Prism Technologies v. Adobe Systems Incorporated et al

Filing 366

MEMORANDUM AND ORDER - The parties shall submit to the Court a Joint Motion for Entry of Stipulated Protective Order incorporating the decisions of this Court as delineated herein by November 21, 2011. (Case Management Deadline set for 11/21/2011) Ordered by Senior Judge Lyle E. Strom. (TEL)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
ADOBE SYSTEMS, INCORPORATED, )
AUTODESK, INC.; McAFEE, INC., )
NATIONAL INSTRUMENTS
)
CORPORATION; SAGE SOFTWARE,
)
INC., SYMANTEC CORPORATION;
)
THE MATHWORKS, INC., and
)
TREND MICRO INCORPORATED,
)
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

This matter is before the Court on plaintiff’s motion
for protective order governing the disclosure and use of
discovery materials (Filing No. 277) and defendant’s motion for
entry of protective order (Filing No. 285), both pursuant to
Federal Rule of Civil Procedure 26(c).

The parties have

identified two areas of disagreement in their respective proposed
protective orders.
I.

Section 9:

Source Code Review and Printing.

“A party or any person from whom discovery is sought
may move for a protective order in the court where the action is
pending . . . .

The court may, for good cause, issue an order to

protect a party or person from annoyance, embarrassment,
oppression, or undue burden or expense . . . .”
26(c)(1).

Fed. R. Civ. P.

The rule particularly allows for an order

(B) specifying terms, including
time and place, for the disclosure
or discovery;
(C) prescribing a discovery method
other than the one selected by the
party seeking discovery; . . .
(E) designating the persons who may
be present while the discovery is
conducted; . . . [and]
(G) requiring that a trade secret
or other confidential research,
development, or commercial
information not be revealed or be
revealed only in a specified way
. . . .
Fed. R. Civ. P. 26(c)(1).
The Court acknowledges that “Defendants have vital
concerns about the confidentiality of their products’ source
code” (Filing No. 301, at 2).

The Court agrees that a loss of

the confidentiality of the defendants’ source code would result
in “irreparable injury” (Filing No. 301, at 3).

The Court finds

that unlimited printing of defendants’ source code, plus the
relinquishment of an electronic copy, solely at the location of
plaintiffs’ counsel or other approved expert, would unduly risk
defendants’ hard-fought confidentiality of this investment.

The

Court will adopt in its protection order the section 9 language
proposed by the defendants (Ex. 2, Filing No. 287, at 5-9), with
one exception, which is that the first sentence of section
9(b)(ii) will be modified to read as follows: “Printed
sections/electronic images of source code exceeding 75 continuous
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pages of code and 1,000 pages cumulatively shall be presumed
excessive . . . .”
II.

Privilege Logs Pursuant to Fed. R. Civ. P. 26(b)(5).
Federal Rule of Civil Procedure 26(b)(5)(A) reads,
(5) Claiming Privilege or
Protecting Trial-Preparation
Materials.
(A) Information Withheld. When a
party withholds information
otherwise discoverable by claiming
that the information is privileged
or subject to protection as
trial-preparation material, the
party must:
(i) expressly make the claim; and
(ii) describe the nature of the
documents, communications, or
tangible things not produced or
disclosed -- and do so in a manner
that, without revealing information
itself privileged or protected,
will enable other parties to assess
the claim.

Fed. R. Civ. P. 26(b)(5)(A).

“Thus, a party wishing to invoke

the privilege in responding to document discovery must assert it
as to all documents to which it may apply.”

PaineWebber Grp.,

Inc. v. Zinsmeyer Trusts P’ship, 187 F.3d 988, 992 (8th Cir.
1999).

This naturally requires some discernment by the party,

because “Whether a document is in fact privileged can be a
difficult question . . . .”

Id.

Absent agreement among the

parties, the question is necessarily “decided by the tribunal
conducting the proceeding in which the privilege has been
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asserted.

The party seeking discovery cannot see the allegedly

privileged documents -- that might waive the privilege -- so the
dispute is usually resolved by submitting them to the tribunal in
camera.

This is an awkward, time-consuming process.”

Id.

The

creation of the privilege log pursuant to Rule 26(b)(5) can aid
the court in its resolution of a dispute, but “The tribunal
ultimately decides what information must be disclosed on a
privileged document log.”

Id.

Some courts have adopted assumptions that limit the
necessity to create such “privilege logs” of communications
between a party and counsel in cases where attorney-client
privilege is evident, particularly when the communications are
voluminous.
examples.

Defendants cite two cases, one unreported, as
The United States District Court for the Northern

District of California has written, “[C]ounsel’s communications
with the client and work product developed once the litigation
commences are presumptively privileged and need not be included
on any privilege log. . . . Plaintiff’s motion to compel is
therefore denied to the extent it seeks to require a log of
post-litigation counsel communications and work product . . . .”
Ryan Inv. Corp. v. Pedregal De Cabo San Lucas, No. C 06-3219,
2009 U.S. Dist. LEXIS 118337, at *9 (N.D. Cal. Dec. 18, 2009).
Similarly, the United States District Court for the
District of New York has written, “[P]rivilege logs are commonly

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limited to documents created before the date litigation was
initiated. . . . [I]n many situations, it can be assumed that all
documents created after . . . a lawsuit has been filed and
withheld on the grounds of privilege were created ‘because of’
that pending litigation.”

U.S. v. Bouchard Transp., No. 08-CV-

4490, 2010 WL 1529248, at *2 (E.D.N.Y. 2010).

Further, in a

footnote, that court stated, “I find that Plaintiff is legally
required to produce a privilege log for all documents created
before the date this lawsuit was filed . . . .”

Id. at *2 n.1.

In this case, plaintiff has requested discovery of
“DOCUMENTS evidencing any communications between YOU and any
other person or entity, INCLUDING all named DEFENDANTS to this
litigation, or their counsel, regarding the PATENT-IN-SUIT, Prism
and/or the instant litigation” from each defendant (Ex. 11,
Filing No. 287, at 17).

Defendants propose that this Court make

an assumption about communications between the parties and their
attorneys that occurred after the date the litigation began, such
that “only those communications regarding the conduct of this
litigation that occurred before the lawsuit began need be logged”
and “communications regarding the conduct of this litigation
occurring since the litigation was filed need not be logged”
(Filing No. 286, at 9).

Plaintiff argues that this assumption

should equally apply to its communications with counsel before
the litigation began, because its use of the counsel for this

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action has been limited to this action (Filing No. 319, at 10).
Plaintiff does not supply any case law in support of this
contention.

In the alternative, plaintiff argues, “Because the

parties cannot agree, they should simply follow the Federal Rule
for purposes of logging communications with current outside
litigation counsel” (Filing No. 278, at 7).
The Court finds the reasoning of the other district
courts cited above persuasive regarding an assumption of
attorney-client privilege regarding communications between the
parties and their counsel that took place after the litigation
began, especially in light of the extensive discovery requested
by plaintiff.

Thus, the Court will adopt in its protection order

the section 25 language proposed by the defendants (Ex. 2, Filing
No. 287, at 17).
IV.

Sections 10(e) and 23.
The parties have made representations to the Court that

the only differences in the two proposed protective orders are in
sections 9 and 25 (Ex. 3, Filing No. 279, at 2; Filing No. 286,
at 2-3).

However, the Court notes that plaintiff’s proposed

protection order (Ex. 2, Filing No. 279, at 8) contains a section
10(e), while defendants’ proposed order does not (Ex. 2, Filing
No. 287, at 10).

In addition, the last sentence of section 23 in

defendants’ proposed order has an extra clause that is not
present in plaintiff’s proposed order.

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The parties will resolve

these differences, and any others that may exist, in accordance
with this memorandum and order, as applicable.

Accordingly,

IT IS ORDERED that the parties shall submit to the
Court a Joint Motion for Entry of Stipulated Protective Order
incorporating the decisions of this Court as delineated herein by
November 21, 2011.
DATED this 14th day of November, 2011.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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