Prism Technologies v. Adobe Systems Incorporated et al

Filing 829

MEMORANDUM AND ORDER - Prism's motion to amend protective order (Filing No. 762 ) is denied; McAfee's motion to strike damages expert report (Filing No. 770 ) is granted. Prism shall produce a new expert report as to McAfee in complia nce with the November 22, 2011, protective order by August 9, 2012. McAfee shall serve a responsive report by August 30, 2012; Symantec's motion to strike Prism's expert report on damages (Filing No. 775 ) is granted. Prism shall pro duce a new expert report as to Symantec in compliance with the November 22, 2011, protective order by August 9, 2012; Symantec shall serve a responsive report by August 30, 2012; and Trend's motion to strike Prism's damages expert r eport (Filing No. 785 ) is granted. Prism shall produce a new expert report as to Trend in compliance with the November 22, 2011, protective order by August 9, 2012. Trend shall serve a responsive report by August 30, 2012. 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.; )
SYMANTEC CORPORATION;
)
and TREND MICRO INCORPORATED, )
)
Defendants.
)
______________________________)

8:10CV220

MEMORANDUM AND ORDER

This matter is before the Court on the motion of
plaintiff Prism Technologies, LLC (“Prism”), to amend the
November 22, 2011, protective order previously filed in this case
(Filing No. 762, with accompanying brief and indices of evidence,
Filing Nos. 763, 764, and 765).

Defendants Adobe Systems,

Incorporated (“Adobe”) and Autodesk, Inc. (“Autodesk”) filed a
joint opposing brief with indices of evidence (Filing Nos. 795,
796, 798, and 815).

Defendants McAfee, Inc. (“McAfee”), Symantec

Corporation (“Symantec”) and Trend Micro Incorporated (“Trend”)
also filed a joint opposing brief with indices of evidence
(Filing Nos. 799, 800, and 802).

Prism filed a joint reply brief

with indices of evidence (Filing Nos. 823, 824, and 826).

After

review of the motion, briefs, evidence, and relevant law, the
Court finds that the motion to amend the protective order will be
denied.

Also before the Court are motions by Defendants McAfee,
Symantec, and Trend to strike Prism’s initial expert report
regarding damages as served on each defendant, with briefs and
indices of evidence (McAfee, Filing Nos. 770, 772, 773, and 774,
to which Prism responded, Filing Nos. 809 and 810; Symantec,
Filing Nos. 775, 777, 778, and 779, to which Prism responded,
Filing Nos. 803, 804, and 806; and Trend, Filing Nos. 785, 787,
788, and 789, to which Prism responded, Filing Nos. 807 and 808).
McAfee, Symantec, and Trend replied jointly (Filing Nos. 820,
821, and 822).

After review of the motions, briefs, evidence,

and relevant law, the Court finds that the motions to strike will
be granted.
I.

Prism’s Motion to Amend Protective Order.
The parties entered into a protective order on November

22, 2011 (Filing No. 390).

Paragraph 28 of the protective order

reads,
28. This Protective Order is
entered without prejudice to the
right of any party to seek
different or additional protections
if it believes the protections of
this order are not applicable or
are inadequate. Nothing herein
shall be deemed to preclude any
Producing Party from seeking such
different or additional protection,
including that certain matter not
be produced at all.
(Id., at 18).

Pursuant to paragraph 28, Prism seeks to modify

two paragraphs in the protective order.
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Paragraph 8(c) of the protective order, together with
paragraph 8, states,
8. “Highly Confidential –
Attorneys’ Eyes Only” Material.
Only the following individuals
shall have access to materials
designated “HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY,” absent the
express written consent of the
Producing Party or further court
order: . . . (c) Outside experts,
consultants, and indemnitors of the
Receiving Party who have been
pre-approved in accordance with
Paragraph 13, and their support
staff and clerical employees
assisting in the litigation; except
that any indemnitor, outside expert
or consultant retained by a
defendant shall not have access to
any co-defendants’
“HIGHLY-CONFIDENTIAL – ATTORNEYS’
EYES ONLY” material without prior
written consent of the Producing
Party;
(Id., at 4).

Prism wants to change this paragraph “by removing

the phrase ‘outside expert or consultant’ from the third line of
Paragraph 8(c)” (Filing No. 762, at 1).
Paragraph 33 of the protective order, titled
“Disposition of Protected Materials,” states,
33. Unless otherwise ordered or
agreed, within sixty (60) days
after the settlement or final
termination of this action
(whichever is earlier for a
particular party), each Receiving
Party shall, at its option, return
or destroy all Protected Material,
including all notes, abstracts,
compilations, summaries or any
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other form of reproducing or
capturing of any Protected
Material, and all printed or
duplicated source code material and
all notes or other materials
derived therefrom, as described
in paragraph 9(b). Outside counsel
for each party shall remind any
experts, consultants and others as
appropriate of their obligation to
destroy or return Protected
Materials. The Receiving Party
shall submit a written
certification by the sixty (60) day
deadline confirming that all
Protected Material has been
destroyed (or handled as otherwise
ordered or agreed) and which
affirms that the Receiving Party
has not retained any paper or
electronic copies. Notwithstanding
this provision, outside counsel of
record are entitled to retain an
archival copy of all pleadings,
motion papers, briefs, exhibits,
transcripts, written discovery,
expert reports, legal memoranda,
attorney work product and
correspondence, even if such
materials contain or reflect
Protected Material. Any such
archival copies remain subject to
the terms of this Protective Order.
(Filing No. 390, at 19-20).

Prism requests that the Court issue

an order “to permit information produced by any of the remaining
parties to this litigation and relied upon by an expert to be
used by the Receiving Party through final disposition of the
case” (Filing No. 762, at 1).

All five defendants object to the

proposed modifications to the protective order.

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Quite simply, the Court finds that Prism has not shown
good cause for why Prism should now be allowed unilateral
modification to the protective order simply because two of its
requirements have become inconvenient for Prism.

The Court notes

that Prism could have sued (and would now likely be required to
sue) each defendant in a separate action, which would have
obviated the present problem altogether.

The motion to amend

protective order is denied.
II.

McAfee’s, Symantec’s, and Trend’s Motions to Strike.
Prism has separately served McAfee, Symantec, and Trend

with Prism’s initial expert report as to damages for each
defendant, prepared by Prism’s expert, Wayne Hoeberlein.

Prism’s

expert report for each of these three defendants relies on
“highly confidential” information, as defined by the protective
order, of all five of the remaining co-defendants.

The receiving

defendant’s own damages experts cannot survey or make use of this
information from the other co-defendants pursuant to paragraph
8(c) of the protective order.
Thus, McAfee, Symantec, and Trend each move the Court
for an order “requiring Prism to serve a new expert report that
does not rely upon information of [each defendant’s]
co-Defendants that was not identified or produced to [that
defendant] during fact discovery as being relevant to Prism’s
damages case against [that defendant], including information that

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[that defendant’s] co-Defendants have designated ‘Highly
Confidential – Attorney’s Eyes Only’ pursuant to the Protective
Order (‘Undisclosed Information’)” (Filing Nos. 770, 775, and
785, at 1).

McAfee and Symantec each state, “In its July 2, 2012

Order (Doc. 758), the Court recognized that the protective order
to which Plaintiff had stipulated (Doc. 390) prohibited [that
defendant’s] expert from reviewing the Undisclosed Information
even though Mr. Hoeberlein referred to and relied upon the
Undisclosed Information in making his report” (Filing Nos. 770
and 775, at 2).

In addition, “The [d]efendants who designated

the Undisclosed Information “Highly Confidential – Attorney’s
Eyes Only” do not consent to its being made available to [that
defendant], making revision of the Protective Order impossible”
(Filing Nos. 770 and 775, at 3).

“Even if the other [d]efendants

did agree that [that defendant] and its expert could review the
Undisclosed Information, it is far too late for [that defendant]
to respond effectively to it” (Id.).
Trend states that it “has been denied access to the
full scope of the Undisclosed Information and the ability to seek
further information or discovery from its co-Defendants about the
Undisclosed Information” (Filing No. 785, at 3).

McAfee,

Symantec, and Trend each state, “The only effective way to cure
this prejudice . . . is for Prism to serve an expert report that

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does not rely on the Undisclosed Information” (Filing Nos. 770,
775, and 785, at 3).
The Court has previously found that it is inherently
unreasonable to allow Prism’s expert access to information that
defendants’ experts cannot access (Filing No. 758).
the motions to strike will be granted.1

Accordingly,

Accordingly,

IT IS ORDERED:
1) Prism’s motion to amend protective order (Filing No.
762) is denied;
2) McAfee’s motion to strike damages expert report
(Filing No. 770) is granted.

Prism shall produce a new expert

report as to McAfee in compliance with the November 22, 2011,
protective order by August 9, 2012.

McAfee shall serve a

responsive report by August 30, 2012;
3) Symantec’s motion to strike Prism’s expert report on
damages (Filing No. 775) is granted.

Prism shall produce a new

expert report as to Symantec in compliance with the November 22,
2011, protective order by August 9, 2012; Symantec shall serve a
responsive report by August 30, 2012; and
4) Trend’s motion to strike Prism’s damages expert
report (Filing No. 785) is granted.
1

Prism shall produce a new

McAfee, Symantec, and Trend also argue that Prism’s
initial expert reports on damages should be stricken because of
discovery rule violations by Prism. Because the Court will
strike the reports in connection with the November 22, 2011,
protective order, the Court does not reach any decision on the
discovery rule violations issue.
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expert report as to Trend in compliance with the November 22,
2011, protective order by August 9, 2012.

Trend shall serve a

responsive report by August 30, 2012.
DATED this 26th day of July, 2012.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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