Vishay Dale Electronics, Inc. v. Rohm Co., Ltd.

Filing 28

STIPULATED PROTECTIVE ORDER - Upon motion of the parties (filing 26 ), the Court enters the stipulated protective order pursuant to Federal Rule of Civil Procedure 26(c)(1). Ordered by Magistrate Judge F.A. Gossett. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
VISHAY DALE ELECTRONICS, INC.,
Plaintiff,

)
)
)

8:13-CV-03201

)
v.

)
)

ROHM CO., LTD

)
)
Defendant.

)

STIPULATED PROTECTIVE ORDER
Upon motion of the parties (filing 26), the Court enters the following
stipulated protective order pursuant to Federal Rule of Civil Procedure 26(c)(1):
1.

Findings: The Court finds that the parties to this case may request or

produce information involving trade secrets or confidential research and
development or commercial information, the disclosure of which is likely to cause
harm to the party producing such information.
2.

Definitions:
a. “Party” means a named party in this case.
b. “Person” means an individual or an entity.
c. “Producer” means a person who produces information via the

discovery process in this case.
d. “Recipient” means a person who receives information via the
discovery process in this case.

e. “Confidential” information is information concerning a person’s
business operations, processes, and technical and development information within
the scope of Rule 26(c)(1)(G), the disclosure of which is likely to harm that person’s
competitive position, or the disclosure of which would contravene an obligation of
confidentiality to a third person or to a Court.
f. “Highly Confidential” information is information within the scope of
Rule 26(c)(1)(G) that is current or future business or technical trade secrets and
plans more sensitive or strategic than Confidential information, the disclosure of
which is likely to significantly harm that person’s competitive position, or the
disclosure of which would contravene an obligation of confidentiality to a third
person or to a Court. Highly Confidential information, includes, but is not limited
to:
(i)

non-public product designs, trade secret information, and new or

ongoing confidential research or development information, all of which have not yet
been released to the public or trade;
(ii)

non-public

pending

or

future

patent

applications

and

information relating to non-public pending or future patent applications;
(iii)

proprietary financial information;

(iv)

marketing or business plans, strategic business information or

plans, competitive information or plans; and
(v)

third party manufacturer or supplier agreements.

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3.

Information is not Confidential or Highly Confidential if it is disclosed

in a printed publication, is known to the public, was known to the recipient without
obligation of confidentiality before the producer disclosed it, or is or becomes known
to the recipient by means not constituting a breach of this Order. Information is
likewise not Confidential or Highly Confidential if a person lawfully obtained it
independently of this litigation, and without any obligation of confidentiality.
4.

Designation of information as Confidential or Highly Confidential:
a. A person’s designation of information as Confidential or Highly

Confidential means that the person believes in good faith, upon reasonable inquiry,
that the information qualifies as such.
b. A person designates information in a document or thing as
Confidential or Highly Confidential by clearly and prominently marking it on its
face as “CONFIDENTIAL” or “HIGHLY CONFIDENTIAL.” A producer may make
documents or things containing Confidential or Highly Confidential information
available for inspection and copying without marking them as confidential without
forfeiting a claim of confidentiality, so long as the producer causes copies of the
documents or things to be marked as Confidential or Highly Confidential before
providing them to the recipient.
c. A person designates information in deposition testimony as
Confidential or Highly Confidential by stating on the record at the deposition that
the information is Confidential or Highly Confidential or by advising the opposing
party and the stenographer and videographer in writing, within fourteen days after

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receipt of the deposition transcript, that the information is Confidential or Highly
Confidential.

Unless notified sooner by the deponent, the deposition transcript

together with all information contained therein and exhibits thereto, shall be
treated as “Highly Confidential” for the above-referenced fourteen-day period.
d. A person’s failure to designate a document, thing, or testimony as
Confidential or Highly Confidential does not constitute forfeiture of a claim of
confidentiality as to any other document, thing, or testimony.
e. A person who has designated information as Confidential or Highly
Confidential may withdraw the designation by written notification to all parties in
the case.
f. If a party disputes a producer’s designation of information as
Confidential or Highly Confidential, the disputing party shall notify the producer in
writing of the basis for the dispute, identifying the specific document[s] or thing[s]
as to which the designation is disputed and proposing a new designation for such
materials. The disputing party and the producer shall then meet and confer to
attempt to resolve the dispute without involvement of the Court. If the parties
cannot resolve the dispute, the disputing party may file a motion with the Court to
challenge the producer’s designation. The producer bears the burden of proving
that the information is properly designated as Confidential or Highly Confidential.
The information shall remain subject to the producer’s Confidential or Highly
Confidential designation until the Court rules on the dispute. A party’s failure to

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contest a designation of information as Confidential or Highly Confidential is not an
admission that the information was properly designated as such.
5.

Use and disclosure of Confidential or Highly Confidential information:
a. Confidential and Highly Confidential information may be used

exclusively for purposes of this litigation, subject to the restrictions of this order.
b. Absent written permission from the producer or further order by the
Court, the recipient may not disclose Confidential information to any person other
than the following: (i) a party’s outside counsel of record, including necessary
paralegal, secretarial and clerical personnel assisting such counsel; (ii) a party’s
in‐house counsel, identified below; (iii) a total of three party officers or employees
directly involved in this case whose access to the information is reasonably required
to supervise, manage, or participate in this case, identified below; (iv) a
stenographer and videographer recording testimony concerning the information; (v)
subject to the provisions of paragraph 5(d) of this order, experts and consultants
and their staff whom a party employs for purposes of this litigation only; and (vi)
the Court and personnel assisting the Court.
Plaintiff’s In-House Counsel
James Arnold, Esquire
Director of Intellectual Property
Vishay Intertechnology, Inc.

Defendant’s In-House Counsel
Yasuhiro Nagao
Assistant Manager/Patent Attorney
Intellectual Property Division
Rohm Co., Ltd.

Plaintiff’s Business Representatives
(Name and Title)
1) Joel J. Smejkal
Sr. VP Global Distribution
Vishay Intertechnology, Inc.

Defendant’s Business
Representatives (Name and Title)
1) Takaaki Nagura
General Manager
Intellectual Property Division
Rohm Co., Ltd.
5

Plaintiff’s Business Representatives
(Name and Title)
2) Keith Raysby
Sr. VP Dale Resistors
Vishay Intertechnology, Inc.

Defendant’s Business
Representatives (Name and Title)
2) Masanori Tanimura
Division Manager
Resistor Division
Rohm Co., Ltd.
3) Takashi Nishio, Ph.D.
Supervisor
Intellectual Property Division
Rohm Co., Ltd.

3) Clark Smith
Sr. Director R&D
Vishay Intertechnology, Inc.

c. Absent written permission from the producer or further order by the
Court, the recipient may not disclose Highly Confidential information to any person
other than those identified in paragraph 5(b)(i),(iv),(v), and (vi).
d. A party may not disclose Confidential or, to the extent applicable,
Highly Confidential information to in-house counsel pursuant to paragraph 5(b)(ii),
a party officer or employee pursuant to 5(b)(iii), or an expert or consultant pursuant
to paragraphs 5(b)(v) or 5(c) of this order until after such person(s) sign an
undertaking in the form of Appendix A to this Order. The party obtaining the
undertaking must serve it on all other parties within ten days after its execution.
e. At least ten days before the first disclosure of Confidential or Highly
Confidential information to an expert or consultant (or member of their staff)
pursuant to paragraphs 5(b)(v) or 5(c) of this order, the party proposing to make the
disclosure must serve the producer with a written identification of the expert or
consultant and a copy of his or her curriculum vitae. If the producer has good cause
to object to the disclosure (which does not include challenging the qualifications of
the expert or consultant), it must serve the party proposing to make the disclosure

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with a written objection identifying the basis for such objection within ten days
after service of the identification. Unless the parties resolve the dispute within ten
days after service of the objection, the producer must move the Court promptly for a
ruling, and the Confidential or Highly Confidential information may not be
disclosed to the expert or consultant without the Court’s approval.
f. Notwithstanding paragraph 5(a) and (b), a party may disclose
Confidential or Highly Confidential information to: (i) any employee or author of the
producer; (ii) any person, no longer affiliated with the producer, who authored the
information in whole or in part; and (iii) any person who received the information
before this case was filed.
g. A party who wishes to disclose Confidential or Highly Confidential
information to a person not authorized under paragraphs 5(b) or 5(c) must first
make a reasonable attempt to obtain the producer’s permission. If the party is
unable to obtain permission, it may move the Court to obtain permission.
6.

Costs: If a producing party finds that a requesting party’s discovery

requests are overly broad or too voluminous, the producing party may request that
the requesting party pay for the reasonable costs associated with copying such
documents or searching for electronically stored information. The parties agree to
meet and confer on the issue of costs prior to moving for any relief from the Court.
7.

Inadvertent Disclosure:
a.

If a producing party inadvertently discloses to a receiving party

any document, thing, or information containing information that the producing

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party deems confidential without designating it as CONFIDENTIAL or HIGHLY
CONFIDENTIAL, the producing party shall promptly upon discovery of such
inadvertent disclosure inform the receiving party in writing of the appropriate
designation and the receiving party shall thereafter treat the document, thing, or
information as provided by the producing party under this Stipulated Protective
Order. To the extent such document, thing, or information may have been disclosed
to persons other than authorized persons described in this Stipulated Protective
Order, the receiving party shall make every reasonable effort to retrieve the
document, thing, or information promptly from such persons and to prevent any
further disclosure to unauthorized persons.
b.

If the producing party inadvertently discloses to a receiving

party information that is privileged or otherwise immune from discovery, the
producing party shall promptly upon discovery of such disclosure so advise the
receiving party in writing and request that the item or items of information be
returned, and no party to this action shall hereafter assert that such disclosure
waived any privilege or immunity. It is further agreed that the receiving party will
make every reasonable effort to return such inadvertently produced item or items of
information, and all copies thereof, within ten (10) days of receiving a written
request for the return of such item or items of information.

The party having

returned such inadvertently produced item or items of information may thereafter
seek production of any such documents, things, or information in accordance with
the Federal Rules of Civil Procedure.

8

8.
information

Filing with the Court: In the event that any documents, things, or
that

have

been

designated

CONFIDENTIAL

or

HIGHLY

CONFIDENTIAL are included with or the contents thereof are in any paper filed
with the court, such documents, things, or information and related materials shall
be filed with the court in sealed envelopes.

The sealed envelope shall be

prominently marked with the caption of this case, the title of the paper or
document, the name, address, and telephone number of the attorney filing the
paper or document, and the following (or similar) notation:
CONFIDENTIAL
FILED UNDER SEAL PURSUANT TO STIPULATED
PROTECTIVE ORDER DATED ________
Case No.: 8:13-CV-03201
9.

Document Disposal: Upon the conclusion of this case, each party must

return to the producer all documents and copies of documents containing the
producer’s Confidential or Highly Confidential information, and must destroy all
notes, memoranda, or other materials derived from or in any way revealing
confidential or highly confidential information.

Alternatively, if the producer

agrees, the party may destroy all documents and copies of documents containing the
producer’s Confidential or Highly Confidential information. The party returning
and/or destroying the producer’s Confidential and Highly Confidential information
must promptly certify in writing its compliance with the requirements of this
paragraph. Notwithstanding the requirements of this paragraph, a party and its
counsel may retain one complete set of all documents filed with the Court,
remaining subject to all requirements of this order.
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10.

Originals: A legible photocopy of a document may be used as the

“original” for all purposes in this action. To the extent that either party challenges
the accuracy or authenticity of the photocopy, the actual “original,” in whatever
form the producing party has it, must be made available for inspection by any other
party within a reasonable period of time after a written request.
11.

The parties agree that privileged communications created after

December 4, 2013 that relate solely to this litigation are not required to be
identified in the parties’ privilege logs.
12.

Survival of obligations: This order’s obligations regarding Confidential

and Highly Confidential information survive the conclusion of this case.
IT IS SO ORDERED.
DATED November 26, 2014.
BY THE COURT:
S/ F.A. Gossett
United States Magistrate Judge

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APPENDIX A
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
VISHAY DALE ELECTRONICS, INC.,

)
)

Plaintiff,

)
)

v.

8:13-CV-03201

)
)

ROHM CO., LTD

)
)

Defendant(s).

)

UNDERTAKING TO STIPULATED PROTECTIVE ORDER
I, _________________________________, certify that:
1.
city/state

I reside at ___________________________________________ in the
of

_________________________________________,

country

of

___________________________________.
2.

I am currently employed by _______________________________ located

at ____________________________________________, and my current job title is
__________________________________________________.
3.
Order

filed

I have read and understand the terms of the Stipulated Protective
in

Civil

Action

No.

2:13-cv-06383-JD.

I

understand

that

CONFIDENTIAL or HIGHLY CONFIDENTIAL information may be provided to me
pursuant to the terms and restrictions of the aforesaid Stipulated Protective Order.
I hereby agree to be bound by the terms of the Protective Order and understand
that information designated CONFIDENTIAL or HIGHLY CONFIDENTIAL and
my copies or notes relating thereto shall only be disclosed to or discussed with those
persons permitted by the Stipulated Protective Order to receive information subject
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to such designated category. I understand that any violation of this Stipulated
Protective Order may subject me to sanctions by the Court.
4.

Upon request, I will return all information provided to me in this

matter, together with all copies thereof and notes that I have prepared relating
thereto, to outside counsel for the party with whom I am associated. As soon as
practical, but not later than 60 days after final termination of this action, I shall
either provide a written certification of destruction of all CONFIDENTIAL or
HIGHLY CONFIDENTIAL information that I received, or I shall return all
CONFIDENTIAL or HIGHLY CONFIDENTIAL to the outside counsel from whom
I received the information.
5.

I hereby submit to the jurisdiction of this United States District Court

for the District of Nebraska for the purpose of enforcement of the Protective Order.
SIGNED

this

_____

day

of

_________________

20____

______________________________________.
____________________________
(signature)
__________________________
(print name)

2

at