ACI Worldwide Corp. v. MasterCard Technologies, LLC et al
ORDER - Plaintiff's Motion to Compel (filing 197 ) is granted, in part. Defendants shall run the Search Protocol and produce the requested materials within seven days of this Order. Defendants' Motion for Source Code Protective Order (filing 202 ) is denied. Plaintiff's Motion for Sanctions (filing 207 ) is denied. Ordered by Magistrate Judge F.A. Gossett. (GJG)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
ACI WORLDWIDE CORP.,
LLC, and MASTERCARD
This case is before the Court on Plaintiff’s Motion to Compel (filing 197);
Defendants’ Motion for Source Code Protective Order (filing 202); and Plaintiff’s Motion
for Sanctions (filing 207). For the reasons explained below, Plaintiff’s Motion to Compel
will be granted, in part. Defendants’ Motion for Source Code Protective Order will be
denied. Plaintiff’s Motion for Sanctions will be denied.
On September 3, 2014, Plaintiff filed a motion for a protective order. (Filing 49.) The
parties agreed that a protective order should be entered, but disagreed as to precise provisions
to be included in the order. In particular, Defendants desired an “Attorneys Eyes Only”
(“AEO”) designation, which would limit disclosure of certain documents to attorneys of
record. Plaintiff opposed such a designation. Plaintiff proposed that a separate protective
order be drafted at a later time to govern more sensitive document production. Defendants
asserted, however, that only a single protective order was necessary. On February 2, 2015,
the undersigned entered an order finding that given the sensitive nature of the document
production, an AEO designation was appropriate. (Filing 120.) However, the Court allowed
Mark Newsom (“Newsom”), Plaintiff’s employee with extensive knowledge regarding the
software at issue, to have access to documents designated as AEO. Neither party objected
to the undersigned’s order.
On June 10, 2015, Plaintiff filed a motion requesting that the Court compel
Defendants to respond to discovery requests which sought documents, files and electronically
stored information. (Filing 155.) Defendants objected to the requests, asserting that
production would be overly burdensome and invasive because it would require Defendants
to run a software program that could pose risks to their production systems. After considering
the motion, the Court found that Plaintiff had shown a particular need for the requested
information and that the information was relevant. (Filing 175.) The Court directed the
parties to meet and confer in an effort to devise a reasonable search methodology to retrieve
the requested materials.
On August 7, 2015, Plaintiff’s counsel notified the Court that although the parties had
generally agreed to a search methodology, they were unable to reach an agreement regarding
the search terms to be used in conducting the search. On August 31, 2015, the undersigned
entered an order addressing the parties’ failure to reach an agreement. The order directed
Defendants to run a search protocol devised by Plaintiff (hereinafter “Search Protocol” or
“Exhibit B”),1 which included the search terms proposed by Plaintiff, no later than September
11, 2015. (Filing 181.)
Defendants filed an objection to the undersigned’s August 31, 2015 order. (Filing
183). Defendants’ objection requested that Chief Judge Laurie Smith Camp vacate the
undersigned’s order and direct the parties to “identify and execute a search protocol that
limits each search term to the express scope of [Plaintiff’s] trade secret disclosure.” (Filing
183 at CM/ECF p. 3.) Judge Smith Camp overruled Defendants’ objection on September 29,
2015. (Filing 192.)
Following the entry of Judge Smith Camp’s order, the parties conferred and agreed
that Defendants would run the Search Protocol and produce the requested materials by
October 9, 2015. Defendants produced some information on that date, but Plaintiff advised
Defendants that their production was insufficient because Defendants did not properly
implement the Search Protocol. Plaintiff asserted that Defendants (1) failed to load a
complete, fully functional and compilable version of the MDS source code modules (which
Exhibit B was attached to Plaintiff’s August 7, 2015 letter to the Court.
includes the application programs and all their associated copy files) that previously ran on
Defendants’ production environments (excluding customer data) into a test environment on
a HP NonStop; (2) failed to use the exact search terms contained the Search Protocol; (3)
failed to produce the PAK’d Edit Files called for by the Search Protocol in their natural and
unredacted form, which includes text and data; and (4) failed to send PAK’d Edit Files to
The parties conferred in an effort to clarify the requirements of the Search Protocol.
Defendants agreed to run the Search Protocol in accordance with Defendants’ expectations
and produce the requested information, but only if Plaintiff agreed to a revised protective
order which would prevent Newsom from reviewing any source code information produced
by Defendants. Plaintiff rejected Defendants’ proposal and filed a Motion to Compel on
October 15, 2015. Defendants filed a Motion for Protective Order on October 16, 2015. On
October 22, 2015, Plaintiff filed a motion requesting that sanctions be imposed on
Defendants for failing to comply with the Court’s orders directing Defendants to implement
the Search Protocol.
Defendants contend that they did not fully understand what Plaintiff’s Search Protocol
required of them. Specifically, Defendants claim that they did not understand that the Search
Protocol required them to produce actual source code. Still, Defendants have now agreed to
run the Search Protocol, provided that Plaintiff agrees to a revised protective order which
precludes Newsom from viewing source code production.
Defendants are required by two separate Court orders to run the Search Protocol. At
this point, it should be abundantly clear what the Search Protocol requires. The process has
been thoroughly explained to defense counsel through emails following Defendants’ initial
production and again through the briefing on the several motions now pending before the
Court. Therefore, Defendants should have no trouble running the Search Protocol and
producing the information as required. Accordingly, Plaintiff’s Motion to Compel will be
granted and Defendants will be ordered to run the Search Protocol in accordance with the
explanations/clarifications provided by Plaintiff. Defendant shall run the Search Protocol
and produce the responsive documents within seven days of this Order.
Plaintiff’s Motion to Compel also requests that the Search Protocol be modified in
such a way which would allow Plaintiff to verify that Defendants ran the Search Protocol
against the required databases of information. The Court declines Plaintiff’s request. There
is no doubt that Defendants are now aware of the requirements of the Search Protocol and
their obligations under the Court’s orders. If non-compliance is later discovered, a strong
basis for sanctions would then exist.
Defendants’ Motion for Protective Order will be denied. The Protective Order
currently in place expressly covers the production of source code. (Filing 123.) Under the
terms of the Protective Order, source code has a AEO designation. Defendants maintain that
the Protective Order needs to be revised because they did not understand that the Search
Protocol would require the production of actual source code and that Newsom has more
contact with Defendants’ competitors than once thought. Defendants point to deposition
testimony in which Newsom indicates that has interacted with Defendants’ competitors.
(Filing 202-1.) The Court has reviewed the portion of Newsom’s deposition testimony
provided by Defendants in support of their motion. It does not appear that Newsom’s
interaction with Plaintiff’s other clients is as extensive as Defendants claim. Also, Newsom
has testified that he is aware of his obligations under the current Protective Order. Moreover,
the debate over whether Newsom should have access to AEO materials has already taken
place. Defendants did not object to the undersigned’s order granting Newsom such access.
Defendants have not identified any persuasive reason why the Protective Order should be
Plaintiff’s Motion for Sanctions will likewise be denied. Plaintiff argues that
Defendants purposely and knowingly violated this Court’s orders. Plaintiff contends that
Defendants fully understood what they were supposed to do under the Search Protocol, but
simply decided not to comply. The Court is inclined to believe that Defendants did, in fact,
comprehend what was required of them under the Search Protocol, especially given
Defendants’ participation in editing and/or negotiating the search methodology. Still, the
Court recognizes the complicated nature of the technology involved here. Therefore, the
Court will give Defendants the benefit of the doubt and find that their failure to implement
the Search Protocol as ordered by this Court was not purposeful.
IT IS ORDERED:
Plaintiff’s Motion to Compel (filing 197) is granted, in part. Defendants shall
run the Search Protocol and produce the requested materials within seven days
of this Order.
Defendants’ Motion for Source Code Protective Order (filing 202) is denied.
Plaintiff’s Motion for Sanctions (filing 207) is denied.
DATED December 4, 2015.
BY THE COURT:
S/ F.A. Gossett
United States Magistrate Judge
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