ACI Worldwide Corp. v. MasterCard Technologies, LLC et al

Filing 332

PROTECTIVE ORDER FOR SOURCE CODE - The parties' Joint Motion for Source Code Protective Order (Filing No. 331 ) is granted. The Court's Protective Order (Filing No. 123 ) is amended to include the following provisions governing the production of source code. Except to the extent specifically modified herein, the provisions of the Court's Protective Order remain in full force and effect. Ordered by Magistrate Judge F.A. Gossett. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
ACI WORLDWIDE CORP.,
Plaintiff,
v.
MASTERCARD TECHNOLOGIES,
LLC and MASTERCARD
INTERNATIONAL INCORPORATED,
Defendants.

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8:14cv31
PROTECTIVE ORDER
FOR SOURCE CODE

This matter comes before the court on the parties’ Joint Motion for Source Code
Protective Order (Filing No. 331).
WHEREAS, The Court entered a Protective Order on February 25, 2015 (Filing
No. 123, “Court’s Protective Order”) governing the production of Designated Materials in
this Litigation.1
WHEREAS, discovery in the above-entitled Litigation will involve the production
of Source Code (as defined herein).
WHEREAS, the Parties wish to amend and supplement the Court’s Protective
Order to provide specific protections for the production and review of highly valuable
and highly confidential source code.
NOW, THEREFORE, HAVING BEEN STIPULATED AND AGREED by and
among the Parties, through their respective counsel, subject to the approval of the
Court, the Parties request that the following Protective Order for Source Code be
entered pursuant to Federal Rule of Civil Procedure 26(c).
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Capitalized terms in this Protective Order for Source Code shall have the same
meaning assigned to them in the Court’s Protective Order.

IT IS HEREBY ORDERED THAT:
The parties’ Joint Motion for Source Code Protective Order (Filing No. 331) is
granted.

The Court’s Protective Order (Filing No. 123) is amended to include the

following provisions governing the production of source code. Except to the extent
specifically modified herein, the provisions of the Court’s Protective Order remain in full
force and effect.
I.

Information Subject to This Order
As used herein, “Source Code” means computer code and associated

comments and revision histories, formulas, engineering specifications, or schematics
that define or otherwise describe in detail the algorithms or structure of software or
hardware designs, disclosure of which to another Party or Non-Party would create a
substantial risk of serious harm that could not be avoided by less restrictive means.
The “HIGHLY CONFIDENTIAL – SOURCE CODE” designation (as defined herein) is
reserved for Source Code. The foregoing designation shall only apply to productions
that occur after the date of the entry of this Order. That is, with respect to certain highly
confidential materials that have already been produced in this action (e.g., ACI
Worldwide’s XPNET manuals and guides, the PAK’d Edit Files containing MDS code
snippets (MT0074900 and MT0074901), and the nearly 800 pages of MDS source code
that MasterCard has already produced in this action (MT0065914-66683)), the
designation provided for in this source code protective order shall not apply, and such
productions shall be governed by the Court’s Protective Order found at Filing No. 123.
II.

Protections for the Parties’ Source Code

(a)

To the extent that it is necessary for a Party to this Litigation to produce

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its Source Code (including without limitation the Source Code for XPNET or the
MasterCard Debit Switch), the Producing Party may designate such Source Code as
“HIGHLY CONFIDENTIAL – SOURCE CODE,” if it compromises or includes
confidential, proprietary, or trade secret source code.2
(b)

Access to Designated Material marked “HIGHLY CONFIDENTIAL –

SOURCE CODE” shall be limited (absent the express written consent of the Producing
Party or Court order) to the following:
(i)

Outside counsel of record for the parties to this action, including
any attorneys, paralegals, technology specialists and clerical
employees of their respective law firms;

(ii)

Court reporters, videographers, outside copying, interpreters or
translators employed in connection with this litigation;

(iii)

Outside (i.e., non-employee) experts, disclosed and approved in
accordance with paragraph 8 of the Court’s Protective Order; and

(iv)
(c)

Mark Newsom.

Designated Material marked as “HIGHLY CONFIDENTIAL – SOURCE

CODE” shall be subject to all of the other protections afforded to “HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY” information by the Court’s Protective
Order.
(d)

Designated Material marked as “HIGHLY CONFIDENTIAL – SOURCE

CODE” shall be produced in this Litigation according to the following procedures.
(i)

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Source Code shall be produced in the “native” electronic file format

Nothing herein shall limit or affect a Party’s treatment or use of its own Source Code.

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in which the Source Code is typically represented.
(ii)

The Receiving Party shall load the Source Code on no more than

three non-networked computers that are password protected and kept in secure, locked
areas accessible only to those Persons qualified to review “Highly Confidential –
SOURCE CODE” information. One or all of these computers may be located at the
office of an outside expert who has been disclosed pursuant to paragraph 8 of the
Court’s Protective Order.
(iii)

Upon receipt of the Source Code from the Producing Party, the

Receiving Party must verify in writing that the Source Code is loaded onto only such
computers and the location of the computers. The Receiving Party may create one
“working copy” of the source code on each of the authorized computers described in the
preceding subparagraph. Otherwise, the Receiving Party shall not duplicate, in whole or
in part, the produced Source Code, whether in paper or electronic form. The Receiving
Party shall not print paper copies of any portion of the produced Source Code.
(iv)

The Receiving Party may request paper copies of limited portions

of Source Code that are reasonably necessary for the preparation of court filings,
pleadings, expert reports, or other papers, or for deposition or trial. The Producing Party
shall provide all such requested source code in paper form including bates numbers and
the label “HIGHLY CONFIDENTIAL – SOURCE CODE.” The Producing Party may
challenge the amount of Source Code requested in hard-copy form pursuant to the
procedures described in Paragraph 11 of the Court’s Protective Order (Filing No. 123).
(v)

The Receiving Party may make additional paper copies of portions

of Source Code provided in hard-copy by the Producing Party, as described in the

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preceding paragraph, but only if such additional copies are (1) necessary to prepare
court filings, pleadings, or other papers (including a testifying expert’s expert report), (2)
necessary for deposition, or (3) otherwise necessary for the preparation of its case. Any
paper copies used during a deposition shall be retrieved by the Producing Party at the
end of each day and must not be given to or left with a court reporter or any other
unauthorized individual.
(vi)

The Receiving Party shall maintain all paper copies of any printed

portions of the Source Code in a secured, locked area.
(vii)

The Receiving Party shall maintain a log of (1) every individual who

has inspected any portion of the Source Code in electronic or paper form, and (2) the
date and time of such inspection. The Receiving Party shall, upon request, provide a
copy of this log to the Producing Party.
III.

Prosecution Bar

(a)

Any person (other than an attorney of record in this case) who, on behalf

of a Receiving Party, reviews any of MasterCard Source Code designated “HIGHLY
CONFIDENTIAL – SOURCE CODE” shall not, for a period commencing upon receipt of
such information and ending three years following the conclusion of this case (including
any appeals) engage in any Prosecution Activity (as defined below) involving patent
claims on a method, apparatus, or system for financial transaction switching, or financial
transaction processing, of the type in the software at issue in this case.
(b)

Any person (other than an attorney of record in this case) who reviews, on

behalf of a Receiving Party, any of ACI’s Source Code designated “HIGHLY
CONFIDENTIAL – SOURCE CODE” shall not, for a period commencing upon receipt of

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such information and ending three years following the conclusion of this case (including
any appeals) engage in any Prosecution Activity (as defined below) involving patent
claims on a method, apparatus, or system for middleware, of the type at issue in this
case.
(c)

Prosecution Activity shall mean: (i) the preparation or prosecution (for any

person or entity) of patent applications; or (ii) advising or counseling clients regarding
the same, including but not limited to providing any advice or counseling regarding, or
participating in, the drafting of claims for any patent application, reissue application,
reexamination, inter partes review, post grant review, covered business method review,
or any other proceeding at the U.S. Patent and Trademark Office. Nothing in this
paragraph shall prevent any attorney from sending non-confidential prior art to an
attorney involved in patent prosecution for purposes of ensuring that such prior art is
submitted to the U.S. Patent and Trademark Office (or any similar agency of a foreign
government) to assist a patent applicant in complying with its duty of candor.
(d)

For the avoidance of doubt, the prosecution bar shall not apply to

attorneys of record in this litigation.

DATED: March 23, 2016.
BY THE COURT:

s/ F.A. Gossett
__________________________
United States Magistrate Judge

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